Trademark Licensing

Trademark licensing covers the use of your registered brand mark (name, logo, or slogan) by another business. Copyright and creative-content licensing cover the use of your original creative works: written content, photos, video, graphics, designs, music compositions, and recorded performances. Different IP types, different license structures, different commercial concerns. Copyright licensing for creators (rights in your photos, video, written work, designs, and other creative output) lives on the Creator Content Licensing & Monetization page. Music sync licensing (placement of recorded music or compositions in film, TV, ads, or social media) lives on the Sync & Master License Agreements page (forthcoming). If your deal involves both a registered trademark and creative content, this page covers the trademark portion and the creative-content page covers the copyright portion.

Trademark licensing covers the use of your registered brand mark by another business. Software and SaaS licensing covers the use of your code, platform, APIs, or technology stack. Different IP types with different license structures and different commercial concerns: uptime, support, data rights, integration scope, version-update obligations, and end-user terms. Software and SaaS license drafting and review lives on the SaaS & Enterprise Agreements page. If your deal involves both a software license AND a trademark license (for example, a SaaS product sold under your registered brand), this page covers the trademark portion and the SaaS page covers the software portion.

Trademark licensing covers the use of your registered brand mark by another business. Trade secret licensing covers the use of your confidential know-how, processes, formulas, or proprietary methods. The IP type itself derives commercial value precisely because it stays secret, which makes the legal mechanics work differently: a trademark license publicizes the mark while controlling its use; a trade secret license shares confidential information while controlling its disclosure. Trade secret licensing and the NDAs that protect it live on the NDA & Trade Secret Protection page (forthcoming). If your deal involves both a manufacturing license that uses your registered brand AND your proprietary formula, this page covers the trademark portion and the NDA & Trade Secret page covers the confidentiality portion.

A trademark license grants the licensee permission to use your mark under defined terms while you keep ownership. A trademark assignment transfers ownership entirely; you no longer own the mark after the assignment is signed. The wrong contract clause can convert what you intended as a license into a permanent transfer, which is why distinguishing the two is the first reading you do. While neither legally has to be in writing to be enforceable, every credible practice treats writing as essential, and licenses can be recorded with the USPTO Assignment Center for constructive notice.

Naked licensing is a trademark license that lacks meaningful quality-control provisions or actual oversight by the licensor. Under 15 U.S.C. § 1127 and the related-companies doctrine, the licensor must control the nature and quality of goods or services sold under the licensed mark. When that control is absent, courts treat the mark as abandoned, which strips the registration and lets the public use the mark freely. The Seventh Circuit's decision in Eva's Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011) is the canonical case: a family member ran an independent bridal salon under the licensor's mark with no oversight, and the court held the mark abandoned through naked licensing.

An exclusive license gives one licensee the sole right to use the mark within the agreed scope, and even the licensor cannot use it for that purpose during the term. A sole license is a hybrid where only the licensor and one licensee may use the mark within the scope. A non-exclusive license lets the licensor grant the same rights to multiple licensees simultaneously while continuing to use the mark itself. The choice changes the per-deal price, the licensor's ability to layer additional revenue on top, and the negotiation leverage when termination questions surface later.

Four common structures cover most trademark licenses: flat fee, per-unit royalty, percentage of revenue, or hybrid (minimum guarantee plus percentage above the floor). Audit rights let the licensor verify reported revenue against actual sales records, which is the single most under-negotiated clause in trademark license agreements. Most-favored-nation clauses are sometimes added to protect the licensor against later licensees getting better terms, and minimum-royalty floors protect against an underperforming licensee. The right structure depends on the licensee's business model, the licensor's portfolio strategy, and whether the deal is one-off or part of a broader licensing program.

An inadvertent franchise is a trademark license that meets the legal definition of a franchise without the parties intending to create one, triggering federal and state franchise-disclosure obligations the licensor never planned for. Under the FTC Franchise Rule, 16 C.F.R. § 436, three elements create a franchise: the licensee uses the licensor's trademark, the licensor exerts significant control or provides significant assistance over the licensee's method of operation, and the licensee makes a required payment over $625 to the licensor in the first six months. State franchise laws can be broader still. Triggering the rule without compliance exposes the licensor to fines, rescission, and private civil claims, which is why a franchise-trap audit before signing is the single highest-leverage step in trademark-license structuring.

Yes, but only if they exist on paper AND are actually enforced. Courts evaluate both the contractual quality-control terms (whether the license includes inspection rights, brand guidelines, approval processes, and corrective remedies) and the licensor's actual conduct (whether the licensor used those rights to monitor the licensee's use of the mark). The USPTO's Trademark Manual of Examining Procedure at TMEP § 1201.03 treats use by a related company as use by the registrant only when the licensor controls the nature and quality of the goods or services. Without that control, the use does not inure to the licensor's benefit, which can cancel the registration on a Section 14 cancellation petition.

Co-branding is when two brand owners cross-license their marks to each other so a single product or campaign carries both marks (think Doritos Locos Tacos, BMW with Louis Vuitton luggage, athlete-brand fashion collaborations). A regular trademark license is one-directional: the licensor grants rights to a licensee. A co-branding cross-license is bilateral: each party is both a licensor and a licensee, which doubles the quality-control complexity and creates joint-IP questions about anything created during the partnership. Termination provisions and post-termination brand-use rules are the highest-stakes clauses in a co-branding agreement; without them, the partnership ending becomes a fight over who keeps what.

Yes, but a US trademark registration only covers use in the United States. International licensing requires registration in each country where the licensee will use the mark, either through direct national filings or through the WIPO Madrid Protocol, which lets you designate multiple member countries from a single international application based on your US registration. The license itself can be drafted as a single agreement covering multiple jurisdictions, but the underlying registrations must exist in each country for the license to be enforceable there. Customs recordation in the target country is the final step that lets local authorities seize counterfeit goods crossing the border.

The remedy depends on what the license agreement says, which is why the termination, cure-period, and quality-control clauses get drafted with this scenario in mind. A well-structured license gives the licensor immediate notice rights, a defined cure period for fixable breaches, and termination-on-notice for serious violations like brand-disparaging conduct or failure to meet quality standards. Post-termination obligations should require the licensee to immediately stop using the mark, destroy marketing materials, and cooperate with de-branding efforts. If the licensee refuses or the breach has already harmed the brand, the next step is a demand letter scoped to the breach and the harm, with outside counsel referred for any litigation track that becomes genuinely necessary.