The July–August 2015 issue of The Trademark Reporter contains my article, uh, commentary entitled Inures to the Benefit and Trademark Licensing. (Yeah, the no-italics part is a little awkward when the title is part of a sentence.) Now that a decent interlude has passed ,I can make it available to you, dear reader. Go here for a PDF copy.
As I say in the author note, I wrote this commentary at the suggestion of Pam Chestek, she of the Property, intangible blog. Again, my thanks to Pam. Writing this article showed me that now that I’ve covered the obvious stuff, there’s no end to the transaction-specific words and phrases I could write about.
Incidentally, I received the following question from a reader:
Your conclusion is to rely on the Lanham Act. What if the licensed mark is not federally applied for and/or is not used in commerce?
I defer to Pam, who responded to me as follows:
While the language is codified in the Lanham Act, the concept goes back well before that. In my research the courts don’t really seem to bother with the nicety of whether the trademark is registered or not when deciding whether the statutory section applied, they just cite to the same provision in the Lanham Act in both situations. So it’s really the same whether the trademark is registered or not.
Also, Pam and I heard from someone who said that he’s long held that inures to the benefit language is one of two essential provisions to include in a license agreement. My response would be that whatever you’re trying to say with inures to the benefit, there has to be a better way to say it. But as I note in the article, I haven’t found a convincing reason to use the phrase at all.