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A trademark licensing agreement does not need to be written down to be legally enforceable, but a simple word-of-mouth licensing agreement is much more challenging to enforce. For this reason, it is highly recommended that a written agreement is created and signed by both the licensor and the licensee.
In particular, a licensee's rights are generally not assignable unless the license agreement expressly permits assignment or the licensor otherwise consents. on its PLC Intellectual Property & Technology web services at .
A trademark license is typically accomplished through a contract, like the written agreement form that follows. After the parties have negotiated and signed their agreement, the document should be recorded with the U.S. Patent and Trademark Office (USPTO).
Although 15 U.S.C. § 1060 requires that assignments be written, a license can be oral. In licensing trademark rights, the owner may include the right to sue for trademark infringement. The licensee's right to sue originates from the license and is governed by the terms of the licensing agreement.
The steps for making a license agreement are as follows: Download a template for a licensing agreement. Choose your role as the licensor or licensee. Define the license(s) in the agreement. Decide whether the license is exclusive or not. Settle the matter of fees and payment schedule. Add a renewal date and rules.
In trademark licensing, a trademark owner (Licensor) grants permission to another (Licensee) to use that trademark on mutually agreed terms and conditions.