Trademark Rights and Restrictions
Commercial Contract
Table of Contents:
Rights to Use
Restrictions
Quality Standards
Infringement Notice
Trademark Rights and Restrictions
Rights to Use
In certain transactions, a party’s use of trademarks and brand names owned by the other party may be viewed as mutually beneficial, particularly where the owner’s marks are strong and carry goodwill and where the user’s products can generate further goodwill inuring to the benefit of the owner. In such transactions, the parties may include contractual terms governing such use, including the scope of use rights, use restrictions, and user obligations (including quality requirements), and infringement notice obligations:
Exemplar C78-1
Contractor hereby grants to Participant, for the term of the Agreement, a non-exclusive, revocable, worldwide, royalty-free license to use, publish and display the trademarks, service marks, logos, designs, trade dress and trade names (“Marks”) owned or licensed by Contractor (“Contractor Marks”), only as approved by Contractor to carry out the purposes of this Agreement. Other than as expressly approved in writing by Contractor in advance, Participant will not use the Contractor Marks with additional elements, modify or adopt new stylizations of the Contractor Marks. Contractor will have final creative approval over any printed material Participant prints and publishes or displays on-line containing the Contractor Marks. If Participant, in the course of performing its obligations hereunder, acquires any goodwill or reputation in any of the Contractor Marks, all such goodwill or reputation will automatically vest in Contractor when and as, on an on-going basis, such acquisition of goodwill or reputation occurs, as well as at the expiration or termination of this Agreement, without any separate payment or other consideration of any kind to Participant, and Participant agrees to take all such actions necessary to affect such vesting.
Exemplar C78-2
During the term of this Agreement, Service Provider grants You a nonexclusive, nontransferable, royalty free, limited license (without the right to sublicense) to use and display the trademarks, logos or service marks identified in Exhibit A (the “Service Provider Marks”) for the sole and exclusive purpose of marketing and promoting Your Secure Application to potential End Users in accordance with the terms of this Agreement. You have no other right in the Service Provider Marks and may not modify the Service Provider Marks in any way. You shall not represent to any third party that You have any right to bind Service Provider in any manner or that Service Provider endorses, certifies or otherwise promotes Your Secure Application. You use of the Service Provider Marks shall be in compliance with the trademark usage guidelines provided by Service Provider as may be amended from time to time. You will cooperate with Service Provider to allow for review of your use of the Service Provider Marks and compliance with Service Provider’s usage guidelines. All goodwill arising out of Your use of the Service Provider Marks will inure to the benefit of and belong to Service Provider.
Exemplar C78-3
The above grant includes, without limitation, the right and license to, in accordance with LICENSOR’s published trademark guidelines: (i) use LICENSOR’s trade names, product names and trademarks in connection with the marketing and distribution of Licensed Product(s) and (ii) all pictorial, graphic and audio visual works including icons, screens and characters created as a result of execution of the Licensed Product(s). LICENSOR grants LICENSEE the right to establish LICENSEE’s own branding of the Licensed Product(s).
In the following exemplars, each party receives a reciprocal right to use the other party’s trademarks for promotional purposes:
Exemplar C78-4
Unless otherwise labeled, all trademarks, trade names, service marks, logos, banners, and page headers displayed through the Services (collectively, the "Service Provider Marks") are the property of Service Provider and its affiliates. Service Provider hereby grants Developer a non-exclusive, non-transferable, royalty-free license to use the Service Provider Marks to promote the use of the Service Provider Services through the Application. Developer’s use of the Service Provider Marks will be in accordance with the Developer Branding Guidelines on the Developer Web Site and Service Provider's guidelines for using the Service Provider Marks as provided by Service Provider from time to time. All goodwill arising out of Developer's use of the Service Provider Marks will inure to the benefit of and belong to Service Provider. Developer hereby grants Service Provider a non-exclusive, non-transferable, royalty-free license to use the trademarks, trade names, service marks, and logos of Developer (collectively, the “Developer Marks”) to promote the parties’ relationship under this Agreement, the scope, content, form, and/or manner of which shall be subject to the prior written consent of Developer. Service Provider’s use of the Developer Marks will be in accordance with Developer's guidelines for using the Developer Marks as provided by Developer from time to time. All goodwill arising out of Service Provider’s use of the Developer Marks will inure to the benefit of and belong to Developer.
Exemplar C78-5
Solely in connection with the branding and related promotional rights and obligations specified herein, (i) Licensor hereby grants to Licensee the right to use and display those trademarks, trade names, service marks, and logos of Licensor (the “Licensor Marks”) now or hereafter identified by Licensor to Licensee in writing, and (ii) Licensee hereby grants to Licensor the right to use and display those trade names, trademarks, service marks, and logos of Licensee (the “Licensee Marks”) now or hereafter identified by Licensee to Licensor in writing (the Licensor Marks and the Licensee Marks may be generally or collectively referred to as the “Marks”). In addition, each Party may use the other Party’s Marks in designing and implementing any marketing, advertising, or other promotional materials (expressly excluding press releases), subject to the other provisions contained herein, provided that each Party: (i) does not create a unitary composite mark involving a Mark of the other Party without the prior written approval of such other Party; and (ii) displays symbols and notices clearly and sufficiently indicating the trademark status and ownership of the other Party’s Marks in accordance with any guidelines provided by the owner of the Mark and with applicable trademark law and practice. This Section does not provide either Party the right to use any of the Marks of the other Party except as expressly provided in this Agreement. Except as specifically provided herein, any use by either Party of the Marks of the other in connection with the performance of this Agreement shall be subject to the prior written approval of such other Party.
Restrictions
The following exemplars ensure that the trademark owner/licensor retains ownership rights to its licensed marks and that the user does not engage in activities that would tend to derogate such rights and/or weaken the strength of the marks:
Exemplar C78-6
Each Party acknowledges that its utilization of the other Party’s Marks will not create in it, nor will it represent that it has, any right, title, or interest in or to such Marks other than the licenses expressly granted herein. Each Party agrees not to do anything contesting or impairing the trademark or other proprietary rights of the other Party. Neither party shall not take any action to contest the other Party’s ownership of its Marks or use, employ, or attempt to register in any country any trademark, service mark, or trade name that is confusingly similar to the other Party’s Marks, including the registration of any internet domain names using any mark or product name or common misspelling or variant thereof, unless authorized in advance in writing by an officer of the other Party. Further, neither party shall not purchase from Google, MSN, Bing, Yahoo or other internet search engine any keyword that constitutes the other Party’s Marks or common misspelling or variant thereof. Neither Party shall use the other Party’s Marks in any manner that is likely to confuse, mislead or deceive the public, or to be adverse to the best interests of the other Party.
Exemplar C78-7
For the avoidance of doubt, Participant shall not use a Participant Mark as part of a composite design with a Contractor Mark (a) without first obtaining Contractor’ express, prior written approval to do so, and (b) other than in accordance with Contractor’ trademark usage policies in effect from time to time, including, without limitation, with respect to Contractor’s Brand Standards Guide. Participant will not contest attack, impair or put in issue the title or any rights of Contractor in and to the Contractor Marks. During and after the term of this Agreement, Participant will not represent in any manner that it owns any right, title or interest in or to the Contractor Marks or any registrations thereof or seek to register any Mark that includes or is comprised of a Contractor Mark. After the term of this Agreement, Participant will not adopt, use, or register, whether as a corporate name, trademark, service mark, or other indication of origin, any of the Contractor Marks, or any word or mark confusingly similar to them in jurisdiction. Participant will not, during the term of this Agreement or thereafter, attack the validity of the license granted herein.
Quality Standards
A trademark owner/licensor should be vigilant about the use of its licensed trademarks. In the following exemplars, the user is required to comply with certain “quality standards” to ensure that the marks are not weakened by association with products of inferior quality resulting in the loss of goodwill:
Exemplar C78-8
Each Party agrees that the nature and quality of its products and services supplied in connection with the other Party’s Marks shall conform to quality standards communicated in writing by the other Party for use of its Marks. Each Party agrees to supply the other Party, upon request, with a reasonable number of samples of any marketing, advertising, or other promotional materials publicly disseminated by such Party which utilize the other Party’s Marks. Each Party shall comply with all applicable laws, regulations, and customs and obtain any required government approvals pertaining to use of the other Party’s Marks.
Exemplar C78-9
If Contractor’ use of the Participant Marks does not conform to Participant’s quality standards as determined by Participant in its sole discretion, then Participant shall notify Contractor of such nonconformance, and Contractor shall have five (5) days to cure such nonconformance. If the nonconformance is not cured within such period, Participant may immediately terminate the license to use the Participant Marks in connection with the non-conforming use.
Exemplar C78-10
If Participant’s use of the Contractor Marks does not conform to Contractor’ quality standards as determined by Contractor in its sole discretion, then Contractor shall notify Participant of such non-conformance and Participant shall have five (5) days to cure such nonconformance. If the non-conformance is not cured within such period, Contractor may immediately terminate the license to use the Contractor Marks in connection with the non-conforming use.
Infringement Notice
As reflected in the following exemplar, the user is obligated to remain vigilant against any unauthorized use or other misappropriation of the owner’s marks by a third party and report such misappropriation to the owner for further action:
Exemplar C78-11
Each Party agrees to promptly notify the other Party of any unauthorized use of the other Party’s Marks of which it has actual knowledge. Each Party shall have the sole right and discretion to bring proceedings or take any other appropriate action with respect to any actual or alleged infringement of its Marks or unfair competition related thereto; provided, however, that each Party agrees to provide the other Party, at such other Party’s expense, with its reasonable cooperation and assistance with respect to any such proceedings or other actions.