Legal Question in Intellectual Property in California

Re: Trademark Licensing

First, if you have not used the trademark in the U.S., you may not be able to enforce it here. A trademark vests by USE, not by registration, so you must actually make use of the mark in commerce to own exclusive rights. Use in Canada may not necessarily preclude someone else from claiming the mark in the United States. (For instance "Aspirin" is a trademark in Canada, but a generic term in the U.S.)

I would need to know more about the specific mark and how you see it being applied before I could give you a specific response regarding licensing. If you want to license the mark, I assume you mean either that you have a franchise idea or you have a recognizable product line that others would extend by selling their products under your trademark.

In order for you to license throughout the United States, you first need to make sure you own the mark--otherwise you could be "ripped off" by potential licensees. And, no, you probably would not be able to grant "exclusive" licenses to 50 separate individuals. A federal trademark is nationwide and the people you license to would be protected nationwide. Because of the difficulty of restricting marketing (via TV, radio, internet, magazines, newspapers) to a specific local area, it is problematic to license by state. When you grant an exclusive license, you are guaranteeing each licensee that no other licensee will cross over into their territory, which is very difficult to regulate these days of easy mass communication.

Having said that, I am sure there are legal and profitable ways to achieve what you want. If you would like to consult with me, my rate would be $200 per hour, although I also offer flat rates for contract drafting. Given the uncertainty of how complex your problem will be, and the probability that you will need to negotiate with potential licensees who have differing requirements, it would probably be more cost effective for you to pay an hourly rate rather than a flat fee. The problem with flat fee arrangements is that they leave no room for variables--you get only what you have paid for and any variables would trigger a separate fee.

Re: Trademark Licensing

You can do a limited territory exclusive license on your TM. However, you will need to insure that you have your U.S. registration to make this license effective nation-wide. Otherwise you are limited to the territories where the mark has actually been used.

Regarding cost, it would depend on the complexity and nature of the contract you want. Also, do you want all the contracts prepared by one attorney or just the one for California right now? I would think that you could work this on a flat fee basis with an attorney in your area. You could probably expect somewhere between $500 and $3000, depending as I said on nature and complexity of the agreement. Alternatively, on a time basis, you could probably expect hourly attorney rates ranging from $180-$300/hr. These, as you would imagine, are a function of the size of the firm you consult and total cost is again driven by time and complexity of the work you want done.

Note that most attorneys should consult with you initially on a no-cost basis, and after learning what your project entails, could give you a more accurate estimate of cost.

Let me know if you have any other questions.

Re: Trademark Licensing

Dave,

Yes, you can grant exclusive licenses for each of the 50 states. A good lawyer will give you a "volume discount". In other words, the cost for your 50 contracts should be much less 50 times the cost of a single contract. This is because a good, honest trademark lawyer will spend alot of time on the first contract, then only a little time modifying the other 49 contracts.

I would do all 50 contracts for $4,000.00

I am an intellectual professor and law school professor of trademark law. You can see my bio at http://www.schinner.com/html/the_schinner_law_group_-_d__al.html

Re: Trademark Licensing

Yes, it is possible to grant exclusive license for each state. You can have one master contract drafted by a lawyer ...then change accordingly for different states...as need arises. One exclusive licensing contract should cost you anywhere from $750-$1500. Feel free to contact me at 818-481-9284.

Follow-Up Re: Trademark Licensing

Dave,

As a follow-up, I would caution against using one form and modifying it for the other 49 states. This is because the purchasers will likely hire attorneys to negotiate their contracts. Without an attorney to help you negotiate, you may get the short end of the stick.

I will not only draft the agreements for you, I also will negotiate all of the agreements with the purchasers' attorneys.