Trademark Licensing: Key Provisions, Practical Considerations to Maximize and Protect the IP
Structuring and Managing an Agreement, Reporting, Auditing, Termination
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE will guide IP counsel on licensing trademarks. The panel will discuss the practical considerations and key provisions of the licensing agreement. The panel will address the extent of rights, commercial and financial considerations, compensation, reporting and auditing, and termination, among other issues. The panel will also discuss mitigating the risk associated with licensing trademarks.
Outline
- Practical considerations and best practices
- Type of license (e.g., brand extension, merchandising, entertainment, inter-company)
- Goals of the license (e.g., revenue maximization, increased brand awareness)
- Negotiation versus memorialization
- Timing of commercialization
- Key provisions
- Goods and services
- Territory
- Exclusivity
- Term and renewal
- Approvals and trademark notice
- Quality control
- Infringement
- Representations and warranties
- Indemnification
- Royalties and reporting
- Auditing
- Expiration or termination
- Notice
- Miscellaneous provisions
- Mitigating risk when licensing trademarks
Benefits
The panel will review these and other key issues:
- What are the key contract terms to include in a trademark license?
- What pitfalls should be avoided?
- What factors must be considered to minimize risk?
Faculty
Elizabeth A. Corradino
Partner
Moses & Singer
Ms. Corradino leads the firm’s Entertainment & Media, Technology and Intellectual Property practice groups,... | Read More
Ms. Corradino leads the firm’s Entertainment & Media, Technology and Intellectual Property practice groups, with a diverse practice focused on solving the legal and business issues affecting content creators and distributors across digital and traditional media platforms. She assists advertisers, advertising agencies and public relations firms with clearance, compliance and the execution of campaigns and other initiatives, and advises entertainment and media companies on all aspects of the development, creation and exploitation of content, including rights acquisitions, talent engagement, development and production, licensing and distribution. Ms. Corradino also counsels clients with respect to the clearance, protection and enforcement of intellectual property and advises individuals and companies on transactions as diverse as promotional, social media and experiential marketing, media buying and planning and live events.
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Amanda E. Schreyer
Member
Morse
An experienced transactional lawyer, Ms. Schreyer focuses her practice on licensing and technology; intellectual... | Read More
An experienced transactional lawyer, Ms. Schreyer focuses her practice on licensing and technology; intellectual property; and privacy and data security. She represents a broad range of media, marketing and e-commerce clients, including media conglomerates and digital publishers; advertising and marketing agencies; video game and software developers; and authors, filmmakers, and creative entrepreneurs, in connection with a variety of transactional matters. Ms. Schreyer serves as an adjunct professor of Trademark Law at Suffolk University Law School, has been a guest lecturer at Northeastern University School of Law and at the University of New Hampshire School of Law, and is a frequent speaker on social media, IP and data privacy at conferences around the country.
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Peter S. Sloane
Partner
Leason Ellis
Mr. Sloane handles all aspects of trademark and copyright counseling, prosecution and litigation, including counseling... | Read More
Mr. Sloane handles all aspects of trademark and copyright counseling, prosecution and litigation, including counseling clients on trademark adoption, filing trademark and copyright applications, recording registrations with Customs and Border Protection, maintaining domestic trademark registrations, managing global trademark portfolios, handling oppositions and cancellations in the TTAB, and litigating IP disputes in the federal courts. He also deals with related issues such as drafting license agreements, conducting due diligence in mergers and acquisitions, and litigating domain name disputes.
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