It looks like a unique cross-licensing venture may force me to revise my standard email that I send to trademark clients. For years, I’ve used the following language to help clients understand how to properly select goods and services for their trademark application:
An applicant must state the specific goods or services for which registration is sought and with which the applicant has actually used the mark in commerce. You will not be able to claim federal trademark protection for goods and services outside of those listed in your application (for example, a plumbing company could begin selling “INSERT CLIENT TRADEMARK” faucets without infringing upon your registration as it will not claim “faucets.”
Introducing Jason Wu for Brizo. It turns out a trademark’s expansion into the faucet market may not be so unlikely after all:
Jason Wu is a popular Manhattan-based fashion designer. Brizo is an Indianapolis-based provider of luxury faucets. The two have collaborated to create faucets that, besides looking good, also have a green tech aspect that is pretty cool:
The Jason Wu for Brizo Odin faucet is equipped with SmartTouchPlus(TM) Technology, which allows users to start and stop the flow of water with a simple touch anywhere on the spout or handle of the faucet. For a more intuitive experience, its hands-free mode activates the flow of water when hands are anywhere within 4″ of the faucet…an exclusive temperature control technology featuring a new temperature sensing indicator. A LED light display built into the base of the faucet uses shades of light, from blue to magenta to red, to indicate actual water temperature. The electronic valve built into the lavatory faucet also monitors the mixture of hot and cold water to help provide a consistent temperature for the user, while its high temperature limit stop offers an added degree of safety.
This teamup is a nice reminder that collaborative trademark cross-licensing can be a win-win for all parties. If successful, the Jason Wu for Brizo collection will reinforce the position of the Brizo faucet brand as fashion forward and innovative, and it marks the debut of the popular Jason Wu into the world of interior design.
Have Jason Wu and Brizo got you thinking about finding a trademark license for your company? Although the terms of every trademark license are different and may be freely negotiated between the licensor and licensee, all licenses must at least include the following provisions to be valid:
- The legal names of the licensor and licensee
- Identification of the trademark(s) that are the subject of the licensing agreement
- Identification of the products/services with which the licensed mark may be used
- The geographic territory in which the licensee may operate and sell its products/services
- Quality control provisions that set forth clear standards as to the nature and quality of the licensed products/services
Optimally, a trademark license should also explicitly state:
- whether the license is exclusive or non-exclusive
- the duration of the license
- whether the license may be renewed and under what conditions
- the amount of any royalty payments or other compensation due to the licensor and when those payments are to be made
- the responsibilities of both parties upon the termination or expiration of the license
- the consequences of breaching the license and the time in which the breach must be remedied
Can you think of other innovative trademark cross-licensing efforts from Indiana companies? Leave a comment below.