TRADEMARK LICENSE AGREEMENT
(Comprehensive Template)
[// GUIDANCE: This template is drafted for universal use. Jurisdiction-specific placeholders are bracketed in ALL CAPS so counsel may tailor to the chosen governing law and venue. Delete guidance comments before final execution.]
TABLE OF CONTENTS
- Document Header
- Definitions
- Grant of License & Scope
- Quality Control & Compliance
- Consideration & Payment Terms
- Representations & Warranties
- Covenants & Restrictions
- Default & Remedies
- Risk Allocation
- Dispute Resolution
- General Provisions
- Execution Block
- Schedule A – Licensed Mark(s)
1. DOCUMENT HEADER
Trademark License Agreement
This Trademark License Agreement (this “Agreement”) is made and entered into as of [EFFECTIVE DATE] (the “Effective Date”) by and between:
Licensor: [LICENSOR LEGAL NAME], a [STATE/COUNTRY] [ENTITY TYPE], with its principal place of business at [LICENSOR ADDRESS] (“Licensor”); and
Licensee: [LICENSEE LEGAL NAME], a [STATE/COUNTRY] [ENTITY TYPE], with its principal place of business at [LICENSEE ADDRESS] (“Licensee”).
Licensor and Licensee are each, a “Party” and collectively, the “Parties.”
Recitals
A. Licensor owns all right, title, and interest in and to the trademark(s) identified in Schedule A and the goodwill associated therewith (collectively, the “Licensed Mark”).
B. Licensee desires to obtain, and Licensor is willing to grant, a license to use the Licensed Mark subject to the terms set forth herein.
NOW, THEREFORE, in consideration of the mutual promises contained herein and other good and valuable consideration, the sufficiency of which is acknowledged, the Parties agree as follows:
2. DEFINITIONS
For purposes of this Agreement, the following terms shall have the meanings set forth below. All capitalized terms not defined in this Section have the meanings assigned elsewhere in this Agreement.
“Affiliate” means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with that Party.
“Confidential Information” has the meaning ascribed in Section 9.4.
“Field of Use” means [DESCRIBE PERMITTED INDUSTRY/CHANNELS].
“Improvement” means any enhancement, modification, or derivative of the Licensed Mark created by or for Licensee.
“Licensed Goods/Services” means [DESCRIBE SPECIFIC GOODS AND/OR SERVICES] offered under the Licensed Mark pursuant to this Agreement.
“Net Sales” means gross sales of Licensed Goods/Services less [SPECIFY PERMITTED DEDUCTIONS].
“Quality Standards” has the meaning ascribed in Section 4.1.
“Royalty” has the meaning ascribed in Section 5.2.
“Territory” means [DEFINE GEOGRAPHIC SCOPE].
3. GRANT OF LICENSE & SCOPE
3.1 Grant. Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee a [EXCLUSIVE/NON-EXCLUSIVE/SOLE], [TRANSFERABLE/ NON-TRANSFERABLE], [SUBLICENSABLE / NON-SUBLICENSABLE] license to use the Licensed Mark solely (a) within the Territory, (b) in the Field of Use, and (c) in connection with the advertising, promotion, distribution, and sale of the Licensed Goods/Services.
3.2 Reservation of Rights. All rights not expressly granted to Licensee herein are reserved by Licensor. Nothing herein shall be construed to transfer ownership of the Licensed Mark or any goodwill associated therewith.
3.3 Sublicensing. Licensee may [NOT] grant sublicenses without Licensor’s prior written consent, which consent may be conditioned upon execution of a sublicense agreement incorporating terms at least as protective of Licensor as this Agreement.
3.4 Use Outside Scope. Any use of the Licensed Mark by Licensee outside the Territory, Field of Use, or other scope parameters set forth herein constitutes a material breach.
4. QUALITY CONTROL & COMPLIANCE
4.1 Quality Standards. Licensee shall maintain at least the same level of quality for Licensed Goods/Services as is standard in the industry and no less than the quality approved by Licensor (“Quality Standards”).
4.2 Approval of Materials. Prior to any use, Licensee shall submit to Licensor for written approval samples of all packaging, advertising, digital content, or other materials bearing the Licensed Mark. Licensor’s failure to object in writing within [NUMBER] business days is deemed approval solely for the submitted sample.
4.3 Inspection Rights. Upon [NUMBER] business days’ notice (or immediately in exigent circumstances), Licensor may inspect Licensee’s facilities, inventory, and records reasonably necessary to verify compliance with this Section 4.
4.4 Compliance with Laws. Licensee shall comply with all applicable federal, state, and local laws, regulations, and industry standards in connection with its use of the Licensed Mark.
5. CONSIDERATION & PAYMENT TERMS
5.1 License Fee. Licensee shall pay Licensor a non-refundable, upfront license fee of [LICENSE FEE AMOUNT] within [NUMBER] days after the Effective Date.
5.2 Royalty. Licensee shall pay Licensor a running royalty equal to [ROYALTY PERCENTAGE]% of Net Sales (the “Royalty”).
5.3 Reports & Payments. No later than [NUMBER] days after the end of each calendar [MONTH/QUARTER], Licensee shall deliver to Licensor a written statement certified by an authorized officer detailing Net Sales during the reporting period and the Royalty due. Royalty payments are due concurrently with such report.
5.4 Late Payments. Overdue amounts shall accrue interest at the lesser of [X]% per month or the maximum rate permitted by law.
5.5 Audit Rights. Licensor may audit Licensee’s relevant books and records no more than [NUMBER] times per calendar year upon [NUMBER] days’ notice. If an audit reveals an underpayment of more than [X]%, Licensee shall reimburse Licensor for the cost of the audit in addition to the underpaid amounts and interest thereon.
6. REPRESENTATIONS & WARRANTIES
6.1 Mutual. Each Party represents and warrants that:
(a) it is duly organized, validly existing, and in good standing under the laws of its jurisdiction of formation;
(b) it has full power and authority to enter into and perform this Agreement; and
(c) this Agreement constitutes a legal, valid, and binding obligation enforceable against it.
6.2 Licensor. Licensor represents and warrants that:
(a) Licensor is the sole and exclusive owner of the Licensed Mark free from any encumbrance;
(b) Licensor has not previously granted any rights inconsistent with this Agreement; and
(c) to Licensor’s knowledge, use of the Licensed Mark as authorized herein does not infringe any valid intellectual property right of a third party.
6.3 Licensee. Licensee represents and warrants that:
(a) it will use the Licensed Mark strictly in accordance with this Agreement;
(b) it will not challenge Licensor’s ownership of the Licensed Mark; and
(c) it will not take any action that could harm the goodwill associated with the Licensed Mark.
6.4 Survival. The representations and warranties in this Section 6 survive termination or expiration of this Agreement.
7. COVENANTS & RESTRICTIONS
7.1 Affirmative Covenants. Licensee shall:
(a) use the ®, ™, or ℠ symbol as appropriate and reasonably directed by Licensor;
(b) furnish Licensor with specimens of use upon request; and
(c) cooperate with Licensor in protecting the Licensed Mark, including executing documents reasonably required to obtain or maintain trademark registrations.
7.2 Negative Covenants. Licensee shall not:
(a) use the Licensed Mark in any manner that is misleading, obscene, or disparaging;
(b) register, adopt, or use any mark confusingly similar to the Licensed Mark; or
(c) apply for registration of the Licensed Mark in its own name in any jurisdiction.
7.3 Notice of Infringement. Licensee shall promptly notify Licensor of any suspected infringement or unauthorized use of the Licensed Mark of which it becomes aware. Licensor retains sole discretion regarding enforcement actions.
8. DEFAULT & REMEDIES
8.1 Events of Default. The following constitute “Events of Default”:
(a) material breach by a Party that is not cured within [NUMBER] days after written notice;
(b) Licensee’s failure to pay any amount due within [NUMBER] days after the due date;
(c) Licensee’s insolvency, bankruptcy, or assignment for the benefit of creditors;
(d) unauthorized use or infringement of the Licensed Mark by Licensee; or
(e) failure to comply with Quality Standards resulting in material harm to the Licensed Mark.
8.2 Licensor Remedies. Upon occurrence of any Event of Default by Licensee, Licensor may, in addition to any other remedy available at law or equity:
(a) immediately terminate the license;
(b) seek equitable relief including specific performance and injunctive relief (Section 9.3);
(c) recover actual damages, including all unpaid Royalties, without limitation for trademark-related claims; and
(d) recover reasonable attorneys’ fees and costs.
8.3 Licensee Remedies. Upon Licensor’s uncured material breach, Licensee may terminate this Agreement and pursue damages subject to the limitations in Section 9.2.
8.4 No Waiver. A Party’s failure to exercise any right or remedy shall not constitute a waiver thereof.
9. RISK ALLOCATION
9.1 Indemnification by Licensor. Licensor shall defend, indemnify, and hold harmless Licensee, its Affiliates, and their respective directors, officers, employees, and agents from and against any claim, demand, loss, or expense (including reasonable attorneys’ fees) arising out of any third-party allegation that Licensee’s authorized use of the Licensed Mark infringes or violates such third party’s trademark rights, except to the extent such claim arises from Licensee’s breach of this Agreement or modifications made without Licensor’s approval.
9.2 Limitation of Liability. EXCEPT FOR (a) A PARTY’S INDEMNIFICATION OBLIGATIONS, (b) LICENSEE’S PAYMENT OBLIGATIONS, OR (c) LIABILITY ARISING FROM BREACH OF SECTIONS 4 (QUALITY CONTROL) OR 7 (COVENANTS & RESTRICTIONS), NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES, WHETHER IN CONTRACT OR TORT, EVEN IF ADVISED OF THE POSSIBILITY THEREOF.
[// GUIDANCE: No cap applies to trademark-related breaches per metadata directive.]
9.3 Injunctive Relief. The Parties acknowledge that unauthorized use of the Licensed Mark will cause irreparable harm to Licensor for which monetary damages are inadequate. Accordingly, Licensor is entitled to immediate injunctive relief, without posting bond, in addition to any other remedies.
9.4 Confidentiality. Each Party shall keep confidential any non-public information disclosed by the other Party and marked or reasonably understood as confidential (“Confidential Information”). Confidential Information does not include information that is (a) publicly available through no fault of the receiving Party, (b) rightfully received from a third party without confidentiality obligation, or (c) independently developed without reference to the disclosing Party’s Confidential Information.
9.5 Insurance. Licensee shall maintain commercial general liability insurance with limits not less than [AMOUNT] per occurrence and shall name Licensor as an additional insured. Proof of coverage shall be provided upon request.
10. DISPUTE RESOLUTION
10.1 Governing Law. This Agreement and any dispute arising hereunder are governed by and construed in accordance with the laws of [GOVERNING LAW STATE/COUNTRY], without regard to its conflict-of-laws principles.
10.2 Forum Selection. The Parties irrevocably submit to the exclusive jurisdiction of the state and federal courts located in [EXCLUSIVE JURISDICTION COUNTY & STATE] and waive any objection based on forum non conveniens.
10.3 Optional Arbitration. [ALTERNATIVE: “Any dispute, controversy, or claim arising out of or relating to this Agreement shall be finally resolved by binding arbitration administered by [ARBITRATION BODY] in accordance with its rules. The seat of arbitration shall be [CITY, STATE]. Judgment on the award may be entered in any court having jurisdiction.” // GUIDANCE: Delete if litigation forum is preferred.]
10.4 Jury Trial Waiver. EACH PARTY HEREBY WAIVES ITS RIGHT TO A TRIAL BY JURY IN ANY ACTION ARISING OUT OF THIS AGREEMENT.
10.5 Attorney Fees. The prevailing Party in any action or proceeding to enforce this Agreement is entitled to recover its reasonable attorneys’ fees and costs.
11. GENERAL PROVISIONS
11.1 Term & Termination. The term of this Agreement commences on the Effective Date and continues for [INITIAL TERM] years, automatically renewing for successive [RENEWAL TERM]-year periods unless either Party provides [NUMBER] days’ written notice of non-renewal. Sections 6, 8, 9, 10, 11.4, and 11.6 survive any termination.
11.2 Amendment & Waiver. No amendment or waiver of any provision of this Agreement is effective unless in a writing signed by both Parties.
11.3 Assignment. Licensee may not assign or transfer this Agreement or any rights hereunder without Licensor’s prior written consent, except to a successor in interest to substantially all of its business to which this Agreement relates. Any attempted assignment in violation of this Section is null and void.
11.4 Severability. If any provision of this Agreement is held unenforceable, the remaining provisions shall remain in full force, and the unenforceable provision shall be modified to the minimum extent necessary to render it enforceable.
11.5 Entire Agreement. This Agreement (including its Schedule) constitutes the entire agreement between the Parties regarding the subject matter hereof and supersedes all prior or contemporaneous agreements, understandings, or representations.
11.6 Counterparts; Electronic Signatures. This Agreement may be executed in counterparts, each of which is deemed an original, and all of which together constitute one instrument. Signatures delivered by electronic means (including PDF and electronic signature platforms) are deemed original signatures.
12. EXECUTION BLOCK
IN WITNESS WHEREOF, the Parties hereto have caused this Trademark License Agreement to be executed by their duly authorized representatives as of the Effective Date.
| LICENSOR | LICENSEE |
|---|---|
| By: _________ | By: _________ |
| Name: [PRINTED NAME] | Name: [PRINTED NAME] |
| Title: [TITLE] | Title: [TITLE] |
| Date: _______ | Date: _______ |
[// GUIDANCE: Add notarization/witness lines below if required by local law.]
13. SCHEDULE A – LICENSED MARK(S)
- Mark: [WORD/LOGO MARK]
a. Registration/Serial No.: [NUMBER]
b. Registration Date: [DATE]
c. Classes / Goods & Services: [CLASSES & DESCRIPTION]
[// GUIDANCE: List additional marks as needed.]
END OF DOCUMENT