[E-trademarks] Need separate trademark license for recordation in foreign territories?

[asarabia2]

Jessica,

Some jurisdictions, such as Brazil, require registration of a license to 
allow the Brazilian company to pay royalties to a foreign company. That 
is probably the origin of the clause to which you refer.  It sounds like 
it does not apply to your client's tour.

Another issue is how the licensee will market in each country. It is one 
thing to place an ad in local media in a country and another to hire a 
local company to manage, place and coordinate marketing (which gives 
that company a right to use the IP). That  could be a sublicense. Make 
sure to address that in the license.

You probably know that when clients say all over the world, they never 
mean that - so never give a licensee worldwide rights; make them list 
the countries.

Regards,

Tony

IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com

On 4/5/2024 7:01 AM, Jessica R. Friedman via E-trademarks wrote:
>
> A client is licensing its IP to a company that’s going to create and 
> stage a touring exhibition all over the world. My client is going to 
> have total approval over all content, including TM use.
>
> I’d prefer to include all content and TM approvals in the main 
> agreement, but I’ve seen references in other TM licenses to a need to 
> register a separate TM license in certain foreign jurisdictions. Do I 
> need a separate TM license agreement for that purpose?
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
>
> Phone: 212-220-0900
>
> Cell: 917-647-1884
>
> E-mail:_jrfriedman at litproplaw.com <mailto:jrfriedman at litproplaw.com>_
>
> URL: _www.literarypropertylaw.com <http://www.literarypropertylaw.com>_
>
> 1479430908386_PastedImage
>
>
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