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<p><font face="Tahoma">I have seen a lot of trademark licenses, but
have not seen that provision. I share your concern: a very bad
idea which would force you to consider the possible meaning of
each term which continues without the license grant. Easier and
better to take it out. <br>
</font></p>
<p><font face="Tahoma">Regards,</font></p>
<p><font face="Tahoma">Tony Sarabia <br>
<br>
IP Business Law, Inc.<br>
320 via Pasqual<br>
Redondo Beach, CA 90277<br>
(310)377-5171<br>
<a class="moz-txt-link-abbreviated" href="http://www.calrestitution.com">www.calrestitution.com</a> <br>
</font></p>
<div class="moz-cite-prefix">On 3/8/2024 2:07 PM, Pamela Chestek via
Ip-transactions wrote:<br>
</div>
<blockquote type="cite"
cite="mid:66a3a935-97af-461d-a19e-8c96012d8480@chesteklegal.com">I'm
reviewing a trademark license that someone else wrote and I see
something I've not seen before and wondering why it's done this
way. It's not written by an adversary, I was just asked for a
second opinion on it.
<br>
<br>
The document is an agreement that includes a trademark license.
There are very few other terms; it is a royalty-free license so
there isn't any need for commercial terms like payment, etc. It
has the standard product approval, marketing approval,
termination, and boilerplate, but nothing particularly substantive
outside of the trademark license.
<br>
<br>
Upon termination, the agreement says expressly that only the
license (identified by section number) terminates and "Except for
any obligations in this license that expressly state they apply
only during the term of this license, all provisions of this
license will survive a License Termination Event."
<br>
<br>
So first off, I think the references to "license" should be
"Agreement" - they've misused the word "license" to mean both the
specific grant language and the document itself, so that needs to
get cleaned up.
<br>
<br>
But fixing that problem, have you seen license agreements where
the premise is that the agreement itself remains operative, it's
only the license grant that terminates? Typically the agreement as
a whole terminates and only specifically identified sections
survive. I'm a little nervous about the ways that a breaching
licensee might try to claim they still get to do things that might
infringe. For example, there is a section, different from the
license grant, that describes how the mark should be used. Might
they claim that section didn't terminate and by implication they
get to use the mark?
<br>
<br>
I'm just wondering what I'm missing. I'm thinking maybe they used
an agreement that had more significant business terms (e.g.,
royalty payments) where you do want to make sure you continue to
get those even after the license terminates?
<br>
<br>
Pam
<br>
<br>
Pamela S. Chestek
<br>
Chestek Legal
<br>
300 Fayetteville St.
<br>
Unit 2492
<br>
Raleigh, NC 27602
<br>
+1 919-800-8033
<br>
<a class="moz-txt-link-abbreviated" href="mailto:pamela@chesteklegal.com">pamela@chesteklegal.com</a>
<br>
<a class="moz-txt-link-abbreviated" href="http://www.chesteklegal.com">www.chesteklegal.com</a>
<br>
<br>
<br>
<br>
<br>
</blockquote>
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