Drafting Trademark Settlement Agreements to Resolve IP Disputes
Negotiating Exhaustion of Infringing Materials, Restrictions on Future Trademark Applications, Transfer of Domain Names and More
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance for counsel to trademark owners on negotiating and drafting settlement agreements. The panel will offer strategies for pursuing, negotiating and structuring such agreements.
Outline
- Key considerations
- Timing
- Cost
- Other considerations
- Key provisions
- Scope
- Exhaustion of infringing materials
- Abandonment or cancellation of the alleged infringer’s trademark applications
- Removal of materials from the marketplace
- Restrictions on mark applications in the future
- Transfer of domain names
- Tax implications
- Confidentiality and non-disparagement
- Injunctive relief
- Payment
- Best practices for negotiating and structuring the agreement
Benefits
The panel will review these and other key issues:
- What factors should counsel consider when weighing use of a settlement agreement?
- What terms should be included in settlement agreements and how should such agreements be framed to best protect the client’s mark?
- What are the risks to be aware of in negotiating settlement agreements?
Faculty
Andrew S. Hansen
Partner
Fox Rothschild
Mr. Hansen represents corporations in an array of sophisticated litigation matters and provides strategic counsel in... | Read More
Mr. Hansen represents corporations in an array of sophisticated litigation matters and provides strategic counsel in the areas of patents, trademarks, advertising and brand protection. As a trial lawyer, he frequently serves as lead counsel in complex intellectual property, advertising and consumer fraud litigation. He often defends clients facing significant consumer and securities class actions and serves as lead counsel in numerous matters tried to juries, judges, arbitrators and administrative law judges throughout the U.S.
CloseDennis E. Hansen
Partner
Fox Rothschild
Mr. Hansen represents and advises clients on trademark, advertising and brand protection, among other matters. He... | Read More
Mr. Hansen represents and advises clients on trademark, advertising and brand protection, among other matters. He guides clients through litigation in federal and state courts and in administrative proceedings, such as before the TTAB and Uniform Domain-Name Dispute Resolution Policy proceedings. Mr. Hansen advises clients on all aspects of brand protection and enforcement, including tactics to help avoid infringement and litigation.
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Elizabeth A. Patton
Partner
Fox Rothschild
Ms. Patton represents clients in all stages of litigation, from pre-suit advice through trial and appeal. She devotes a... | Read More
Ms. Patton represents clients in all stages of litigation, from pre-suit advice through trial and appeal. She devotes a large portion of her practice to intellectual property and brand protection litigation, including trademark, patent and copyright infringement; false advertising; and trade secret misappropriation.
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