How exclusive is an exclusive license to use a trademark?

Asked 10 months ago - Eden Prairie, MN

I am currently negotiating the language of a license agreement to use another company's registered trademark. The agreement uses the term exclusive license but also states that the licensor may grant additional licenses to "all other products". My product is a liquid nutritional supplement/drink designed to promote sleep. I want to prevent any other company from marketing any liquid ingest able product of the same name whether they call it a drink, beverage, soft drink, nutritional supplement etc.... How specific do I need to word the description of licensed products? Thanks!

Attorney answers (4)

  1. Richard T Matthews

    Contributor Level 12

    5

    Lawyers agree

    Answered . A trademark license can be exclusive, assuming you have all rights to the underlying goodwill. You should really discuss this with an attorney who regularly handles trademark matters.

    This is not to be construed as legal advice, and I am not your attorney, A conflict check and engagement letter... more
  2. Michael Essien

    Pro

    Contributor Level 9

    1

    Lawyer agrees

    Answered . An exclusive license should mean exclusive to the product. The "all other products" license does not seem to be part of the product or trademark licensed. As you can imagine, these rights depend on your terms and you need an experienced counsel to help you navigate these issues before something bad happens.

    You need to get the services of a counsel before you unduly limit your rights.

    This is not a legal advice as I do not have an attorney-client privilege with you. You should retain a lawyer... more
  3. Mark Raafat Malek

    Pro

    Contributor Level 14

    2

    Lawyers agree

    Answered . I think you are using trademark and patent protection interchangeably. Ge trademark covers the name of the product - the mark that consumers use to identify the source of the goods. A patent covers the function of the product. If you are licensing the exclusive use of the trademark, then you are only being granted the right to use the name. Nothing that I have seen yet tells me that you will be able to exclude others from making a similar product using a different name.

    The answer to this question is for informational purposes only and does not form an attorney-client relationship.
  4. Daniel Nathan Ballard

    Contributor Level 20

    2

    Lawyers agree

    Answered . This endeavor makes no sense to me. Company A owns a trademark [to brand what, you don’t say]. You want to buy a license to use that same trademark to brand a “liquid nutritional supplement / drink” that you either make or have made for your company. Company A, meanwhile, intends to sell other licenses to other companies to brand their particular products with this same trademark. So lots of different companies selling lots of different products all under the same trademark. That’s very, very unwise. Before you enter into this arrangement you need to have your own trademark attorney help you re-think this plan from the ground up – and make sure that you both look into whether Company A is really [even if accidentally] a franchisor rather than only a trademark licensor.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and... more

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