BarbriSFCourseDetails

Course Details

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

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

  1. 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
  2. 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
  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?