Can a licensee register a trademark [Expert Answers]

Last updated : Sept 9, 2022
Written by : Lester Corza
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Can a licensee register a trademark

Is a trademark used under license?

What is trademark licensing? In trademark licensing, a trademark owner (Licensor) grants permission to another (Licensee) to use that trademark on mutually agreed terms and conditions. Trademark licensing was considered impossible at one time given that one of the functions of a trademark was to indicate source.

What Cannot be registered as a trademark?

Trademarks which contain or comprise matter likely to hurt the religious susceptibilities of any class or sections of citizens of India. Trademarks which contain or comprise scandalous or obscene matter. If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Who is registered user under trademark?

Registration as a Registered User A registered user is an entity who is authorized to use a particular trademark and a licensee would fall under the said category. The Trademarks act defines it as a person who is for the time being registered as such under section 49.

What are the requirements of a registered trademark?

  • Copy of Logo (Optional)
  • Signed Form-48.
  • Incorporation Certificate or Partnership Deed.
  • Identity Proof of Signatory.
  • Address Proof of Signatory.

What is the difference between licensing and trademark?

Assignment of a trademark is a transfer in the ownership of the trademark registration. Whereas in licensing, the ownership and proprietary rights of the trademark continue to remain with the original owner, but only a few restricted rights to use the brand are given to the third party.

What is a trademark license agreement?

A trademark license agreement allows the licensee to use (but not own) the licensor's trademark in connection with agreed-on products or services. Licensing can help a company expand into new markets effectively and easily while lending the licensee an established name and reputation.

Can a person other than the registered proprietor of a trademark be registered?

The answer lies in Section 48 of the Act. It defines a registered user as: '… a person other than the registered proprietor of the trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trademark is registered. '

How much does it cost to trademark a word?

The basic cost to trademark a business name ranges from $225 to $600 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest and least expensive way to register your trademark is online, through the USPTO's Trademark Electronic Application System (TEAS).

Who has to register before registering a trademark?

This provision of how a person can become a registered user is mentioned under Section 49 of the Act. In a case, if it is seen that a person should be registered as a registered user, both the proprietor and the proposed proprietor will write to the Registrar.

What are the three requirements for trademarks?

  • Arbitrary, fanciful, or suggestive: If a mark is a part of one of these three categories, the mark is inherently distinctive.
  • Descriptive: A descriptive mark can only be trademarked if it has taken on a second meaning.
  • Generic: Marks that are generic are never trademarked.

Can I trademark a name without a business?

You can't register a trademark for non-business purposes. You can only trademark a brand name that you're using in business or that you intend to use in business in the near future. You can't register a generic or descriptive name. Your trademark name has to be distinctive or unique in some way to be approved.

What are the 3 requirements in securing trademark?

  • Identify the trademark owner.
  • Specify whether the trademark owner is a business or person.
  • State whether the trademark is in use or there is a real intent to use.
  • Provide a drawing of the trademark.
  • List the products and/or services sold under the trademark.

Can a patent be licensed?

When a patent is licensed, an agreement is made between the patent owner (or the licensor) and the person or company that wants to use and benefit from the patent (the licensee). It permits the licensee to make or sell the product, design, or technology in the patent.

What is an exclusive trademark license?

Exclusive license allows a licensor to share intellectual property with a licensee for a specific period of time that usually binds the licensor to not share the property with anyone else.

How can licensing be defined?

Licensing is defined as the granting of permission by the licenser to the licensee to use intellectual property rights, such as trademarks, patents, brand names, or technology, under defined conditions.

Can you make money off a trademark?

But registering a trademark isn't just an opportunity for entrepreneurs to preserve all of their hard work from getting used by another company – it's another way to make money too. Some trademarks are worth billions. Google's trademark value totals a whopping $44.3 billion. Microsoft's comes in at $42.8 billion.

What is the purpose of a licensing agreement?

A licensing agreement allows one party (the licensee) to use and/or earn revenue from the property of the owner (the licensor). Licensing agreements generate revenues, called royalties, earned by a company for allowing its copyrighted or patented material to be used by another company.

What is a reasonable royalty rate for a trademark?

25% Rule for Intellectual Property Patent or trademark owners use the 25% rule as a yardstick for defining a reasonable amount of royalty payments.

How long does a trademark last?

A federal trademark lasts 10 years from the date of registration, with 10-year renewal terms. Between the fifth and sixth year after the registration date, the registrant must file an affidavit to state that the mark is still in use.

How do I trademark a name for free?

You can not register a trademark for free. However, you can establish something known as a "common law trademark" for free, simply by opening for business. The benefit of relying on common law trademark rights is that it's free, and you don't need to do any specific work filling out forms, etc.

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Can a licensee register a trademark

Comment by Vanna Morsberger

Thanks for this great article

Thanks for your comment Vanna Morsberger, have a nice day.
- Lester Corza, Staff Member

Comment by MichenkaU

trademark licensing agreement what are they does your business need one and what provisions does the licensing agreement contain hey everyone my name is marcela dominguez and if you are new here i am on my exercise bike because my new year's resolution was to exercise more in 2021 so join me in today's video which is all about trademark licensing agreements and i hope you don't mind that i'll be killing two birds with one stone on my exercise bike now what is a trademark licensing agreement with a trademark licensing agreement you are allowing a licensee to use the value and the goodwill associated with a trademark so you're allowing them to use it typically on products and or services so you as the licensor are giving the licensee permission to use the trademark in a specific fashion now you as the licensor are able to approve that specific way in which they will use it so you as the licensors still have a lot of control over the permissions that you are giving to a licensee so if there are any doubts in your mind about what kind of provisions can be in that licensing agreement then rest assured that you can have it be very broad or you can have it be very specific now of course the more specific sometimes the better especially if certain things are going to bother you or if you're concerned about a licensee tarnishing your brand by using it in ways that you would not normally approve so with a trademark licensing agreement you are able to detail all sorts of things like how long is the licensing agreement a licensing agreement can be as short as maybe three to five pages or a licensing agreement can be as long as 50 to 100 pages now why the difference in the length of the licensing agreement well you can imagine that very very large brands let's just say fashion brands for example gucci versace tommy hilfiger nike puma whenever they license their brand whenever they license their trademark you can imagine that they're going to be very picky about the type of permissions that they give to the licensee in other words they're going to be very specific because they want to cover their butts in the events that the licensee uses it in such a way that ends up tarnishing the brand harming the brand or causing damage to the brand so by being very specific in the contract you're outlining things like what happens in the event of a damage or what happens in the event of a breach what happens in the event that the licensee breaks the contract and causes damage to my brand so what are the three different types of trademark licensing agreements the three types of licensing agreements are sole exclusive and non-exclusive so in a seoul licensing agreement the licensor and the licensee are able to use the mark so this is different from an exclusive license because in an exclusive license only the licensee is able to use the mark so in other words with an exclusive license only the licensee is able to use the trademark on products or services and it can still be approved by the licensor but only the licensee will be using the trademark in commerce in conjunction with products or services so that means that not even the licensor is going to use it so that means that if i own a brand let's say marcella tm and somebody wants to license marcela tm to put on some kind of educational product or educational service if i gave somebody an exclusive license that means that i would not even be able to use the marcella tm brand on my own products or services for whatever period of time is designated in the contract that means that the licensee the person that i'm giving permission to use it would be the only person who's allowed to use that mark in conjunction with products or services now to contrast that with a non-exclusive license if we have a non-exclusive license keeping with our marcella tm example me as the licensor can still allow other people to use the mark in other words i am giving permission to multiple users for the marcella tm trademark so that is very different from an exclusive license agreement and also from a sole licensing agreement so again with a non-exclusive licensing agreement it means that i can enter into a relationship with multiple parties and allow multiple parties to use my marcella tm trademark or my marcella tm brand and i have an agreement with each of those people so tell me in the comments down below if you are a registered trademark owner which licensing agreement would you prefer to have for your brand would you prefer to have a sole licensing agreement exclusive licensing agreement or non-exclusive licensing agreement so how do you make the determination as to which is better for you well i think that it will require a sit-down talk with an attorney who can help you achieve your goals so you're going to have to tell the attorney what your goals are are your goals centered around growing and having as much profit as possible and payments coming in in the form of royalties is one deal so lucrative that you really don't want to you know waste time looking for other partners and you're really assured that maybe soul licensing agreement would be to your benefit or do you want to kind of cast a wide net and have a relationship with lots of different people so that you can maximize the marketing opportunities of having that many relationships in front of you so do you have to have a registered trademark in order to enter into a trademark licensing agreement and the answer is you do not have to have a registered trademark to enter into a trademark licensing agreement however it is more common for you to enter into a trademark licensing agreement when you are the owner of a registered trademark what are some examples of trademark licensing agreements that you might have seen already well calvin klein is one of them so whenever you see the name calvin klein on a pair of underwear more than likely calvin klein was not the actual manufacturer of those goods so calvin klein entered into a licensing agreement with the manufacturer of apparel items like jeans socks and underwear so the manufacturer of those jeans socks and underwear is actually the licensee and so they had to get permission from the calvin klein brand in order to be able to use the name calvin klein on the underwear the socks and the jeans so it's not actually calvin klein that has manufactured these products rather it is the licensee that has manufactured these products and gotten permission from the brand owner to be able to use the calvin klein brand another very common type of licensing agreement is with universities so you see lots of people wearing their favorite memorabilia so sometimes you can catch people wearing their favorite sports logos on t-shirts caps jackets sweaters hoodies so if you wanted to use for example the duke or the university of texas at austin brands and put them on sweatshirts or t-shirts or hats or anything really you wanted to put it on mugs cups plates silverware then you would have to enter into a licensing agreement with the university of texas at austin or duke and get permission so that you can put their logo or their brand on the it

Thanks MichenkaU your participation is very much appreciated
- Lester Corza

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