Trademark License Agreement

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This Trademark License Agreement will effectively license your trademark for either exclusive or non-exclusive use by another. This agreement sets out the specific terms including how the trademark will be used and payments made for its use.

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This Trademark License Agreement is between the owner of a trademark (the "licensor") and a party who desires to license the trademark (the "licensee"). This agreement sets forth a brief description of the trademark and the purpose for which the mark will be used. It also sets forth if the license is exclusive or non-exclusive, the agreement term and payments made to the licensor for the trademark's use. It is crucial that this type of business arrangement be clearly set out in writing. A written Trademark License Agreement will prove invaluable in the event of disagreements, misunderstandings or litigation surrounding the use of the trademark by the licensee.

This Trademark License Agreement includes the following:
  • Parties: Names of both the trademark licensor and licensee;
  • Trademark/Licensee's Business: Sets forth a brief description of the trademark and business for which the trademark will be used. A detailed description of the trademark is contained in Schedule A attached to this agreement;
  • Grant of License: Spells out the scope of usage of the trademark and if the use is exclusive or non-exclusive;
  • Payments for Use: Spells out the exact fees which will be paid to licensor, including the computation of any royalty fees;
  • Representations/Warranties: Sets forth that licensor is the sole and exclusive owner of the trademark and has the right to license its use;
  • Assignment: Licensee may not assign its rights or obligations under this license agreement to another party;
  • Signatures: Licensor and licensee must sign this agreement.

Protect your rights and your property by using our attorney-prepared forms.

This attorney-prepared packet contains:
  1. General Instructions
  2. General Information
  3. Step-by-Step Instructions
  4. Trademark License Agreement
State Law Compliance: This form complies with the laws of all states
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Trademark License Agreement












This Packet Includes:
   1. General Instructions
   2. General Information
   3. Step-by-Step Instructions
   4. Trademark License Agreement



General Instructions


 Trademark License Agreement


   This kit includes information and tools that will assist you in drafting a trademark license agreement.

   While the owner of a trademark holds the exclusive right to use that trademark to market or sell goods and services, the trademark owner may transfer certain of those rights to a third party by way of a license.  A trademark license generally is given for a specific duration, during which the licensee pays the trademark owner for the use of the trademark.  Once the term of the license is over, all rights in the trademark revert back to the trademark owner.

   Included in this kit is a sample form for drafting a trademark license agreement, along with general instructions explaining the significance and operation of certain provisions in the Agreement.  The kit should be used to draft your own agreement, but you are advised to have a competent trademark attorney review the agreement before you sign it.







General Information
Trademark License Agreement

A trademark is a symbol, character, design, word, or picture that is used to distinguish a product in the marketplace.  In essence, it is the visual representation of brand identity.  Trademarks are protected both under state and federal law.  Under state law, the use of a trademark affords the user both common law and statutory protection against infringement.  Registration under state law enhances (to varying degrees depending upon the particular state) the protections offered by that states statutory trademark scheme.  However, state statutory protections generally apply only to use within that state, and do not protect the user from infringement outside that states borders.

Under federal law, there are a host of statutory protections that can be secured through the registration of a valid trademark with the U.S., and which protect the mark throughout the country.   Further, federal registration affords the user the opportunity to collect treble damages in a successful infringement action and to use the ® symbol on its trademarked products in all 50 states, along with many other privileges and protections.  

For more information on federal trademark registration, and for instructions on how to register your trademark online, visit the website of the U.S. Patent and Trademark Office (USPTO).  





Step-by-Step Instructions
Trademark License Agreement

   Trademark License Agreements can be extremely complex.  The sample agreement included in this kit is a basic agreement, addressing the key elements to licensing a trademark, and receiving compensation for that license.  If your situation requires treatment of more complex issues, you should consult a competent attorney who can assist you in drafting a suitable agreement.

Grant of License

   The license granted in this type of agreement spells out the kinds of rights that the licensee will be able to enjoy.  It is important in this section to set forth clearly the geographic territory in which the trademark may be used by the licensee.  Further, since the quality and type of goods which are sold in connection with the trademark can significantly affect the trademarks value (and in some cases can even affect the licensors interest in the trademark), this section should also set forth in some detail what types of goods may be sold pursuant to the license, and of what quality those goods must be.

Term

   The term of the license agreement, and of the license granted therein, is generally for a fixed period of years, all trademark rights will revert back to the licensor.

Payments

   In some situations, a lump-sum payment will make the most sense as consideration for the granting of the license.  For example, where it would be difficult to quantify the amount of goods or services sold in connection with the trademark, settling upon a flat fee may be more practicable than attempting to determine a royalty payment that is dependent upon gross sales.



   Where it is feasible to determine the total number of units sold or the total value of all units sold in connection with the Trademark (for example, where the trademark is actually affixed to a specific product to be sold by the licensee), then a royalty system may be advisable, in which the amount of money paid for the license is based directly upon the actual amount of sales that the licensee realizes through the use of the license.





   There are a number of different ways of calculating royalty payments.  In some cases, a royalty is a flat amount paid based on the number of units sold by the licensee.  In other cases, a royalty is computed as a percentage of the sales revenue received by the licensee in the sale of licensed products.

   The simplest method of calculating the royalty as a percentage of total sales is to select a percentage of gross sales revenues from all sales of the licensed products.  However, in many instances, a licensee will be given the right to deduct certain expenses from gross sales revenue before a royalty percentage is applied.  For example, will the royalty be a percentage of the total gross sales received by licensee?  Or will certain expenses be deducted from gross sales before the percentage is taken, i.e., the amount of products returned by customers, expenses incurred in advertising the product, etc.  It is important in this provision to define clearly the method by which royalty payments will be calculated.

Licensors Representations and Warranties

   The most basic representation that a licensor will generally be expected to make is that it has the ownership interest in the trademark that it claims to have, and that it therefore has the right to grant the license in the first place.  The terms of the sample agreement below state that the licensor will guarantee theses basic representations by indemnifying the licensee against any damages that the licensee might suffer due to the failure of the licensor to live up to those representations.

Quality Control



   In addition to setting forth the initial quality standards that the licensee must meet in order to continue use of the trademark, it is important for the licensee to pay close attention to the licensees compliance with these standards.  The licensor may wish to periodically review samples of the licensees product, or it may schedule inspections of the facilities in which licensee manufactures the products to ensure that quality standards are met.  The licensor may also impose new standards during the term of the agreement where necessary.  In short, the licensor must protect the value and reputation of its trademark.  Where the specific circumstances of your situation may require other monitoring and inspection systems or privileges than are stated in the sample agreement, describe them in the quality control provision of the agreement.






Schedule A:  Trademark

   In order to properly describe and identify the trademark, describe the trademark in detail on Schedule A, including any trademark registration numbers or serial numbers, and any registrations or applications pending relating to the trademark.





DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only an attorney can provide legal advice.  An attorney should be consulted for all serious legal matters.  No Attorney-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Trademark License Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Licensor”) and                             (“Licensee”, and collectively, the “Parties”).

WHEREAS, Licensor is the owner of the trademark in    (Brief description of trademark to be licensed)             (the “Trademark”).

AND WHEREAS, Licensor wishes to permit Licensee to use the Trademark for the purpose of       (Brief description of Licensees approved use of Trademark)                                         , under the terms set forth in this Agreement;

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.   Trademark.  The Trademark shall be defined as those items listed on Schedule A.

2.   Grant of License.  Licensor hereby grants to Licensee a non-transferable license to use the Trademark (the “License”) in the following manner:    (see instructions above for important information about defining the scope of the License)                                                                                                                                                                           .

The License shall be ? exclusive ? nonexclusive.

Licensor shall remain the sole owner of the copyright in the Trademark.  Licensee shall enjoy only the rights set forth above, and nothing in this Agreement shall entitle Licensee to make any claim to ownership of the Trademark, or of any other intellectual property rights in the underlying material.  Licensee may not make any other use of the Trademark other than those authorized above without prior written approval from Licensor.

3.  Term.  

a.   The term of this Agreement shall begin on the date written above and shall continue in full force and effect for a period of               years (the “Term”), unless terminated earlier pursuant to this the terms of this Section 3.

b.   Should any one or more of the following enumerated events occur, Licensor shall have the right to terminate this Agreement:
i.   Licensee does not make any commercial use of the Trademark within 12 months of the date of this Agreement.

ii.   Licensee ceases to make commercial use of the Trademark for any period of 12 consecutive months.

iii.   Licensee breaches a material provision, term, or condition under this Agreement, including, but not limited to, a failure to meet quality standards as either set forth in this Agreement, or as mandated by Licensor pursuant to Section 6(b) below.

iv.   Licensee sells all or substantially all of its assets, or experiences a Change in Control.  For the purposes of this Agreement, Change in Control shall mean a sale or other transfer of equity in the Licensee, resulting in a new person or entity becoming the controlling equity holder of the Licensee.

c.   In order to terminate this Agreement pursuant to Subsection (b) above, Licensor must provide written notice to Licensee or to Licensees successor in interest within 30 days of the date of termination stating Licensors intent to terminate and the intended date of termination.

d.   In the event that this Agreement is terminated pursuant to this Section 3, Licensee shall cease using the Trademark in the course of Licensees business as soon as is commercially feasible.  

e.   At the end of the Term, or upon any termination of this Agreement, all rights, interest and ownership of the Trademark shall revert to Licensor, and shall be the sole property of Licensor.

4.  Payments.  

a.   Licensee shall pay to Licensor (check any that apply):
   a fee of $      , payable in the following installments:    (briefly state the times at which payment will due, and how much will be due for each payment; i.e., upon execution of this Agreement, upon commencement of using the Trademark, etc.)               .
   a royalty of $           per unit sold in connection with the Trademark.
   a royalty of $          per $             worth of goods and services sold in connection with the Trademark
   a royalty of      % of the gross sales from all goods and services sold in connection with the Trademark.
   Additional details:                                                                                                   .
(Include any considerations, deductions, or other formulae that will be used to determine the definition of “gross sales” for the purposes of this section.)
 
b.   Licensee shall pay to Licensor an advance against the royalties discussed in Subsection (a) above, in the amount of $      .  This advance shall be paid in full to Licensor within 7 days of the execution of this Agreement.

c.   (if applicable) Licensee shall submit to Licensor written quarterly reports (the “Quarterly Reports”) at the end of each quarter of the calendar year (March 31; June 30; September 30; December 31) stating the amount of goods and services sold in connection with the Trademark for the then-ending quarter, and the corresponding amount owed to Licensor as royalty payments for that quarter (the “Quarterly Royalty Payment”).  Quarterly Reports must be received by Licensor no more than 7 days after the end of each quarter.  Payment of each Quarterly Royalty Payment must be paid to Licensor in full within 30 days of the end of each quarter.  Failure to submit Quarterly Reports or to make Quarterly Royalty Payments within the time allotted above shall be considered to be a material breach of this Agreement.
d.   Licensor shall be given access by Licensee to Licensees records, wherever commercially reasonable, in order to audit Licensees stated sales records, and to confirm that all royalty payments are properly stated and accounted for.  If it is determined that any Quarterly Royalty Payment has been deficient, Licensee shall have 7 days to pay Licensor the deficient amount.  Failure to pay deficient royalty amounts within the time allotted above shall be considered to be a material breach of this Agreement.

e.   In the event that this Agreement expires or is terminated pursuant to the terms and conditions under Section 3 above, Licensee shall remain obligated to pay to Licensor any royalties due to Licensor, or any payments, whether those units were sold before or after the termination of this Agreement.

5.  Licensors Representations and Warranties.  

a.   Licensor represents and warrants that it is the sole and exclusive owner of the Trademark, and owns all right, title and interest in the Trademark.
b.   Licensor represents and warrants that it has the legal authority to grant Licensee the License, and that no other person or entity is required to give its consent for the License to be valid.
c.   (if License is exclusive) Licensor represents and warrants that Licensor has not licensed the Trademark to any person or entity other than Licensee, nor will it license the Trademark to any person or entity other than Licensee for the duration of this Agreement.

6.   Indemnification.  Licensor agrees to indemnify and hold harmless Licensee for any claims, suits, damages, actions, or other costs arising out any breach of Licensors warranties set forth in Section 5 above.

7.   Quality Control.

   a.   Licensee hereby agrees that any product or services that it sells in connection with the Trademark shall conform to the quality standards set forth in Section 2 above, provided that Licensor may set additional specifics or standards for such sale of goods or services pursuant to Subsection (b) below.
   b.   Licensor may, at any time, set standards for the quality of goods or services marketed or sold in connection with the Trademark in addition to those standards set forth in this Agreement.  Licensor must give written notice of such additional standards (the “Notice of Additional Standards”) to Licensee in order for those standards to be applicable.  To the extent that Licensee is not in compliance with these additional standards at the time it receives a Notice of Additional Standards, Licensee must conform to the stated standards as soon as is commercially feasible.

   c.   Licensee shall make available upon request samples of any products or services sold in connection with the Trademark, including any packaging, displays, or other materials employed in the marketing, display or sale of such products or services.  Licensee shall also grant Licensor access to inspect any facilities in which such products are designed or manufactured for the purpose of ascertaining whether Licensee is in compliance with the quality standards then in effect for the use of the Trademark, where such access is commercially reasonable.

8.   Assignment.   Licensee may not assign its rights, duties or obligations under this Agreement without the prior written approval of Licensor.  Licensee may, however, assign this Agreement without Licensors prior written approval if such transfer is to a purchaser of all or substantially all of Licensees assets, or to a purchaser or other transferee of a controlling equity interest in Licensee.  Licensor shall have the right to transfer its interest in this Agreement and in the Trademark without the consent of Licensee.  Licensor must notify Licensee in writing in the event of that Licensor assigns all or a material part of this Agreement (the “Licensors Notice of Assignment”).  The Licensors Notice of Assignment must be sent to Licensee within 30 days of such assignment.

9.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of the State of ___________________, without regard to conflicts of law principles.

10.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

11.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

12.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   

   
   If to Licensor:      
      
      
      

   If to Licensee:         
         
      
      

13.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

14.   Entire Agreement.   This Agreement constitutes the entire agreement between Licensor and Licensee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.


IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


LICENSOR

                  
Signature
                  
Print Name
LICENSEE

                  
Signature
                  
Print Name

Schedule A

Trademark Description




Number of Pages11
DimensionsDesigned for Letter Size (8.5" x 11")
EditableYes (.doc, .wpd and .rtf)
UsageUnlimited number of prints
Product number#28038
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Trademark License Agreement












This Packet Includes:
   1. General Instructions
   2. General Information
   3. Step-by-Step Instructions
   4. Trademark License Agreement



General Instructions


 Trademark License Agreement


   This kit includes information and tools that will assist you in drafting a trademark license agreement.

   While the owner of a trademark holds the exclusive right to use that trademark to market or sell goods and services, the trademark owner may transfer certain of those rights to a third party by way of a license.  A trademark license generally is given for a specific duration, during which the licensee pays the trademark owner for the use of the trademark.  Once the term of the license is over, all rights in the trademark revert back to the trademark owner.

   Included in this kit is a sample form for drafting a trademark license agreement, along with general instructions explaining the significance and operation of certain provisions in the Agreement.  The kit should be used to draft your own agreement, but you are advised to have a competent trademark attorney review the agreement before you sign it.







General Information
Trademark License Agreement

A trademark is a symbol, character, design, word, or picture that is used to distinguish a product in the marketplace.  In essence, it is the visual representation of brand identity.  Trademarks are protected both under state and federal law.  Under state law, the use of a trademark affords the user both common law and statutory protection against infringement.  Registration under state law enhances (to varying degrees depending upon the particular state) the protections offered by that states statutory trademark scheme.  However, state statutory protections generally apply only to use within that state, and do not protect the user from infringement outside that states borders.

Under federal law, there are a host of statutory protections that can be secured through the registration of a valid trademark with the U.S., and which protect the mark throughout the country.   Further, federal registration affords the user the opportunity to collect treble damages in a successful infringement action and to use the ® symbol on its trademarked products in all 50 states, along with many other privileges and protections.  

For more information on federal trademark registration, and for instructions on how to register your trademark online, visit the website of the U.S. Patent and Trademark Office (USPTO).  





Step-by-Step Instructions
Trademark License Agreement

   Trademark License Agreements can be extremely complex.  The sample agreement included in this kit is a basic agreement, addressing the key elements to licensing a trademark, and receiving compensation for that license.  If your situation requires treatment of more complex issues, you should consult a competent attorney who can assist you in drafting a suitable agreement.

Grant of License

   The license granted in this type of agreement spells out the kinds of rights that the licensee will be able to enjoy.  It is important in this section to set forth clearly the geographic territory in which the trademark may be used by the licensee.  Further, since the quality and type of goods which are sold in connection with the trademark can significantly affect the trademarks value (and in some cases can even affect the licensors interest in the trademark), this section should also set forth in some detail what types of goods may be sold pursuant to the license, and of what quality those goods must be.

Term

   The term of the license agreement, and of the license granted therein, is generally for a fixed period of years, all trademark rights will revert back to the licensor.

Payments

   In some situations, a lump-sum payment will make the most sense as consideration for the granting of the license.  For example, where it would be difficult to quantify the amount of goods or services sold in connection with the trademark, settling upon a flat fee may be more practicable than attempting to determine a royalty payment that is dependent upon gross sales.



   Where it is feasible to determine the total number of units sold or the total value of all units sold in connection with the Trademark (for example, where the trademark is actually affixed to a specific product to be sold by the licensee), then a royalty system may be advisable, in which the amount of money paid for the license is based directly upon the actual amount of sales that the licensee realizes through the use of the license.





   There are a number of different ways of calculating royalty payments.  In some cases, a royalty is a flat amount paid based on the number of units sold by the licensee.  In other cases, a royalty is computed as a percentage of the sales revenue received by the licensee in the sale of licensed products.

   The simplest method of calculating the royalty as a percentage of total sales is to select a percentage of gross sales revenues from all sales of the licensed products.  However, in many instances, a licensee will be given the right to deduct certain expenses from gross sales revenue before a royalty percentage is applied.  For example, will the royalty be a percentage of the total gross sales received by licensee?  Or will certain expenses be deducted from gross sales before the percentage is taken, i.e., the amount of products returned by customers, expenses incurred in advertising the product, etc.  It is important in this provision to define clearly the method by which royalty payments will be calculated.

Licensors Representations and Warranties

   The most basic representation that a licensor will generally be expected to make is that it has the ownership interest in the trademark that it claims to have, and that it therefore has the right to grant the license in the first place.  The terms of the sample agreement below state that the licensor will guarantee theses basic representations by indemnifying the licensee against any damages that the licensee might suffer due to the failure of the licensor to live up to those representations.

Quality Control



   In addition to setting forth the initial quality standards that the licensee must meet in order to continue use of the trademark, it is important for the licensee to pay close attention to the licensees compliance with these standards.  The licensor may wish to periodically review samples of the licensees product, or it may schedule inspections of the facilities in which licensee manufactures the products to ensure that quality standards are met.  The licensor may also impose new standards during the term of the agreement where necessary.  In short, the licensor must protect the value and reputation of its trademark.  Where the specific circumstances of your situation may require other monitoring and inspection systems or privileges than are stated in the sample agreement, describe them in the quality control provision of the agreement.






Schedule A:  Trademark

   In order to properly describe and identify the trademark, describe the trademark in detail on Schedule A, including any trademark registration numbers or serial numbers, and any registrations or applications pending relating to the trademark.





DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only an attorney can provide legal advice.  An attorney should be consulted for all serious legal matters.  No Attorney-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Trademark License Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Licensor”) and                             (“Licensee”, and collectively, the “Parties”).

WHEREAS, Licensor is the owner of the trademark in    (Brief description of trademark to be licensed)             (the “Trademark”).

AND WHEREAS, Licensor wishes to permit Licensee to use the Trademark for the purpose of       (Brief description of Licensees approved use of Trademark)                                         , under the terms set forth in this Agreement;

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.   Trademark.  The Trademark shall be defined as those items listed on Schedule A.

2.   Grant of License.  Licensor hereby grants to Licensee a non-transferable license to use the Trademark (the “License”) in the following manner:    (see instructions above for important information about defining the scope of the License)                                                                                                                                                                           .

The License shall be ? exclusive ? nonexclusive.

Licensor shall remain the sole owner of the copyright in the Trademark.  Licensee shall enjoy only the rights set forth above, and nothing in this Agreement shall entitle Licensee to make any claim to ownership of the Trademark, or of any other intellectual property rights in the underlying material.  Licensee may not make any other use of the Trademark other than those authorized above without prior written approval from Licensor.

3.  Term.  

a.   The term of this Agreement shall begin on the date written above and shall continue in full force and effect for a period of               years (the “Term”), unless terminated earlier pursuant to this the terms of this Section 3.

b.   Should any one or more of the following enumerated events occur, Licensor shall have the right to terminate this Agreement:
i.   Licensee does not make any commercial use of the Trademark within 12 months of the date of this Agreement.

ii.   Licensee ceases to make commercial use of the Trademark for any period of 12 consecutive months.

iii.   Licensee breaches a material provision, term, or condition under this Agreement, including, but not limited to, a failure to meet quality standards as either set forth in this Agreement, or as mandated by Licensor pursuant to Section 6(b) below.

iv.   Licensee sells all or substantially all of its assets, or experiences a Change in Control.  For the purposes of this Agreement, Change in Control shall mean a sale or other transfer of equity in the Licensee, resulting in a new person or entity becoming the controlling equity holder of the Licensee.

c.   In order to terminate this Agreement pursuant to Subsection (b) above, Licensor must provide written notice to Licensee or to Licensees successor in interest within 30 days of the date of termination stating Licensors intent to terminate and the intended date of termination.

d.   In the event that this Agreement is terminated pursuant to this Section 3, Licensee shall cease using the Trademark in the course of Licensees business as soon as is commercially feasible.  

e.   At the end of the Term, or upon any termination of this Agreement, all rights, interest and ownership of the Trademark shall revert to Licensor, and shall be the sole property of Licensor.

4.  Payments.  

a.   Licensee shall pay to Licensor (check any that apply):
   a fee of $      , payable in the following installments:    (briefly state the times at which payment will due, and how much will be due for each payment; i.e., upon execution of this Agreement, upon commencement of using the Trademark, etc.)               .
   a royalty of $           per unit sold in connection with the Trademark.
   a royalty of $          per $             worth of goods and services sold in connection with the Trademark
   a royalty of      % of the gross sales from all goods and services sold in connection with the Trademark.
   Additional details:                                                                                                   .
(Include any considerations, deductions, or other formulae that will be used to determine the definition of “gross sales” for the purposes of this section.)
 
b.   Licensee shall pay to Licensor an advance against the royalties discussed in Subsection (a) above, in the amount of $      .  This advance shall be paid in full to Licensor within 7 days of the execution of this Agreement.

c.   (if applicable) Licensee shall submit to Licensor written quarterly reports (the “Quarterly Reports”) at the end of each quarter of the calendar year (March 31; June 30; September 30; December 31) stating the amount of goods and services sold in connection with the Trademark for the then-ending quarter, and the corresponding amount owed to Licensor as royalty payments for that quarter (the “Quarterly Royalty Payment”).  Quarterly Reports must be received by Licensor no more than 7 days after the end of each quarter.  Payment of each Quarterly Royalty Payment must be paid to Licensor in full within 30 days of the end of each quarter.  Failure to submit Quarterly Reports or to make Quarterly Royalty Payments within the time allotted above shall be considered to be a material breach of this Agreement.
d.   Licensor shall be given access by Licensee to Licensees records, wherever commercially reasonable, in order to audit Licensees stated sales records, and to confirm that all royalty payments are properly stated and accounted for.  If it is determined that any Quarterly Royalty Payment has been deficient, Licensee shall have 7 days to pay Licensor the deficient amount.  Failure to pay deficient royalty amounts within the time allotted above shall be considered to be a material breach of this Agreement.

e.   In the event that this Agreement expires or is terminated pursuant to the terms and conditions under Section 3 above, Licensee shall remain obligated to pay to Licensor any royalties due to Licensor, or any payments, whether those units were sold before or after the termination of this Agreement.

5.  Licensors Representations and Warranties.  

a.   Licensor represents and warrants that it is the sole and exclusive owner of the Trademark, and owns all right, title and interest in the Trademark.
b.   Licensor represents and warrants that it has the legal authority to grant Licensee the License, and that no other person or entity is required to give its consent for the License to be valid.
c.   (if License is exclusive) Licensor represents and warrants that Licensor has not licensed the Trademark to any person or entity other than Licensee, nor will it license the Trademark to any person or entity other than Licensee for the duration of this Agreement.

6.   Indemnification.  Licensor agrees to indemnify and hold harmless Licensee for any claims, suits, damages, actions, or other costs arising out any breach of Licensors warranties set forth in Section 5 above.

7.   Quality Control.

   a.   Licensee hereby agrees that any product or services that it sells in connection with the Trademark shall conform to the quality standards set forth in Section 2 above, provided that Licensor may set additional specifics or standards for such sale of goods or services pursuant to Subsection (b) below.
   b.   Licensor may, at any time, set standards for the quality of goods or services marketed or sold in connection with the Trademark in addition to those standards set forth in this Agreement.  Licensor must give written notice of such additional standards (the “Notice of Additional Standards”) to Licensee in order for those standards to be applicable.  To the extent that Licensee is not in compliance with these additional standards at the time it receives a Notice of Additional Standards, Licensee must conform to the stated standards as soon as is commercially feasible.

   c.   Licensee shall make available upon request samples of any products or services sold in connection with the Trademark, including any packaging, displays, or other materials employed in the marketing, display or sale of such products or services.  Licensee shall also grant Licensor access to inspect any facilities in which such products are designed or manufactured for the purpose of ascertaining whether Licensee is in compliance with the quality standards then in effect for the use of the Trademark, where such access is commercially reasonable.

8.   Assignment.   Licensee may not assign its rights, duties or obligations under this Agreement without the prior written approval of Licensor.  Licensee may, however, assign this Agreement without Licensors prior written approval if such transfer is to a purchaser of all or substantially all of Licensees assets, or to a purchaser or other transferee of a controlling equity interest in Licensee.  Licensor shall have the right to transfer its interest in this Agreement and in the Trademark without the consent of Licensee.  Licensor must notify Licensee in writing in the event of that Licensor assigns all or a material part of this Agreement (the “Licensors Notice of Assignment”).  The Licensors Notice of Assignment must be sent to Licensee within 30 days of such assignment.

9.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of the State of ___________________, without regard to conflicts of law principles.

10.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

11.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

12.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   

   
   If to Licensor:      
      
      
      

   If to Licensee:         
         
      
      

13.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

14.   Entire Agreement.   This Agreement constitutes the entire agreement between Licensor and Licensee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.


IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


LICENSOR

                  
Signature
                  
Print Name
LICENSEE

                  
Signature
                  
Print Name

Schedule A

Trademark Description




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