Will Licensing my Trademark Impact its Registration?

If you own a trademark and retain the authority to control the nature and quality of the services and goods linked to it, you are allowed to register it. In other words, if you enter a licensing agreement allowing another party to use the mark, but your keep control over the nature and quality of the goods and services, the use of the trademark will inure to your benefit. However, there is an exception to this rule if the mark is being used in a manner that will deceive the consumer.

If your trademark application states that the mark is being used by a related company, the U.S. Patent & Trademark Office (USPTO) will not require you to explain how you are controlling the trademark. You don’t even have to record the licensing agreement in the United States, but you may be required to do so in other countries. However, it is imperative that your licensing agreement contains a provision granting you (as the licensor) the authority to continue to control the nature and quality of the goods and services, even though the Examining Attorney will not question you about your relationship with the licensee.

How do you retain control over the trademark? There are a variety of ways, but below are a few common examples:

If you fail to retain and exercise adequate control over the goods or services of the licensee, it could result in allegations that you have abandoned your rights in the trademark.

Licensor’s can significantly benefit from licensing a trademark, but it is crucial to have a carefully drafted licensing agreement to protect you and your rights. If you are interested in licensing your trademark or you need help registering a trademark, contact the knowledgeable attorneys at The Swenson Law Firm to schedule your appointment.

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