[E-trademarks] Licensing of Intellectual Property Rights?

Gerry J. Elman gerry at elman.com
Tue Feb 25 22:49:55 UTC 2025


But if so, check the date of the registrations.  I don't happen to recall when the policy shift occurred, but if there are registrations for IP that's owned by the registrant, I'd bet that they were granted in the good old days before the wind direction changed.

I recall having gotten such a registration from an application filed in 2005.   I think the change took place by 2008.

-Gerry Elman
Elman IP
Denton Texas

Sent from my T-Mobile 5G Device


-------- Original message --------
From: Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: 2/25/25 4:36 PM (GMT-06:00)
To: "For trademark practitioners. This is not for laypersons to seek legal advice." <e-trademarks at oppedahl-lists.com>
Cc: Scott Landsbaum <scott at scottlandsbaum.com>
Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?

I think of "Licensing of intellectual property" as describing the service of being a licensing agent and licensing the intellectual property of others.  You can look up any large consumer facing company - Disney or McDonalds - and see if they have any registrations for this.

Regards,
Scott

Scott Landsbaum, Inc.
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On Tue, Feb 25, 2025 at 1:27 PM Montgomery, Alexander P. via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Question for the brain trust:

If your client uses its mark for X services, and also licenses its mark to others so that those others can provide X services (not a franchise), do you include in an application for the mark:


•       X services; AND

•       (Class 45) Licensing of intellectual property

or only “X services”?

Alexander P. Montgomery <http://www.hinckleyallen.com/people/alexander-p-montgomery>
Partner
________________________________
Hinckley Allen <http://www.hinckleyallen.com/>
28 State Street
Boston, MA 02109-1775
p: 617-378-4366 |  f: 617-345-9020
amontgomery at hinckleyallen.com<mailto:amontgomery at hinckleyallen.com>

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