Oregon Trademark Assignment and License Agreement

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Multi-State
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US-13387BG
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Description

A license is a contractual right that gives someone permission to do a certain activity or to use certain property owned by someone else. Licensing agreement is an agreement between two enterprises allowing one to sell the other's property such as products or services.

Oregon Trademark Assignment and License Agreement is a legal document that outlines the transfer of trademark rights and grants permission for its use between parties in the state of Oregon. This agreement establishes the terms and conditions under which the trademark owner (the assignor) transfers their ownership rights or grants a license to another party (the assignee or licensee) to use the trademark. A trademark assignment occurs when the owner of a registered trademark either sells or transfers their ownership rights to another individual or entity. This agreement ensures a smooth transfer of the trademark, including the associated goodwill and any licensing rights. It is crucial to have a written agreement to safeguard the interests of both parties involved and to protect against potential trademark disputes in the future. On the other hand, a trademark license agreement is a legal contract that grants permission to a third party to use a trademark without transferring ownership. The agreement outlines the terms of use, restrictions, and any royalties or fees associated with the licensed trademark. This type of agreement allows the licensee to benefit from the reputation and recognition associated with the trademark while providing the licensor with control over its use and preservation. Some key elements typically found in an Oregon Trademark Assignment and License Agreement may include: 1. Parties involved: This section identifies the assignor/licensor (trademark owner) and the assignee/licensee (the party receiving the rights or license). 2. Trademark details: The agreement specifies the trademark being assigned or licensed, including its registration number, filing dates, and any additional identifying information. 3. Assignment or license terms: The agreement outlines whether the assignment is complete, including the transfer of all rights, or if it is a partial assignment. For license agreements, it specifies the scope of the license, including any restrictions on the use, duration, and geographical territory. 4. Consideration: This section discusses the compensation for the assignment or license, such as a lump sum payment, royalty fees, or a combination of both. 5. Goodwill transfer (in case of assignment): If the trademark assignment involves the transfer of any goodwill associated with the trademark, it will be explicitly mentioned in this section. 6. Intellectual property warranties and indemnifications: The agreement may include provisions regarding the assignor's warranties and indemnification obligations regarding the assigned trademark. 7. Confidentiality and non-disclosure: This section ensures that any confidential information shared during the assignment or license process remains protected and prohibits the parties from disclosing it to third parties. 8. Termination and breach: The agreement outlines the conditions under which either party can terminate the agreement and the consequences of a breach. 9. Governing law and dispute resolution: The agreement specifies the jurisdiction in which any disputes will be resolved and the governing law applicable to the agreement. By understanding the nuances and the different types of Oregon Trademark Assignment and License Agreements, businesses and individuals can ensure clarity and protection when transferring or licensing trademark rights within the state of Oregon.

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How to fill out Oregon Trademark Assignment And License Agreement?

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FAQ

The Act allows a registered proprietor to assign or license out the use of his trademark. The assignment and licensing can be made with or without the goodwill of the business concerned. A trademark need not be registered to be assigned or licensed.

The contract stipulates the type of agreement, the length of the relationship, payments and royalties that are due and when, and the extent to which licensing is allowed. Licensing also allows both parties to retain control over certain facets of the deal, including exclusivity and how a product or service is marketed.

Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

In Oregon, the cost of filing a trademark application with the Secretary of State's Office is $50. The submission takes anywhere from five to seven business days. You are not required to have an attorney, and your trademark is effective once filed. The trademark must be renewed every five years for a $50 renewal fee.

A trademark licensing agreement is a legal contract between a trademark owner and another party that have agreed to use the trademark on preapproved terms decided between the contracting parties.

To put it summarily, in case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of licensing, the right in the trade mark continues to vest with the original owner but only few restricted rights to use the brand/mark are given to the third party.

The licensee is the party that receives a license, while the licensor is the party that grants the license. For instance, when a bar owner gets a liquor license from the state where he operates his business, the owner is the licensee and the government that issued the license is the licensor.

A trademark licence is an agreement between a trademark owner (the licensor) and another entity (the licensee) in which the licensor permits the licensee to use its trademark for commercial purposes.

In a Trademark licence agreement the proprietor (Licensor) of a registered trademark gives authorization to another company (Licensee) to manufacture and distribute products under this trademark.

The party providing the intellectual property is called the licensor while the party receiving the intellectual property is called the licensee. In a licensing agreement, the licensee typically pays an upfront fee in conjunction with a royalty fee.

More info

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Oregon Trademark Assignment and License Agreement