[E-trademarks] E-trademarks Digest, Vol 16, Issue 25

asarabia2 asarabia2 at gmail.com
Wed Feb 26 20:16:29 UTC 2025


But licensing is to third parties in the same way that shopping is to 
third parties. In the latter, the trademark owner is the shop owner and 
selling its own goods to shoppers. In the former, the trademark owner is 
the licensor doing deals with other companies.

On 2/26/2025 11:54 AM, Diane Gardner via E-trademarks wrote:
> But Kevin, the retail services (regardless of whose goods are being sold) are provided to retail shoppers, a.k.a. "others."
>
> If I cannot silently include the words "for others" after a proposed identification, it usually isn't a registrable service. For example, my pharma clients often propose reciting some kind of in-house research activities. But those activities are not offered to third parties, they simply support the in-house development of the eventual goods that will be recited/branded.
>
> Kind regards,
>
> Diane L. Gardner
> Reg. No. 36,518
> _____________________________________________________________
> Please note our new corporate address as of February 1, 2023:
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> 760.294.5160 tel. 706.955.9666 tel. 803.226.0741 tel.  ▪diane at mmip.com  e-mail
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>
> -----Original Message-----
>
> Date: Wed, 26 Feb 2025 14:44:53 +0000
> From: Kevin Grierson<kgrierson at cm.law>
> 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?
> Message-ID:
> 	<MN2PR12MB41275D0181688CD56C25961AD2C22 at MN2PR12MB4127.namprd12.prod.outlook.com>
> 	
> Content-Type: text/plain; charset="utf-8"
>
> Interesting that the PTO doesn?t consider the licensing of one?s own IP to be ?licensing of intellectual property,? but one can register ?retail store services? (particularly online ones) when the only products sold are the mark owner?s.
>
>
> Kevin Grierson????
>
> |
>
> Partner
>
> [cid:image001.png at 01DB8833.13C440E0]<https://www.cm.law/>
>
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>
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>    866-521-5663<fax:866-521-5663>
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> [Email:]
>
>    kgrierson at cm.law<mailto:kgrierson at cm.law>
>
> Please note: Culhane Meadows is now CM Law<https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>
>
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