[E-trademarks] Licensing of Intellectual Property Rights?

[Edward Timberlake]

By no means exhaustive or scientific, but a quick glance at the results of
a quick search of live federal trademark registrations, based on use in
commerce, including the words "licensing of intellectual property" (such as
that below), seems to suggest many of these registrations cover only
services in one class (rather than one class for the non-licensing services
and another for licensing). That's not quite the same thing as saying those
marks aren't also registered in connection with non-licensing services, but
it looks like a lot of them probably aren't.

(IC:045 OR IC:042) and GS:"licensing of intellectual property" AND RN:* AND
LD:true AND CB:1a


Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Tue, Feb 25, 2025 at 5:37 PM Gerry J. Elman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> In the ancient past, the USPTO deemed licensing of IP to include licensing
> of the Applicant's IP to others.  Then the wind shifted, and the USPTO took
> the position that the "service" of IP licensing includes only doing it for
> another company's IP.
>
> -Gerry Elman
> Elman IP
> Denton, Texas
>
>
>
> Sent from my T-Mobile 5G Device
>
> -------- Original message --------
> From: Edward Timberlake via E-trademarks <e-trademarks at oppedahl-lists.com>
>
> Date: 2/25/25 3:43 PM (GMT-06:00)
> To: "For trademark practitioners. This is not for laypersons to seek legal
> advice." <e-trademarks at oppedahl-lists.com>
> Cc: Edward Timberlake <ed at timberlakelaw.com>
> Subject: Re: [E-trademarks] Licensing of Intellectual Property Rights?
>
> Maybe TMEP 1301.01(a) - Criteria for Determining What Constitutes a
> Service would have some helpful language?
>
> https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1300d1e36.html
>
>
> Sincerely,
>
> Ed Timberlake
> *Board Certified Specialist in Trademark Law
> <https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*
>
> *Timberlake Law* <http://timberlakelaw.com/>
> Chapel Hill, NC
>
> Schedule a call on Clarity <https://clarity.fm/edtimberlake>
> ed at timberlakelaw.com
> 919.960.1950
>
>
>
>
>
>
>
>
> On Tue, Feb 25, 2025 at 4:26 PM Montgomery, Alexander P. via E-trademarks <
> 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
>>
>>
>> --
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>>
> --
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>
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