Question
From: (redacted)
Sent: Friday, December 14, 2007 8:50 AM
To: Verne, B. Michael
Subject: Re: Informal opinion 0612002
Mike:
Followingup on the attached email, what's the current view on an exclusivedistributorship for a trademarked good (where the trademark - like (redacted)candy or (redacted) whiskey - is not used on other goods, unlike the (redacted)trademark), which almost inevitably includes giving the distributor anexclusive license to use the trademark in connection with distributing theproduct.
---Original Message
From:Verne, B. Michael <MVERNE@ftc.gov>
To: (redacted).
Cc: (redacted)
Sent:Wed Nov 28 09:27:13 2007
Subject: RE: Informal opinion 0612002
Iobviously don't remember the details of the discussion from a year ago, but wehave taken the position that an exclusive license for a trademark to be used for marketing a particular product or products isnot an acquisition of an asset. For example, an exclusive license to use the(redacted) 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 bedifferentiated from an exclusive license to a patent for a particular field ofuse. For example, an exclusive license for a patent used to manufacture, marketand distribute a drug for veterinary use only, where the licensor retains allrights to the patent for human use, which would be considered an acquisition ofassets. If an exclusive license for a trademark gives the licensee all rightsto use of the trademark, then it would be treated the same as an acquisition ofthe trademark and would be considered an acquisition of assets.
Giveme a call if you want to discuss.
---Original Message
From: (redacted)
Sent: Tuesday, November 27, 2007 7:55 PM
To:Verne, B. Michael
Cc:(redacted)
Subject: Informal opinion 0612002
Mike:
I'mconfused by the attached informal opinion in which you are described as agreeing that the grant of an exclusive trademarklicense is not an asset acquisition for HSR purposes. I had thought that theclear rule, as described in Interpretation 27 in the current edition of thePremerger Notification Practice Manual was that "the grant of an exclusiveintellectual property license is the transfer of an asset to thelicensee." I'm aware that 27 says that "the grant of marketing anddistribution rights" is not an asset acquisition, but I had understoodthat to refer to a grant of only marketing and distribution rights alone,without an accompanying license of the trademark rights. The attached opinionappears to say that any trademark agreement is merely an unreportable grant ofmarketing and distribution rights. But I'm quite sure that the PNO has advisedus that we had to file for a number of exclusive trademark licenses and hasaccepted such filings. What's the answer?
Thanks.