What is an Intellectual Property Agreement?
Intellectual property agreements are necessary to obtain and maintain complete control over your trademark or brand and can be used when transferring the intellectual property to a new owner or to give consent to another entity wishing to use a similar trademark or brand.
Protecting Your Trademark After Registration
In addition to providing our clients with professional trademark search and application services, the trademark attorneys at Flat Fee Trademark are also well-versed in preparing a wide range of Intellectual Property Agreements you may find necessary to obtain and maintain complete control over your brand and intellectual property portfolio.
Taking the proactive step of obtaining federal trademark registration for your brand name is only one aspect of comprehensive trademark protection.
Intellectual Property Agreements – Safeguards
In addition to registering your trademark, or once your trademark is registered, you may find there are additional legal measures required to safeguard your brand, maintain trademark rights, or allow others to use your registered mark or intellectual property.
Many of these trademark services fall under the realm of Intellectual Property Agreements. These may be additional filings with the U.S. Patent and Trademark Office (USPTO) to maintain your registration.
For example, if you originally registered your trademark in your individual name, and now have a company that will own the trademark, you will need to file a Trademark Assignment with the USPTO, essentially transferring ownership of the mark from yourself as an individual, to your company or corporation.
Intellectual Property Agreements – Transfers
You may also need to file a Trademark Assignment if you sell, transfer or otherwise assign your registered trademark to another person or entity. The registration remains valid, but the trademark assignment will change the owner listed in the federal registration.
Intellectual Property Agreements – Consent
Another Intellectual Property Agreement you may need, or be asked to sign off on, is a Trademark Consent Agreement. If there is a third-party using a trademark name that is similar to yours, this third-party may ask for your consent to allow registration of their trademark at the USPTO.
Essentially, this third-party owner or user has a trademark they want to register. They become aware of your trademark rights either as a result of a Comprehensive Trademark Search, or perhaps the USPTO has issued an Office Action refusing registration of their mark on the basis of your prior-pending or registered trademark.
The third-party may reach out to you to ask your permission to allow registration of their mark.
In requesting your permission or consent, they may point out all the reasons why their mark does not infringe on your mark, why there would not be any consumer confusion in the marketplace if both marks are allowed to co-exist, and they may possibly offer you monetary compensation for allowing their mark to register.
This idea of “co-existence,” whereby two or more marks may exist and their owners are able to continue doing business in the marketplace, results in yet another analogous arrangement known as a Co-Existence Agreement.
Trademark Consent Agreements (also referred to as Consent to Register) go hand-in-hand with Co-Existence Agreements and Concurrent Use Agreements, which is an agreement whereby both parties agree to concurrent, or parallel, use of the same or similar trademark, with the express understanding that they are separate and distinct users, and each will undertake all reasonable and necessary action to avoid any instances of confusion between the two marks.
Intellectual Property Agreements – Licensing
Other types of Intellectual Property Agreements you may encounter involve the authorized use of your mark by others, where you are giving others permission to use your registered trademark.
This may be in the form of a licensing deal, which allows others to license your trademark name for use in connection with the goods or services they offer.
Perhaps you are licensing your trademark name for a joint collaboration, so you may enter into a licensing arrangement for a specially created line of goods or services between two or more brands – Balmain and H&M, or Lilly Pulitzer for Target – for example.
In addition to, or as part of a Trademark Licensing agreement, you may also need a Royalty Agreement to set forth the terms and conditions of compensation for using or licensing the registered trademark.
Intellectual Property Agreements – Secrets
Finally, another important Intellectual Property Agreement that gets very little attention is a Trade Secrets Agreement.
Clients often ask what they can do to protect certain aspects of their business that is not subject to the three most common types of intellectual property registration – trademarks, patents and copyright.
One option to protect intangible business assets like know-how, methodology, recipes or processes may be through a Trade Secret Agreement.
This may be part of a larger agreement, like an employment contract, independent contractor agreement or confidentiality agreement, but it effectively identifies the intangible assets – trade secrets – and forbids the third-parties with whom they are shared from using, disclosing or otherwise exploiting them for pecuniary gain.
Our Flat Fee Trademark attorneys have years of experience assisting clients with trademark services such as trademark search and registration, and also more complex trademark matters and intellectual property agreements such as those described above.