Trademark Licensing: Key Provisions, Practical Considerations to Maximize and Protect the IP

Structuring and Managing an Agreement, Reporting, Auditing, Termination

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, October 19, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, September 24, 2021

or call 1-800-926-7926

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.

Description

Licensing agreements should include key provisions such as payment structure, termination, indemnification, and limitations on liability. Counsel for trademark owners and licensees can effectively structure and negotiate the agreements in their clients' best interests by understanding the essential elements and the common pitfalls.

For the trademark owner, quality control provisions of a trademark license are critical to protecting the value of the mark. The licensor must ensure the licensee's products or services maintain a certain standard. If the licensor does not enforce strict quality control, its trademark could be susceptible to attack by third parties.

Licensing includes a certain level of unavoidable risk, but licensors can anticipate and evaluate the risks and reduce the likelihood of problems.

Listen as our authoritative panel of IP attorneys examines the balance between getting the "best deal" for the client and protecting the client's interest when 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.

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Outline

  1. Practical considerations and best practices
    1. Type of license (e.g., brand extension, merchandising, entertainment, inter-company)
    2. Goals of the license (e.g., revenue maximization, increased brand awareness)
    3. Negotiation versus memorialization
    4. Timing of commercialization
  2. Key provisions
    1. Goods and services
    2. Territory
    3. Exclusivity
    4. Term and renewal
    5. Approvals and trademark notice
    6. Quality control
    7. Infringement
    8. Representations and warranties
    9. Indemnification
    10. Royalties and reporting
    11. Auditing
    12. Expiration or termination
    13. Notice
    14. Miscellaneous provisions
  3. 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

Corradino, Elizabeth
Elizabeth A. Corradino

Partner
Moses & Singer

Ms. Corradino leads the firm’s Entertainment & Media, Technology and Intellectual Property practice groups,...  |  Read More

Schreyer, Amanda
Amanda E. Schreyer

Member
Morse

An experienced transactional lawyer, Ms. Schreyer focuses her practice on licensing and technology; intellectual...  |  Read More

Sloane, Peter
Peter S. Sloane

Partner
Leason Ellis

Mr. Sloane handles all aspects of trademark and copyright counseling, prosecution and litigation, including counseling...  |  Read More

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Early Discount (through 09/24/21)

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Early Discount (through 09/24/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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