ESTABLISHING A TRADEMARK FOR A LICENSING PROGRAM
Many licensors have adopted trademarks to identify their merchandise licensing programs to consumers. Trademarks have been attached to several different types of licensing programs, including programs featuring characters (Peanuts; Clifford the Big Red Dog), artwork (Flavia; Mary Engelbreit), and lifestyle themes (Hometime; Martha Stewart). A trademark that becomes widely recognized by consumers can help distinguish a licensing program from other similar programs, and may allow the licensor to obtain a higher royalty than would otherwise be the case.
A licensing program trademark can be a word, an image, an abbreviation, or the licensor(s name or a portion of the licensor(s name. While it is possible to have more than one mark for a licensing program, most licensors will find that there is greater value in having a single mark across all product lines rather than trying to establish several different marks for the same program.
The first step in adopting a trademark is to select an appropriate mark. The mark should have some connection to the theme or focus of the licensing program, but it should not be a descriptive or generic term for the products that are intended to be sold under the program, and it should not be confusingly similar to any other trademark that is already in use or that is the subject of an intent to use application for registration. In order to determine if a mark is available for use, it is necessary to do a search, not only of current U.S. Trademark Office records, but also of other records, such as state trademark registrations and industry directories, to see if there are any potential conflicts.
If it appears that the mark is available for use, the next step is usually to register the mark with the U.S. Patent & Trademark Office. While registration is not required, most licensees will refuse to enter into a trademark license unless the mark has been registered. In addition, registration may head off any infringing uses of the trademark, and will put the licensor and the licensor(s licensees in a better position to stop any infringement that might occur.
Registration can be based on actual use (if the mark is already in use), or on a good faith intent to use (if the mark is not already in use but will be used in the near future). Intent to use applications are frequently used for licensing programs, since they allow a licensor to reserve a mark before actually beginning use of the mark.
Registration is by international class. Ideally, the mark should be registered for each class of goods on which it is likely to be used. However, a typical merchandise licensing program may cover products in ten or more different classes, and it may be cost prohibitive to file an application for each possible class.
If this is the case, the licensor should at least register in the class or classes for which use has already begun or is imminent, and in any other classes which are likely to be important. For example, if the licensor currently has deals for greeting cards and dishware, and feels that the properties covered by the licensing program are ideally suited for use on handbags and hats, it would be advisable to file applications in Class 16 (paper products), Class 21 (dishes), Class 18 (handbags) and Class 25 (clothing and headgear). The licensor can always file applications on an intent to use basis in other classes, as needs and finances warrant.
In conclusion, a trademark can add substantial value to a licensing program, provided the mark is properly selected and managed.