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Written by : Dotty Perlmutter
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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 for your comment Rolanda Ianuzzi, have a nice day.
- Dotty Perlmutter, Staff Member
hi everyone my name is Judah Holtzman I'm a Content contributor to yellow sector what is perpetual license a perpetual software license is a license that once you purchase it you have the right to use it indefinitely after an initial period which is typically one year the vendor will offer you a support package that include continuous software updates and basic technical support and an annual cost which is typically in the range of 15 to 25% of the original cost of the software
Thanks Mabelle your participation is very much appreciated
- Dotty Perlmutter
About the author
I've studied projective geometry at Coppin State University in Baltimore and I am an expert in development geography. I usually feel ditzy. My previous job was health educators I held this position for 19 years, I love talking about martial arts and astronomy. Huge fan of Maya Angelou I practice rugby and collect paper currency.
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