We are in the process of registering a trademark (1 month after filing). The trademark is for a marketing company which was set-up as a d/b/a of our corporation. We are in the process of handing off the marketing d/b/a to one of the participants, but do not wish to lose the name we have requested trademark for. Questions, 1) can we license based on registration filed? 2) if we allow person to operate under the name prior to it being registered officially do we lose rights? Thank you XXXXX Golf Travel Consulting, XXX.XXX@XXXXXX.XXX
State/Country relating to question: Florida
We have only started the process of turnover - in talking stage but do not want to lose rights to the name of the company
Thank you for your question. Yes, the use of the name itself grants trademark rights and not necessarily the trademark registration itself. The registration allows for the enforcement of the trademark rights with respect to damages.
No, you would not lose the rights to the trademark as your company is the trademark owner. Nevertheless, it would probably be a good idea to have language in the licensing agreement that clearly states that the licensing of the trademark use does not grant the company any ownership rights and that your company is not waiving any trademark rights by the company's use of the trademark.
MBA, Experienced and Knowledgeable in Intellectual Property Law
Thank you Mr. Person - I am still not clear on one point and do not want to make a misstep -- Can we do a licensing agreement while the name is XXXXX XXXXX registration notification? Or do we have to wait? Secondly, do you do licensing agreements? Thank you - Paul
You are welcome. Yes, a licensing agreement can be drafted based upon an unregistered trademark and/or while the name is XXXXX XXXXX registration.
Yes, my firms drafts licensing agreements but the website prohibits me from providing my contact information through its medium.
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