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It is important to protect a computer program’s trademark because of the proliferation of large and small software development companies that exist today. This sample trademark license agreement protects the trademark of a software product to be distributed within a particular market. *** SAMPLE AGREEMENT *** THIS AGREEMENT is made by and between Markowner, Inc., a New York corporation having its principal office at ___________, New York, New York, (“Licensor”) and Schoolproducts Corporation, a Connecticut corporation having its principal office at ___________, Hartford, Connecticut, (“Licensee”). WITNESSETH: WHEREAS, simultaneously with this Agreement, the parties hereto have entered into a license agreement (the “License Agreement”) whereby Licensor has granted Licensee an exclusive license to all existing versions of a word processing program known as “The Word Software” (the “Product”) and all related documentation, if any, solely for and to the Educational Market (as defined herein); WHEREAS, Licensor is the owner of certain trademarks, including without limitation, any logos, designs, variations or translations thereof, identified on Schedule A (collectively, the “Mark”) and the exclusive right to use and license the use thereof; WHEREAS, Licensee desires to use the Mark under the terms and conditions set forth in this Agreement in connection with its distribution of the Work; and WHEREAS, Licensee recognizes that the valuable reputation and goodwill attaching to the Mark is dependent for its preservation on the high quality standards prescribed and established by the Licensor and, accordingly, Licensee is willing to comply with Licensor’s standards in order to obtain such quality and to cooperate with Licensor in preserving the reputation and goodwill attaching to the Mark; NOW, THEREFORE, in consideration of the premises and the mutual covenants and agreements contained herein, the parties hereto agree as follows: 1. License Licensor hereby grants to Licensee the non-exclusive worldwide right and license to use the Mark on or in connection with the Product for the Educational Market. “Educational Market” shall mean distribution to or through Licensee’s traditional elementary and secondary school markets, including, but not limited to, sales made by catalogue, school magazine advertising, school software and book fairs, classroom packages and school book clubs. Educational Market also includes sales through educational distributors for end use in schools only. Specifically excluded from the Educational Market are sales made through retail outlets, whether through computer specialty stores, book stores, stationery stores, chain stores, or other retail markets. 2. Term This Agreement and the license granted hereunder shall commence on the date hereof and shall continue until terminated in accordance with the provisions of this Agreement. 3. Royalties As compensation for the rights and license granted hereunder, Licensee shall pay directly to Licensor and any party identified on Schedule B hereto, at the times and in the manner hereinafter set forth in such Schedule B, royalties equal in amount to the percentages set forth therein (“Royalties”). The acceptance by Licensor or any party identified on Schedule B hereto of any tender of payment of any Royalties in an amount which is less than the total amount due (inclusive of interest, if any), shall not be deemed a wavier of such party’s right to receive the balance (including interest). 4. Trademarks (a) Licensee hereby acknowledges Licensor’s right, title and interest in and to the Mark and Licensor’s exclusive right to use and license the use of the Mark and agrees not to claim any title to the Mark or any right to use the Mark except as permitted by this Agreement. Licensee shall prominently display the Mark on all versions of the Product and shall include all notices and legends with respect to Licensor’s trademarks and trade names as are or may be required by applicable federal, state and local trademark laws or which may be reasonably requested by Licensor. (b) Licensee shall at no time adopt or use, without Licensor’s prior written consent, any variation of the Mark, including translations, or any mark likely to be similar to or confusing with the Mark. In the event that Licensor consents to any variation of the Mark, Licensee hereby agrees that Licensor shall own such new mark and shall, at its cost and expense, file and obtain in Licensor’s name all United States and international trademark registrations. Licensor agrees to give Licensee reasonable assistance, including execution and delivery of all documents required by Licensee, in filing such applications for trademark registration. (i) Licensee shall not contest or deny the validity or enforceability of the Mark or oppose or seek to cancel any registration thereof by Licensor, or aid or abet others in doing so, either during the term of this Agreement or at any time thereafter. (ii) Licensee agrees that it shall conduct the merchandising and sale of any version of the Product in a dignified manner, consistent with and enhancing the general reputation of the Mark and Licensor, and in accordance with good trademark practice. (iii) Any and all goodwill arising from Licensee’s use of the Mark shall insure solely to the benefit of the Licensor, and neither during nor after the termination of this Agreement and the license granted hereunder shall Licensee assert any claim to the Mark or such goodwill. Licensee shall not take any action that could be detrimental to the goodwill associated with the Mark or with Licensor. (c) Licensee shall, during the term of this Agreement and after termination hereof, execute such documents as Licensor may request from time to time to ensure that all right, title and interest in and to the Mark reside with Licensor. (d) The provisions of this Section 4 shall survive any termination of this Agreement. 5. Quality Standards (a) Licensee shall furnish to licensor prior to any use, for the approval of Licensor, copies of any version of the Product to be sold by Licensee using the Mark (the “Samples”) and copies of formats of all advertising and promotional material on which the Mark appears (the “Materials”). Licensor shall have the right to approve or disapprove any or all Samples or Materials and Licensor’s approval shall not be unreasonably withheld. Any Samples and/or Materials submitted to Licensor shall be deemed approved unless Licensor notifies Licensee to the contrary within thirty (30) days after receipt of such Samples and/or Materials. Licensee shall not distribute, sell or advertise any version of the Product unless and until the Sample for such versions of the Product has been approved or deemed approved by Licensor pursuant to this Section 5. All versions of the Product developed, manufactured, distributed, sold, and advertised by Licensee shall conform to the Sample approved or deemed approved by Licensor. (b) Licensee shall comply at all times at its sole expense with all applicable laws and regulations pertaining to the development, creation, promotion, sale, license or sublicense, and distribution of the Product. 6. Credits (a) The Product and all elements thereof shall be known as “The Word Software” and the credits set forth in Schedule C hereto shall be placed in the title on the screen, the label on the diskettes, and in any manuals or other documentation relating to the Product. (b) The display of the names of those being accorded credit as a developer as set forth in Schedule C hereto shall be equal in all respects in size and prominence. (c) Any party being accorded credit as an original developer of the Product as set forth above shall have the right to remove its name at any time for any reason upon reasonable written notice to Licensee and such change in credit shall in no way affect any royalties to be paid to such party hereunder. 7. Infringement (a) Licensee shall notify Licensor promptly of any infringement or unauthorized use of the Mark by others of which Licensee becomes aware. Licensor shall have the sole right, at its expense, to bring any action on account of any such infringement or unauthorized use, and Licensee shall cooperate with Licensor, as Licensor may request, in connection with any such action brought by Licensor. Licensor shall retain any and all damages, settlement and/or compensation paid in connection with any such action brought by Licensor. If Licensor does not undertake such action within ninety (90) calendar days after notice from Licensee of such alleged infringement, Licensee may prosecute the same, at its expense, provided that no settlement shall be made without the prior written approval of Licensor. In the event that any damages, settlement and/or compensation are paid in connection with any such action, Licensee shall first retain an amount in reimbursement of its expenses; any remaining amount shall be divided equally between Licensor and Licensee. (b) Licensor shall have the sole right, at its expense, to defend and settle for other than money damages any action that may be commenced against Licensor or Licensee alleging that the Mark infringes any rights of third parties. Licensee shall, at the direction of Licensor, promptly discontinue its use of the Mark alleged to infringe rights of such third parties. If Licensor does not give notice to Licensee of its intent to defend or settle such action within ninety (90) calendar days after notice from Licensee of such alleged infringement, Licensee may defend the same, at its expense, provided that no settlement shall be made without the prior written approval of Licensor and Licensee shall advise Licensor periodically of the status of the action and promptly of any material developments. Licensor reserves the right to participate at any time in such proceedings. (c) NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, LICENSOR SHALL HAVE NO LIABILITY TO LICENSEE FOR OR IN RESPECT OF ANY CLAIM BY ANY THIRD PARTY THAT LICENSEE’S USE OF THE TRADEMARK PURSUANT TO THIS AGREEMENT INFRINGES UPON OR OTHERWISE VIOLATES ANY PROPRIETARY OR OTHER RIGHTS OF SUCH THIRD PARTY OTHER THAN A CLAIM THAT LICENSEE’S USE OF THE MARK PURSUANT TO THIS AGREEMENT VIOLATES THE CONTRACTUAL RIGHTS OF ANY OTHER LICENSEE OF LICENSOR. 8. Indemnification Licensee, at its expense, shall defend and indemnify and hold Licensor harmless from and against any and all liabilities, claims, causes of actions, suits, damages and expenses, including reasonable attorneys’ fees and expenses, which Licensor becomes liable for, or may incur or be compelled to pay by reason of claims (i) of infringement of any patent, copyright or trademark or (ii) any actions, whether of omission or commission, that may be committed or suffered by licensee or any of its directors, officers, agents, or affiliates in connection with Licensee’s performance of this Agreement or in connection with any new versions, licensee versions, or derivative products developed, created, published, distributed, sold, licensed, or advertised by Licensee, irrespective of whether any prior approvals shall have been given by Licensor with respect thereto. The provisions of this Section shall survive the termination of this Agreement. 9. Best Efforts Licensee shall use its best efforts to promote the Product sold under the Mark and to coordinate the development, creation, distribution, sale, licensing or sublicensing, and advertising of the Product sold under the Mark so as to maintain and enhance the value of the goodwill residing in the Mark and to produce the maximum amount of Royalties under this Agreement consistent with the quality standards established by Licensor. 10. Competing Products Licensee agrees that during the term of the Agreement it will not publish, market, distribute, sell, license, or otherwise exploit another word processing computer software package that is substantially and functionally similar to the Product or that is targeted for the same general market or is likely to interfere with or diminish to a material extent sales of the Product. 11. Termination (a) Licensor shall have the right to terminate this Agreement upon prior written notice to Licensee, effective immediately upon Licensee’s receipt of said notice, (i) if within eighteen (18) months of the date of this Agreement, Licensee has not marketed, published, distributed, sold or licensed, or otherwise exploited the Product; (ii) if Licensee sells or otherwise disposes of substantially all of its business or assets to a third party or parties; (iii) if management of Licensee undergoes a substantial change; or (iv) if control or ownership of Licensee is in any manner transferred; provided, however, that Licensee may assign any of its rights and obligations hereunder to any parent, subsidiary, related company, affiliate, or any division of Licensee. (b) Except as otherwise provided herein, Licensee shall have the right to terminate this Agreement at any time upon one hundred twenty (120) days prior written notice for any reason. (c) Except as otherwise provided herein, if after five (5) years from the date hereof Licensor has not received at least ____________ dollars ($_______) in Royalties from Licensee, Licensor shall have the right to terminate this Agreement at any time thereafter upon thirty (30) days prior written notice. After seven (7) years from the date hereof, Licensor shall have the right to terminate this Agreement at any time thereafter upon thirty (30) days prior written notice. (d) Either party shall have the right to terminate this Agreement upon the following: (i) if either Licensor or Licensee defaults in the performance or observance of any of the terms or conditions of this Agreement and such default is not remedied within fifteen (15) calendar days (or ten (10) calendar days in the event that Licensee defaults in the payment of any of the Royalties) after written notice specifying the nature of the default is received by the defaulting party, then the nondefaulting party shall have the right to terminate this Agreement by written notice to the defaulting party; (ii) if any of the following events occur: (1) insolvency or the making by a party to this Agreement of an assignment for the benefit of creditors; (2) the filing by or against a party hereto of, or the entry of an order for relief against a party hereto in, any voluntary or good faith involuntary proceeding under any bankruptcy, insolvency, reorganization or receivership law, including, but not limited to, the Bankruptcy Code, or an admission seeking relief as therein allowed, which filing or order shall not have been vacated within sixty (60) calendar days from the entry thereof; (3) the appointment of a receiver for all or a substantial portion of such party’s property and such appointment shall not be discharged or vacated within sixty (60) calendar days of the date thereof; or (4) the assumption of custody, attachment or sequestration by a court of competent jurisdiction of all or a significant portion of such party’s property, then the other party to the Agreement shall have the right to terminate this Agreement by written notice to the party affected by such occurrence. No assignee for the benefit of creditors, receiver, liquidator, trustee in bankruptcy, sheriff or any other officer of the court or official charged with taking over custody of the assets or business of a party to this Agreement shall have any right to continue performance of this Agreement, and this Agreement may not be assigned by operation of law. (e) The exercise of any right of termination under this Section shall not affect any rights which have accrued prior to termination, including Licensee’s obligation to make payments pursuant to the terms herein, and shall be without prejudice to any other legal or equitable remedies to which the terminating party may be entitled by reason of such rights. 12. Effects of and Procedure on Termination (a) Upon the termination of this Agreement all rights of Licensee under the licenses granted hereunder shall terminate and automatically revert to Licensor and Licensee shall immediately discontinue the use of the Mark and thereafter shall no longer use or have the right to use the Mark or any variation or simulation thereof, or any word or mark similar thereto, or to (directly or indirectly) develop, create, market, distribute, sell, license or sublicense, or advertise the Product or any other products in connection with the Mark. Licensee acknowledges that Licensee’s failure to cease the use of the Mark upon termination of this Agreement shall result in immediate and irreparable damage to Licensor and to the rights of any subsequent licensee. Licensee acknowledges and admits that there is not adequate remedy at law for such failure, and agrees that in the event of such failure, Licensor shall be entitled to equitable relief by way of temporary and permanent injunction and such other and further relief as any court with jurisdiction may deem just and proper. (b) In the event that Licensee terminates this Agreement for any reason, Licensee hereby agrees not to develop, create, market, publish, distribute, sell, license, or otherwise exploit any word processing computer software packages or any other derivative word processing products for a period of eighteen (18) months after such termination. 13. Relationship of the Parties The relationship of Licensee to Licensor is that of an independent contractor and neither Licensee nor its agents or employees shall be considered employees of Licensor. This Agreement does not constitute and shall not be construed as constituting a partnership or joint venture or grant of a franchise between Licensor and Licensee. This Agreement shall not be construed as authority for either party to act for the other party in any agency or other capacity or to make commitments of any kind for the account of or on behalf of the other, except to the extent and for the purposes provided herein. 14. Assignment Neither this Agreement nor all or any portion of the rights licensed to Licensee herein shall be assigned by either party without the prior written consent of the other party which consent shall not be unreasonably withheld. 15. Merger This Agreement constitutes the entire understanding of the parties hereto concerning the subject matter hereof, all prior understandings having been merged herein. This Agreement cannot be modified or amended except by a writing signed by the parties hereto. 16. Successors The rights and obligations of the parties hereto shall inure to the benefit of, and be binding and enforceable upon, the respective successors and assigns of the parties. 17. Notices Any notice, request or other communication to any party by any other party as provided for herein shall be given in writing and shall be deemed given on the earlier of the date (i) actually received and acknowledged, (ii) three (3) days after mailing by certified or registered mail, return receipt requested, postage prepaid, or (iii) immediately following its deliver, evidenced by receipt, to any reputable overnight carrier or transmission via facsimile, in each case addressed to the intended recipient at it address (or facsimile transmission number) set forth herein. The places to which notices are to be given hereunder may be changed from time to time by written notice to all other parties as aforesaid. 18. Governing Law; Jurisdiction; Venue This Agreement shall be governed by, and interpreted under, the laws of the State of New York applicable to contracts made and to be performed therein, without giving effect to the principles of conflicts of law. Except in respect to an action commenced by a third party in another jurisdiction, the parties hereto hereby agree that any legal suit action, or proceeding arising out of or relating to this Agreement must be instituted in a federal or state court location in the county and state of New York, and the parties hereto hereby irrevocably submit to the jurisdiction of any such court and waive any objection to the laying of venue in, or the inconvenience of, such forum. 19. Waiver No waiver by any party of any breach of any provision hereof shall constitute a waiver of any other breach of that or any other provision hereof. 20. Attorneys’ Fees In any action between the parties to enforce any of the terms of this Agreement, the prvailing party shall be entitled to recover expenses, including reasonable attorneys’ fees. MARKOWNER, INC. By: _________________ Title: ______________ SCHOOLPRODUCTS CORPORATION By: _________________ Title: ______________ This sample agreement is intended to serve solely as an exemplar and may need to be modified to conform to the legal requirements of your jurisdiction. It in no way constitutes legal advice. Richard Raysman and Peter Brown are partners in the New York firm Brown Raysman Millstein Felder & Steiner ( www.brownraysman.com). The authors are also computer law columnists for theNew York Law Journal , an affiliate of law.com. For information on purchasing the bookComputer Law: Drafting and Negotiating Forms and Agreements, please go to www.lawcatalog.com/product_detail.cfm?affil=lawcom&productID=1082

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