Published by LawTechie - September 24, 2010 - LawTechie

A complaint filed by Hard Rock Cafe’s trademark owner underscores the importance of good contingency planning (the contingency here being that a licensee might decide to assign the license to another player, which is exactly what happened). Now the owner is suing the assignee for misusing the mark — this being the owner’s only recourse because there seems to be no non-assignment clause in the original licensing agreement.

Looking at the license, I can’t imagine any reason for leaving a non-assignment clause out other than simple oversight. The take-away: Non-assignment clauses are important, particularly if you want to protect the integrity of your mark. (Proofread your contract drafts!)

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.


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