Trademark License Agreement

A trademark license is an agreement whereby a trademark owner permits someone else to use the owner’s trademark in connection with specific products or services. Although a trademark license isn’t required to be in writing to be enforceable, it’s strongly recommended that all trademark licenses be memorialized in a written and signed document. Although the terms of every trademark license are different and may be freely negotiated, all licenses must include certain provisions to be valid.

For instance, the license must set forth:

• The names of the parties agreeing to the license
• A clear description of the trademark being licensed
• The types of products or services that the trademark may be used with,
• The geographic territory in which the licensed products or services can be sold
• The quality control standards that the products or services must meet.

Of course, there are many other terms that a trademark license should explicitly state to avoid serious problems down the road. If the trademark being licensed is federally registered, the trademark license may be recorded with the trademark office in order to give notice to the world of the existence of the license; however, many licenses include confidential or commercially sensitive information that the parties may not want available to the public. In those cases, it may be possible to record a redacted version of the license or to file a separate document executed by the parties that make reference to the license.

Trademark licensing can be an effective and relatively inexpensive way for a trademark owner to expand the use and public recognition of its trademark, but there are also many pitfalls of which trademark owners must be aware to avoid diminishing the value of their trademarks or even worse losing their trademark rights altogether.