QUESTION
Can trademarks (registered and unregistered) used on certain goods be licensed to another party for use on other goods?
Asked on Oct 08th, 2015 on Intellectual Property - Pennsylvania
More details to this question:
For example, can a trademark I have been using on a series of novels be licensed to a comic book publisher for a new series of comic books, as the goods are similar but not same, and they happen to belong to the same trademark class? Would this licensing agreement be valid under the law and would it even be necessary? What are the rules of a trademark license in relation to that?
1 ANSWER
The answer to your question is yes you can license your trademark, but in doing so, you must exercise control over the use of the mark and can become liable for the acts of your licensee. For example, if the comic book contains a contest or endorsement, or libelous statement which results in a lawsuit, you could be named as a party in the lawsuit have to account for damages if you did not exercise sufficient control. However, assuming you do license the trademark, the license agreement should state that use of the mark enures to your benefit, and then, you could register your mark for comic books even though you don't sell comic books yourself.
Answered on Oct 08th, 2015 at 12:12 PM