Trademark Licensing: Avoiding the Accidental Franchise in Structuring Licenses

Navigating Differences Between Trademark Licenses and Franchises, Avoiding Naked Licenses

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


Conducted on Thursday, October 13, 2016

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to IP counsel on drafting trademark licenses to avoid creating an accidental franchise. The panel will discuss the differences between trademark licenses and franchises, structuring the licenses, and avoiding a naked license. The panel will also offer best practices for complying with franchise laws if an inadvertent franchise has been established.

Description

Trademark owners license their trademarks to maximize their brands. While counsel must understand trademark licensing fundamentals, they must also understand the differences and the overlap between trademark licensing and franchise law. A poorly drafted license can result in the accidental creation of a franchise subject to complicated and demanding laws. Significant consequences, including damages, fines and penalties can flow from noncompliance with franchise laws.

One of the differences between a trademark license agreement and franchise agreement is the level of control. A well drafted trademark license will include quality-control provisions. If a trademark owner fails to maintain control over use of the mark, the licensor could lose all rights in a trademark. This is known as a naked license.

Trademark counsel can help clients avoid stepping over the thin line separating a trademark license and a franchise. Counsel can also arm clients to strategically structure and manage trademark licensing agreements that won’t result in exposure to franchise laws.

Listen as our authoritative panel of attorneys examines the differences between trademark licenses and franchises and provides best practices for structuring the licenses to avoid creating a franchise agreement. The panel will also discuss best practices for avoiding a naked license and for complying with franchise laws if an inadvertent franchise has been established.

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Outline

  1. Differences between trademark licenses and franchises
  2. Best practices for structuring the licenses
    1. Avoid creating a franchise agreement
    2. Avoid naked licenses
  3. Strategies for complying with franchise laws if an inadvertent franchise has been established

Benefits

The panel will review these and other key issues:

  • How do trademark licenses differ from franchise arrangements?
  • How do accidental franchise claims arise?
  • What best practices can counsel employ to avoid creating a franchise agreement? To avoid a naked license?

Faculty

Kenneth R. Costello
Kenneth R. Costello

Partner
Bryan Cave

Mr. Costello specializes in U.S. and international franchising law and product and service distribution. His...  |  Read More

Mark Kirsch
Mark Kirsch

Principal
Gray Plant Mooty

Mr. Kirsch focuses his practice on domestic and international franchising and distribution matters. He represents and...  |  Read More

Rochelle (Shelley) Spandorf
Rochelle (Shelley) Spandorf

Partner
Davis Wright Tremaine

Ms. Spandorf focuses her practice on business franchise and distribution issues, representing franchisors,...  |  Read More

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