Negotiating Trademark Licensing Agreements



About the Course:

This course provides a comprehensive review of the pertinent issues relative to trademark licensing. The session begins by discussing the motivations of licensors and licensees to enter into trademark licensing arrangements. The next segment focuses on due diligence issues such as reputation, financial solvency, relationships with competitors and rights to trademarks.

The following are among the issues discussed:

  • If you think you may be infringing on someone else’s trademark, is it better to ask for permission or beg for forgiveness
  • What are customary quality control provisions in trademark licensing agreements
  • Who pays for expenses such as registration and enforcement
  • How can the licensor control how and where the marks are used
  • How does a lien on a trademark affect a licensor’s ability to license or sell the trademark
  • What happens to a licensor when its licensee enters bankruptcy
  • What happens to a licensee when its licensor enters bankruptcy
  • Are royalty audits common with trademark licenses
  • Are some trademark licenses contingent on investing certain dollar amounts in the brand
  • What is the role of indemnifications in trademark licensing
  • What is the role of most favored licensing with respect to trademarks
  • What are prudent sublicensing provisions in trademark licenses
  • What are typical terminable offenses

Course Leader: John W. Goldschmidt, Jr., Partner, Chair, Intellectual Property Group, Dilworth Paxson LLP

John Goldschmidt’s practice concentrates on the strategic planning, leveraging, commercialization, and enforcement, of intellectual property rights in ideas, inventions, business methods, as well as literary and artistic expression through the use of patents, trademarks, copyrights, trade secrets, related licensing and litigation.

Representative Experience

  • Represents a major Philadelphia news media outlet in connection with its intellectual property matters
  • Represents a national environmental testing laboratory in connection with its trademark prosecution, policing, licensing and litigation matters
  • Represents a leading manufacturer of silicon wafer manufacturing equipment in its patent prosecution and litigation matters
  • Represented a public transportation system and a school district in the acquisition of enterprise-wide computer systems
  • Represents software developers and consumers in the design, installation, and maintenance of customized software products
  • Represents an internationally recognized non-profit, philanthropic foundation in its intellectual property matters
  • Represented a university health care system in copyright and trade secret matters
  • Represents members of the banking and insurance industries in intellectual property due diligence and risk assessment matters
  • Represented a university in the strategic planning of its on-line educational courses
  • Represents manufacturers and distributors of consumer and commercial products in federal litigation and enforcement of trademark, copyright, trade dress and design rights
  • Represents a military defense contractor in patent litigation and prosecution matters

Course Length: Approx. 1.5 hours

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