Liscensing

Posted by . updated on 11/11/2009
I am working with the Disney organization on a new product. My product is trademark driven and not patentable - It is the name that sells the product  - not the actual product itself. For some reason Disney had never thought of this and they told me that it was new to them.

We are now in somewhat of a development phase and I am becoming a vendor. The want to alter the name slightly by adding Disney to the name. For instance if my trademark was for "Pizza" they want to call it "Mickey's Pizza" - with Pizza being my trademark for this specific item. They asked me if I needed to go into a licensing agreement with them or - since I was protected by my trademark - just become a vendor and they will go thru me for this product. I initially stated that I own the trademark for this type of product and that as long as they bought this product thru me I had no problem with them adding Disney to the name but if they were to make this product on their own and attach my trademark to it that that would be an infringement.

I was wondering if I was correct and if it would be better to enter into a licensing agreement with them. Does a licensing agreement mean that only Disney can sell this product by this name?

Does this give them ownership of this trademark?

Would I be better protected from them knocking me off by having an licensing agreement with them?

If Disney were to be successful with this product - can they expend on using the name on a larger line without going thru me? Such as adding the name to cloths, hats etc. My trademark is for a specified product not everything.

Thank you for your help.

Patricia
Answers (1)
 
JSonnabend
You are absolutely correct to be concerned about your trademark rights in this scenario.  By all means, make sure you have a proper license in place with Disney before they begin using your mark.  The license can (and probably will) be made part of the supplier agreement, but it doesn't have to be.

If you play this wrong, you face the serious possibility of losing your mark, and I don't think Disney would hesitate to stab you in the back, so to speak.

- Jeff
 

Related Questions

Trademark License & Patent Number Agreements

Trademark License & Patent Number Agreements

In Trademark Ownership    -  updated on 11/11/2009
We have a trademark license and patent number agreement that we send to our customers. The question is whether this agreement is necessary. What does an agreement like this give us that the PTO doesn't, when we register our trademarks and patents? What are the benefits of having this type of agreement? Does it give us any more control over the patent or mark? Thank for your help.
Control of trademarked services

Control of trademarked services

In Trademark Ownership    -  updated on 11/11/2009
Here's the scenario:

Community group sets up 501(c)(3) corp. to help elderly neighbors by partnering with commercial services and coordinating local volunteers. 

Chose trade name which is a local place name plus designation meaning town.  We'll call it "Valleybrook Towne, Inc."  There is no town of Valleybrook in the area and they seemed to be in decent shape to be able, at least, to acquire secondary meaning in their trade name for tr...
Liscensing

Liscensing

In Trademark Ownership    -  updated on 11/11/2009
I am working with the Disney organization on a new product. My product is trademark driven and not patentable - It is the name that sells the product  - not the actual product itself. For some reason Disney had never thought of this and they told me that it was new to them.

We are now in somewhat of a development phase and I am becoming a vendor. The want to alter the name slightly by adding Disney to the name. For instance if my trademark was for "Pizza" they want ...
who owns artwork in trademark license?

who owns artwork in trademark license?

In Trademark Ownership    -  updated on 11/11/2009
I am in trademark licensing negotiations with a t-shirt company.  They are creating a new line using my trademark, lets say it's "Born free," and planning on mass distributing it.  My question is who should own the new artwork created for the new line?  My belief is that the owner of the trademark would have to own the artwork.

Thank you.
Assignment of an ITU

Assignment of an ITU

In Trademark Ownership    -  updated on 11/11/2009
I understand that assignment of an ITU is not possible unless a SOU or Allegation of use has been filed, EXCEPT if the business is merged or bought or the assets associated with the mark are bought in entirety.

Question:  If the mark is in the individual's name, not the company of that individual, and another company seeking to acquire the ITU application and buy the associated goods from the company, does the acquiring company have a problem? 

Seems to m...