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.

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.

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, Partner
Kilpatrick Townsend & Stockton, New York

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
Fox Rothschild, Minneapolis

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.


Recordings

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CLE On-Demand Video $297.00

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AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

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Webinar

Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

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Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I really liked the practical drafting tips.

Ellen Lloyd

Stone Pigman Walther Wittmann

The subject matter was presented at the right level of detail.

Tony Onorato

Steptoe & Johnson

The webinar contained lots of information on the subject matter and was very informative.

Gregory Ourada

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.

Jamie Stamp

Rader, Fishman & Grauer

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

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