Trademark Licensing: Key Provisions, Practical Considerations to Maximize and Protect the IP
Structuring and Managing an Agreement, Reporting, Auditing, Termination

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, October 19, 2021
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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.
Faculty

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.

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.

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.
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.
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?
Related Courses

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IP Due Diligence in M&A: Leveraging Diligence Results When Negotiating Price and Other Deal Terms
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Comparative Advertising: Avoiding Trademark Infringement, Disparagement
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