Structuring Trademark Licenses: Negotiating Scope, Quality Control, Territory and Other Key Provisions

Preventing Dilution, Navigating International Licensing Challenges and Minimizing Infringement Liability

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, April 14, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel for trademark owners and licensees on negotiating key terms in trademark licensing agreements. The panel will offer approaches for avoiding common pitfalls and best practices for structuring the agreements.

Description

Trademark licensing gives mark owners an avenue to generate revenue while preventing dilution of the mark through appropriate use. It also provides the licensee with safeguards against trademark infringement. IP licenses are increasingly complex given the evolving global landscape.

Each trademark licensing agreement must be carefully structured and address critical legal issues, including scope, quality control, territory and exclusivity. Counsel must be cautious of common pitfalls, including selling in unauthorized channels and territories and failing to comply with mark guidelines.

Counsel structuring global trademark licensing agreements should take into consideration factors such as the laws of other countries and enforcement of the agreement in non-U.S. jurisdictions. Counsel must be able to navigate and overcome the challenges involved in order to reach a negotiated international licensing agreement.

Listen as our authoritative panel of trademark attorneys discusses complex and practical issues that arise in structuring and negotiating trademark licenses. The panel will examine recent legal developments and address international licensing issues. The panel will also offer best practices for structuring the agreement and avoiding common pitfalls.

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Outline

  1. Key provisions in trademark licenses
    1. Scope of the use
    2. Compensation
    3. Quality control
    4. Coverage
    5. Termination
  2. Considerations for international licensing
    1. Local law issues
    2. Cultural issues
    3. Common pitfalls
    4. Enforcement
  3. Best practices for structuring licensing agreements

Benefits

The panel will review these and other key questions:

  • What terms are critical to trademark licensing agreements?
  • What additional factors need to be considered in international licensing agreements?
  • What are the best practices for counsel representing licensors and licensees when negotiating trademark licenses?

Faculty

Peter J. Toren
Peter J. Toren

Weisbrod Matteis & Copley

Mr. Toren has represented clients for over 20 years in intellectual property and commercial litigation matters...  |  Read More

Matthew R. Wilmot
Matthew R. Wilmot

Shareholder
Schwabe Williamson & Wyatt

Mr. Wilmot is the leader of the firm’s Trademark, Copyright and Transactional IP Practice Group as well as its...  |  Read More

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