Replies to post #137164 on Liquidmetal Technologies Inc (LQMT)

[joshuaeyu]

To put everything in layman term.

For CE space:

1. Apple owns all LQMT IP (pre 02/2016) forever
2. Apple owns all LQMT Trademarks (only associated with LQMT IP pre 02/2016) forever
3. Apple has a Right of First Refusal to allow IP/Trademark (include anything started after 02/2016) licensing or sale to anyone until 02/2018

Like to hear feedback from others.....

[PatentGuy1]

Little bit of detail on Trademark usage for Apple.

Trademark Usage. In the event that Licensee desires to utilize the Liquidmetal® trademark, or any other trademark or service mark included in the LMT Technology (collectively, the "Trademark"), then Licensee will comply with the following restrictions with respect to its use of the Trademark: (i) all stylized use of the Trademark shall be solely in the original logotype identified by Licensor, except as otherwise agreed in writing by Licensor, (ii) Licensee agrees not to affix the Trademark to products other than the Licensed Products, (iii) Licensee will not utilize the Trademark to refer to any materials other than amorphous metal alloys or composite materials included within the LMT Technology, (iv) Licensee agrees not to modify Trademark or change the appearance of any stylized or logo form of the Trademark, and (v) the "®" icon shall always follow the Trademark, and (v) Licensee agrees not to take any other action that would be reasonably expected to undermine the enforceability of the Trademark.

Under MTA, this says LiquidMetal brandname can only match up with LM105 and nothing else.

To continue with our previous thread, posts, 138866, 138885 and 138886, I disagree you for the following reasons.

You quoted MTA, Annex 6, Section 2.5, above, which stipulates limitations on how Apple must use the licensed marks - i.e., "In the event that Licensee [APPLE] desires to utilize the Liquidmetal(r) trademark .... Licensee [Apple] will not utilize the Trademark to refer to any materials other than amorphous alloys or composite materials included within the LMT technology..." This only limits how Apple can use the mark.

Your conclusion that "under MTA, this says LiquidMetal brandname can only match up with LM105 and nothing else" is overly broad. The restriction on the trademark usage applies only to Apple, i.e., the Licensee of Annex 6, and does not apply to LQMT. However, that is besides the point.

Now, getting back to whether Apple can prevent any CE company from using LiquidMetal Brand, I submit that you need to look at what rights does Apple have to the brand under the MTA and what rights did LQMT retain for itself.

In particular, Apple has exclusive and perpetual rights to LMT Technology in the field of consumer electronics where the LMT Technology is covered under the MTA - i.e., the LMT Technology was in existence when the MTA was executed or developed prior to the expiration of the Capture period. (Do you disagree with that statement?)

LMT Technology includes trademarks developed prior to the expiration of the Capture period. (Do you disagree with that statement?)

Apple's license to the trademarks is exclusive and perpetual in the field of consumer electronics. (Do you disagree with that statement?) Therefore, LQMT has no right to license the already licensed marks to another manufacturer in the field of consumer electronics. Just as LQMT can only license, in the field of consumer electronics, formulations developed after the capture period, LQMT can only license, in the field of consumer electronics, trademarks developed after the capture period.

The marks are separate from the LM105 formulation. Apple can only use the marks with the LM105 formulation (or other formulations covered by the MTA), but LQMT cannot use nor license the already licensed marks in the field of consumer electronics. (Because the grant was "exclusive" LQMT cannot use the marks in CE. If the grant had been "sole", then Apple would have been the only licensee and LQMT could have used the marks in CE. See, http://www.adamsdrafting.com/revisiting-sole-and-exclusive/, for a discussion on the difference between an "exclusive grant" and a "sole grant.")

LQMT can only license rights that they retain. By exclusively licensing the brands (that existed at the time) to Apple in the field of consumer electronics, LQMT gave up its rights to use/license those brands in CE. LQMT did not retain the right to use those brands in the field of CE with a different formulation.