Friday 4 July 2008

Combining trade marks in a Jointly owned IP holding company

I spotted this recent article by Lanning Bryer and Matthew Asbell (both of Ladas & Parry) in issue 3 of INTA's Trademark Reporter, vol. 98 (May-June 2008). Entitled "Combining Trademarks in a Jointly Owned IP Holding Company", its abstract runs as follows:

"With the advent of increased trademark sharing between unrelated entities, intellectual property holding companies have been formed specifically to enable combined ownership of trademarks among multiple companies. A mutual trademark holding company (“MTHC”) is often formed as the jointly owned subsidiary of multiple parent companies to act as owner of trademark rights. Companies should consider the formation of MTHCs with the goal of sharing trademarks while finding safer avenues toward at least some of the benefits of the traditional wholly-owned IP holding company model.

MTHCs may: (a) provide a sensible means for companies either to partition and sell off portions of their goodwill; (b) allow them to find opportunities for synergy with others that can help their brands grow; (c) help companies to accurately assess and improve the value of these assets; and (d) provide tax and other additional benefits. However, corporate law, tax law, antitrust law, IP law, and other laws may complicate the use of MTHCs. Thus, the decision to employ an MTHC should only be considered carefully with all relevant issues explored. This article describes the risks and advantages of using an MTHC as the owner of trademark rights in a strategic branding plan".

Do readers of this blog have any thoughts on this topic, particularly when the issues involved are not confined to the US but are driven by international considerations?

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