Structuring Trademark Coexistence Agreements: Evaluating and Negotiating Agreements to Resolve Trademark Disputes
Recording of a 90-minute CLE webinar with Q&A
Conducted on Wednesday, January 11, 2017
Recorded event now available
This CLE webinar will provide guidance for counsel to trademark owners on negotiating and drafting coexistence agreements. The panel will offer strategies for pursuing, negotiating and structuring such agreements.
Trademark coexistence agreements are widely used in trademark practice—most commonly to avoid or resolve infringement litigation, opposition or cancellation actions, or to obtain consent to registration of a mark.
Counsel to trademark owners must understand and carefully consider the potential ramifications of pursuing a coexistence agreement before advising a client to seek or agree to a coexistence agreement.
Listen as our authoritative panel of IP attorneys examines coexistence agreements and outlines strategies for each stage of the process—from determining whether to pursue an agreement to negotiating and structuring the agreement.
- Agreements—defined/characteristics, difference in agreements, context in which they arise, issues that arise, what if you ask and the answer is no
- Distinguishing Coexistence, Consent and License Agreements
- Joint ownership
- Prior rights (EU)
- Limitations on use and registration
- Scope of territory
- Scope of goods
- Key terms
- Future cooperation
- International Considerations
The panel will review these and other key issues:
- What factors should counsel consider when weighing use of a coexistence agreement?
- What terms should be included in coexistence 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 coexistence agreements?
Stephen Feingold, Partner
Kilpatrick Townsend & Stockton,
Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex trademark litigation matters and sophisticated transactional projects. He advises clients with large global portfolios on how to effectively and efficiently manage and utilize these assets to further their business objectives privacy issues and other Internet-specific problems.
Barbara J. Grahn, Partner
Ms. Grahn counsels clients in a range of trademark, copyright and advertising matters. She handles U.S. and international trademark clearance, prosecution and enforcement, brand development and management, trademark and copyright infringement counseling and disputes, domain name issues, advertising compliance, sweepstakes and contest rules, and copyright registrations for large databases and websites.
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I really liked the practical drafting tips.
Stone Pigman Walther Wittmann
The subject matter was presented at the right level of detail.
Steptoe & Johnson
The webinar contained lots of information on the subject matter and was very informative.
HILL, KERTSCHER & WHARTON
I found the discussion regarding issues related to coexistence on an international level to be particularly interesting.
Christopher L. Sorey
Wyrick Robbins Yates & Ponton
All speakers seemed very knowledgeable about the subject and were very good at presenting.
Rader, Fishman & Grauer
Intellectual Property Law Advisory Board
Winthrop & Weinstine
Fulbright & Jaworski
Winston & Strawn
Feinberg Day Alberti & Thompson
Buchanan Ingersoll & Rooney
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