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

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Program Materials

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.

Description

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.

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Outline

  1. Agreements—defined/characteristics, difference in agreements, context in which they arise, issues that arise, what if you ask and the answer is no
    1. Distinguishing Coexistence, Consent and License Agreements
    2. Cross-marketing
    3. Joint ownership
    4. Prior rights (EU)
  2. Limitations on use and registration
    1. Scope of territory
    2. Scope of goods
    3. Key terms
    4. Future cooperation
  3. International Considerations

Benefits

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?

Faculty

Stephen Feingold
Stephen Feingold

Partner
Kilpatrick Townsend & Stockton

Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex...  |  Read More

Barbara J. Grahn
Barbara J. Grahn

Partner
Fox Rothschild

Ms. Grahn counsels clients in a range of trademark, copyright and advertising matters. She handles U.S. and...  |  Read More

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