Question
From:(redacted)
Sent:Monday, December 04, 2006 11:35 AM
To:Verne, B. Michael
Cc:(redacted)
Subject:Exclusive Trademark Licenses
DearMike
Thankyou for taking the time on Friday (12/1) to discuss the applicability of theHSR Act to exclusive licenses of trademarks.
Toconfirm our conversation, you indicated that the initial grant of an"exclusive" trademark license would not be an asset for HSR purposes,even in cases (as we discussed) where the licensee would be responsible fordesigning and making (subject to the standard reservation of product approvaland quality control rights the licensor would retain) the product that wouldbear the mark of the licensor. Such an exclusive license would relate only tothe distribution/sale of the trademarked goods; even where the licensee makesthe product, the trademark license would not apply to, or be necessary for,such manufacture (unlike the case with patents), and so the license itselfremains applicable only to the right to sell. Further, an exclusive trademarklicense would not be an asset, regardless of the scope of products ordistribution channels covered by the license (you noted that Para 29 in the ABAPractice Manual should not be read to impose a "field of use"analysis as to whether an exclusive trademark license is an asset).
Onthe other hand, in contradistinction to a trademark "license", youindicated that an outright assignment of all rights and interest in a trademarkwould be a conveyance of an asset for HSR purposes (with HSR filings requiredif the jurisdictional thresholds are exceeded and no exemption applies).