Unlike patents or copyrights, trademarks have unique attributes involving goodwill, consumer protection and embedded geographic attributes. All of these differences must be taken into consideration when exploring a third party relationship involving one’s trademarks. Indeed, while the normal issues of exclusive arrangements, royalty rates and scope of use are naturally involved, one most also take into consideration whether franchise laws are implicated and whether one is adequately protecting one’s mark sufficiently under the Lanham Act, i.e., engaging in naked licensing. Therefore, licensing a company’s marks is not a simple proposition and the wrong steps can actually implicate a loss of rights. These contracts require truly experienced counsel. Mr. Gibson has decades of experience in handling both national and international licensing arrangements, franchise agreements and strategic alliances involving marks.
