Intellectual Property Lawyers for Providence, Rhode Island

Yes, you can and should include clauses in an Intellectual Property License Agreement that protect your rights as the licensor. A license agreement is your main tool for controlling how your software is used, setting boundaries for your clients, and limiting your financial exposure. The key is to draft it in a way that leaves no doubt about what rights are granted, what’s restricted, and what happens if there’s a breach. Grant of License Start with a clear license grant. Spell out that you’re giving the client only limited rights, not ownership. Most licensors define the license as non-exclusive, non-transferable, and revocable if the client doesn’t follow the terms. For example, you might allow a client to use the software only for its internal business operations, and only on a set number of machines. It’s equally important to list what the licensee cannot do, such as reverse engineering, modifying, sublicensing, or providing the software to third parties. Intellectual Property Ownership Reinforce that you retain all ownership rights in the software and any related intellectual property. A simple but strong statement is that you hold all right, title, and interest in the software, and the client only receives a limited right to use it under the agreement. This prevents confusion between a license and a sale. You can also require the licensee to notify you if they discover third-party infringement and confirm that you alone have the right to pursue action against infringers. Confidentiality If you’re providing source code, algorithms, or other sensitive information, a confidentiality clause is essential. Define confidential information broadly to include not just the software itself but also any documentation or business information you share. Require the client to protect that information with at least the same care they use for their own confidential material, and make the obligation survive termination of the agreement. Termination Every strong license has a termination clause. Termination for cause should allow you to end the agreement if the client fails to pay, violates the license scope, or breaches confidentiality. Many agreements include a short cure period, such as thirty days, for the licensee to fix the breach before termination takes effect. Spell out the consequences of termination: the licensee must stop using the software immediately, return or destroy all copies, and certify that they’ve complied. Without this, you risk losing leverage if the relationship breaks down. Payment Terms Protect your revenue by making payment terms clear. Define license fees, support or maintenance fees if applicable, the payment schedule, and penalties for late payment such as interest. Courts generally enforce these provisions as long as they’re reasonable. Disclaimers and Limitation of Liability These clauses protect you from lawsuits if things go wrong. A limited warranty might cover basic performance for a set time, but beyond that you should disclaim all other warranties. Standard language is that the software is provided “as is” and you disclaim implied warranties of merchantability and fitness for a particular purpose. To limit your exposure, cap liability at a defined amount, often the fees paid by the licensee in the previous twelve months, and exclude liability for indirect or consequential damages such as lost profits. Courts usually enforce these limits, except in cases of fraud or intentional misconduct. Audit Rights If your pricing model depends on the number of users or installations, an audit right is valuable. This allows you to check, on reasonable notice, that the licensee isn’t exceeding their rights. For example, you might reserve the right to inspect usage records once a year during normal business hours. Governing Law and Dispute Resolution Designating which state’s law governs and how disputes are resolved reduces uncertainty. Many licensors choose their home state’s law and either local courts or arbitration for disputes. Remedies Make sure your agreement lets you seek injunctive relief if the licensee misuses or discloses your software. Monetary damages often aren’t enough to protect intellectual property, so courts will enforce contract terms that authorize immediate injunctive relief. Protect Your Software with Legal Guidance When you’re licensing valuable software, the details in your agreement can make the difference between real protection and unnecessary risk. The lawyers on Contracts Counsel are available to draft, review, or negotiate a license that secures your rights and keeps your business protected.

Yes, it's generally possible to trademark the name of your software, as long as it is not a generic name or descriptive of the product. You should also do a clearance search to make sure no other company is using the same or similar name for similar services. I would be glad to discuss more details and help with the trademark process. Thanks.

Hello! Thank you for posting this question. In your case, the other party may claim that you are infringing on their trademark, but proving it is a different case. The Lanham Act provides for a cause of action for infringement of both registered and unregistered trademarks. (15 USC Section 1114(1)(a); 15 USC Section 1125(a)(1)A).)  The 9th Circuit Court of Appeals has laid out some elements to help determine whether it creates an infringement lawsuit. 1. The complaining party has to prove they have a valid, protectable trademark and that they own that trademark; 2. The complaining party must prove that a mark is similar, and it was used without the consent of the moving party in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.  The likelihood of confusion can occur at the time of the sale, when there is initial interest by a consumer, or even after the sale, if the confusion causes a consumer to no longer buy a service or product connected to the mark. The court considers things like the strength of the original mark, whether you are using it for some fair use purpose, the similarity, the proximity of the products and marketing channels, whether there’s actual confusion, the defendant’s intent, the quality of respective products, and the sophistication of the customers. (Polaroid Corp. v. Polard Elecs. Corp. 287, F.2d. 492, 495 (2d Cir. 1961.) So what this means is that it'd have to be litigated, but you can argue you are not trying to sell products or services using their mark, but rather you are using it for some other purpose, such as to educate people about their business practices. Best of luck!

Running a trademark search before registering your business name isn’t legally required, but it’s one of the most important steps you can take to avoid future problems. Registering your name with the state forms your business entity, but it doesn’t give you trademark rights. Trademark rights come from use in commerce and, if you file with the USPTO, registration at the federal level. Why a Trademark Search Matters The central legal test in trademark law is whether a name is likely to cause consumer confusion. That means you don’t need to copy someone else’s name exactly to get into trouble. Even something that looks or sounds similar in the same or related industry could be enough. If you skip the search and move forward, you risk: • Infringement claims: Another company could demand you stop using the name and, if necessary, sue for damages. • Forced rebranding: If you’ve already invested in your logo, website, signage, or marketing materials, being forced to change your name can be expensive and disruptive. • USPTO rejection: If you apply for a federal trademark, the USPTO will run its own search. If they find a confusingly similar mark, your application will be denied and you’ll lose the filing fees. A well-documented example is when small businesses open under a catchy name, only to receive a cease-and-desist letter from a national chain using a similar name in the same space. Even if you’re in a different state, a federal registration gives that company priority rights nationwide. A proper trademark clearance search should cover more than just identical names. You’ll want to check: • Federal database (USPTO TESS): This is the official record of all registered and pending federal trademarks. • State trademark databases: Many businesses register marks only at the state level. • Common law sources: Unregistered marks can still have legal protection. Check Google, industry directories, social media, and domain names. • Similar variations: Look for phonetic equivalents and alternative spellings, such as “Kwik” for “Quick,” or slight wording changes that could still cause confusion. Professional Assistance You can run an initial search yourself at no cost, but these searches have limits. For example, the USPTO database won’t flag marks that are spelled differently but sound alike, or names with similar meanings. Attorneys and specialized search firms use tools that uncover those kinds of risks. While hiring a professional costs more upfront, it’s often far cheaper than litigation or a rebrand. Limitations A search doesn’t guarantee that your name will never be challenged. Trademark law involves judgment calls about how similar marks are and whether they overlap in goods or services. Still, a thorough search puts you in a much stronger position to defend your choice and move toward federal registration if you want nationwide rights.

Hello, I wanted to express my interest in helping you understand your trademark rights and the trademark transfer proposal you received. As brief background, I am a US-licensed trademark attorney and have helped clients in similar situations buy, sell, and otherwise transfer trademark rights through transfer agreements. I can also help you prepare and file a federal trademark registration to protect your unique brand name and logo throughout the US. I'd be glad to set up a brief call to learn more about your business and see how I can help. Thanks for your consideration. Best, Roman Vayner (c) 414.628.9099 (e) rvayner@vaynerlegal.com www.vaynerlegal.com VaynerLegal, LLC