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Date
Rule
801.2
Staff
Michael Verne
Response/Comments
I obviously don't remember the details of the discussion from a year ago, but we have taken the position that an exclusive license for a trademark to be used for marketing a particular product or products is not an acquisition of an asset. For example, an exclusive license to use the Washington Redskins trademark on stadium seats, but the licensor would still be selling "exclusive" licenses to a wide variety of other product (cups, bobble-heads, etc) manufacturers. That type of arrangement can be differentiated from an exclusive license to a patent for a particular field of use. For example, an exclusive license for a patent used to manufacture, market and distribute a drug for veterinary use only, where the licensor retains all rights to the patent for human use, which would be considered an acquisition of assets. If an exclusive license for a trademark gives the licensee all rights to use of the trademark, then it would be treated the same as an acquisition of the trademark and would be considered an acquisition of assets. M. Bruno, K. Berg & K Walsh concur.

Question

From:(redacted)

Sent:Tuesday, November 27, 2007 7:55 PM

To:Verne, B. Michael

Cc:(redacted)

Subject: Informal opinion 0612002

<<0612002.url>>

Mike:

I'mconfused by the attached informal opinion in which you are described asagreeing that the grant of an exclusive trademark license is not an assetacquisition for HSR purposes. I had thought that the clear rule, as describedin Interpretation 27 in the current edition of the Premerger NotificationPractice Manual was that "the grant of an exclusive intellectual propertylicense is the transfer of an asset to the licensee." I'm aware that 27says that "the grant of marketing and distribution rights" is not anasset acquisition, but I had understood that to refer to a grant of onlymarketing and distribution rights alone, without an accompanying license of thetrademark rights. The attached opinion appears to say that any trademarkagreement is merely an unreportable grant of marketing and distribution rights.But I'm quite sure that the PNO has advised us that we had to file for a numberof exclusive trademark licenses and has accepted such filings. What's theanswer?

hftp://www.ftc.gov/bc/hsr/informal/opinions/0612002.htm

About Informal Interpretations

Informal interpretations provide guidance from previous staff interpretations on the applicability of the HSR rules to specific fact situations. You should not rely on them as a substitute for reading the Act and the Rules themselves. These materials do not, and are not intended to, constitute legal advice.

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