2001002 Informal Interpretation

2
0812010 Informal Interpretation
DATE: January 23, 2008
RULE:
801.2
STAFF:
Michael Verne
RESPONSE/COMMENTS:
1/23/2008 Our position is that an exclusive license for all rights to use a patent for a particular field of use is a
potentially reportable acquisition of an asset. Conversely, an exclusive right to use a trademark to market and
distribute a specific product(s) is not. This is true whether the product is being manufactured either by the
licensor or the licensee. In your scenario, I agree that the license is not an acquisition of an asset. Being coupled
with copyright licenses does not change the analysis. In order for a trademark license to be an acquisition of an
asset, it must transfer all rights associated with the trademark to the licensee, even against the licensor, as if the
actual trademark is being acquired.
<image005.png> Original Image File (120.05 KB)
QUESTION
From: (redacted)
Sent: Monday, December 22, 2008 4:58 PM
To: Verne, B. Michael
Cc: (redacted)
Subject: HSR question
Mike:
I have been looking at some of the recent (last couple of years) informal interpretations on the issue of when a
license for a field of use constitutes a potentially reportable asset acquisition, and I'm having trouble discerning
a reasonably clear dividing line. In 0712007, dated 12/14/07, you say that an exclusive distribution agreement
coupled with an exclusive license to use the trademark in connection with distributing is not the acquisition of
an asset, which makes sense to me if the distributor is simply selling a product actually made by the trademark
owner, as appears to be the case in that hypothetical (candy or whiskey). But in the earlier email included in that
string, dated 11/28/07, you say somewhat more broadly that "an exclusive license for a trademark to be used for
marketing a particular product or products is not an acquisition of an asset," citing the example of an exclusive
license to use the trademark on stadium seats, where the licensor is also granting exclusive licenses to use the
trademark on other products (cups, etc.). In that scenario, I assume the licensee would actually be making the
pillows (or cups, bobble-heads, etc.), not just selling someone else's brand-name product, so I gather the
question of who is doing the manufacturing is not the determining factor. You contrast that to an exclusive
license to a patent in a particular field of use, such as a license for a a drug for veterinary use. While I agree that
the trademark arrangement "can be differentiated" from the patent license, I'm not sure which basis of
differentiation you're following. Is it simply that an exclusive field of use license for a trademark, unlike a
patent, isn't enough to constitute an asset; rather, it has to be an exclusive license for "all rights to use of the
trademark," as in the example in your final sentence? See also No. 0809004, dated 9/10/08 in response to a
9/9/08 email, agreeing that a contribution of exclusive trademark licenses to a joint venture is not a contribution
of assets.