[E-trademarks] Licensing of trademark in Iran

[Pamela Chestek]

When I say "license," I am speaking in the sense of a true license, that 
is, a defense to infringement. It would an email that says nothing more 
than "I will no sue you for using this trademark."

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com
(919) 800-8033
www.chesteklegal.com

On 7/23/2024 5:37 PM, Crane, Susan wrote:
> I am not conversant in the language of the Iran sanctions. But I have 
> some experience on transactions where there are Cuban registrations 
> involved. Even discussing the registrations as part of negotiations 
> could be considered a violation of the sanctions.
>
> I find it hard to believe licensing a trademark to an Iranian entity 
> would not violate the sanctions. And I certainly would not risk it 
> without consulting someone who is expert in them.
>
> Susan L. Crane
> Group Vice President, Legal
> Intellectual Property, Brands & Marketing
>
> Wyndham Hotels & Resorts, Inc.
> 22 Sylvan Way
> Parsippany, NJ 07054
> O (973) 753-6455
> M (973) 879-3420
> Susan.Crane at wyndham.Com
>
>> On Jul 23, 2024, at 7:28 PM, Pamela Chestek via E-trademarks 
>> <e-trademarks at oppedahl-lists.com> wrote:
>>
>> 
>> Client owns a trademark registration in Iran (lawful per 31 CFR 
>> 560. 509). Can Client license that trademark, royalty-free, to 
>> someone in Iran, or would that be contrary to the sanctions? If yes 
>> or no, a citation in support would be wonderful. 
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>> Client owns a trademark registration in Iran (lawful per 31 CFR 560.509).
>>
>> Can Client license that trademark, royalty-free, to someone in Iran, or
>> would that be contrary to the sanctions? If yes or no, a citation in
>> support would be wonderful. I have been reading 31 CFR part 560 but
>> haven't found a clear answer one way or another. 31 CFR 560.204 says
>> that the "the exportation, reexportation, sale, or supply, directly or
>> indirectly, from the United States, or by a United States person,
>> wherever located, of any goods, technology, or services to Iran or the
>> Government of Iran is prohibited," but I wouldn't consider the grant of
>> a license "goods, technology or services."
>>
>> Thanks,
>>
>> Pam
>>
>> Pamela S. Chestek
>> Chestek Legal
>> 300 Fayetteville Street
>> Unit 2492
>> Raleigh, NC 27602
>> pamela at chesteklegal.com
>> (919) 800-8033
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>>
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