In our exploration of the representations and warranties often seen in fashion agreements, we come to one that is at the core of licensing and distribution agreements, and it typically looks like this:
Fashion Company represents and warrants that it owns and maintains trademark registrations in the Territory [the scope of which should be clearly defined] for the licensed marks set forth in Exhibit A to this agreement.
Similar warranties can be made, as applicable, for rights to trade dress (which is an important trademark derivative for those fields, such as fashion, in which designs can be important assets) and in copyright and design patents. Those will be discussed in subsequent posts.
For trademarks, the important thing is to clarify what is actually being licensed. Scheduling the licensed marks, particularly if any involves specific colors, fonts, devices (logos) or other design elements in how they are presented, is very important because the warranty of ownership will apply only to what is specifically listed, and with trademarks, any change or variation in more than a “de minimis” or token amount may be deemed to have created a different mark—one that is not covered by the warranty.
Pitfall: licensees beware. Licensors may change their branding indicia during the term of licenses. If that happens, and the licensed trademarks are listed in the agreement, the new versions may not be covered by the contractual warranty. As an example, the mark FASHION COMPANY registered in the stylized form FASHION COMPANY will likely not be seen as the same stylized mark as FASHION COMPANY when used in the latter form. The license agreement should therefore be drafted to include any new versions of the listed trademarks within the definition of the “licensed marks”—and to require the licensor to give fair notice when any such changes in branding may be forthcoming. Financial issues concerning the costs of the changeover to the licensee can become the subject of additional negotiations.
Although due to the oddly backwards way in which United States trademark law developed (which is a long story in and of itself), it is not necessary to have a federal trademark registration to claim ownership of a mark in the USA. It is therefore common, and indeed usually prudent, for a licensee to insist on a warranty that the licensed marks have been registered for the specific goods covered by the scope of the license. Where things can get tricky is if such registrations have not yet been granted in the USA or in other jurisdictions in the territory covered by the license. The licensor may, in certain instances, be able to warrant ownership of marks that have not been registered (although it cannot so warrant ownership of the registrations themselves), or it may demand that it limit its warranty to those portions of the territory where it has registrations in place and is confident the use of the mark as licensed would go unchallenged. The business and legal risks, and the operational considerations implicit in partially encompassing warranties, should be carefully considered by both parties.
The key takeaway here is that, in the USA, trademark protection tends to be quite specific, exact and exacting. It is therefore prudent for the licensee to do due diligence to comfort itself that the licensor or other trademark owner’s warranty of ownership (and registration) is valid and accurate—because once you sign the agreement and start acting under it, you will likely be spending your money to make things happen, and no one likes throwing away money due to promises (that is, warranties) that cannot be honored.
Credit: Alan Behr
See previously published related posts: