IP Transactions

ELO works with clients to handle a host of trademark licensing issues.

A trademark license is a legal agreement in which the owner of a trademark –the “licensor”– grants permission to an interested party –the “licensee”– to use the trademark in connection with the marketing of goods and services.

Beyond the general principles of licensing, trademark licenses involve unique considerations. Central to the value of a trademark is its “goodwill,” which represents the reputation for quality associated with the source of goods and services sold under the mark. When a trademark owner directly controls the use of the mark, they can maintain and enhance this goodwill. However, in a licensing arrangement, the licensee utilizes the owner’s mark on the licensee’s own goods or services, raising critical concerns related to quality control, consumer confusion, and the preservation of the trademark owner's goodwill.

To address these issues effectively, trademark owners must implement robust quality control measures to ensure that the licensee's use of the mark maintains the standards associated with the trademark. This includes provisions in the licensing agreement that outline specific quality standards, inspection rights, and procedures for addressing any deficiencies in quality. By safeguarding the integrity of the trademark, the owner can protect the goodwill associated with their mark and preserve the value derived from its development and reputation.

Additionally, it's important for trademark owners to consider the territorial scope of the license, any limitations on sublicensing, and provisions for monitoring and enforcing the licensee's compliance with the terms of the agreement. Failure to adequately address these issues can result in dilution of the trademark's value and potential legal disputes.

Moreover, under U.S. trademark law, a trademark owner may be required to exercise sufficient control over the quality of goods or services offered under the licensed mark to avoid the risk of abandonment or loss of trademark rights. This principle, known as "naked licensing," underscores the importance of maintaining active oversight and control over licensed uses to ensure the continued strength and distinctiveness of the trademark.

By carefully addressing these considerations in the licensing agreement, trademark owners can effectively leverage their intellectual property assets while safeguarding the reputation and value associated with their trademarks – contact ELO directly for additional information or to schedule a consultation today!

Free 15-minute Consult

A copyright license involves the granting of permission from a copyright owner –the licensor– to another party –the licensee– to copy, distribute, digitally transmit, publicly display or perform a protected work. Copyright licensing is an important element of most publishing agreements.

Furthermore, a copyright license may extend to granting the licensee the right to create derivative works. A derivative work is in itself a new and distinct work that is based on or derived from other existing works. For instance, the adaptation of a bestselling novel into a blockbuster movie often requires a copyright license to produce the derivative work –the movie– based on the original work –the novel.

Navigating copyright licensing requires careful consideration of various factors unique to such agreements. For instance, the terms of the license agreement should expressly outline the specific rights being granted under the copyright, such as distribution of existing copies and the creation of new copies.

ELO assists clients in the drafting and negotiation of copyright licensing agreements tailored to their specific needs and objectives. Whether you require guidance in preparing licensing agreements or navigating the intricacies of copyright law, feel free to contact ELO directly for further information or to schedule a consultation today!

Free 15-minute Consult

A Non-Disclosure Agreement (NDA) typically arises in the context of discussions involving new inventions, products, or business relationships that have not yet been commercialized or implemented.

These agreements are instrumental in safeguarding the confidentiality of information shared between parties, particularly in the context of potential business transactions. By implementing an NDA, parties can protect their trade secrets and maintain control over the dissemination of sensitive information. It is important to note that courts are unlikely to consider confidential any information exchanged without the implementation of an NDA.

Key considerations in drafting NDA's include the specific identification of the subject matter covered by the NDA, requirements regarding the marking of information as confidential to ensure protection, and provisions outlining restrictions on the recipient's ability to disclose the information to third parties –i.e. vendors or subcontractors.

ELO counsels clients in the preparation of NDA’s, as well as in navigating the intricacies of such relationships to ensure their confidential information remains effectively protected – feel free to contact ELO directly for further information or to schedule a consult today!

Free 15-minute Consult