Structuring Trademark Coexistence Agreements: Evaluating and Negotiating Agreements to Resolve Trademark Disputes
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide counsel to trademark owners on negotiating and drafting coexistence agreements. The panel will offer strategies for pursuing, negotiating, and structuring such contracts.
Outline
- Agreements: defined/characteristics, differences in agreements, the context in which they arise, and issues that arise
- Distinguishing coexistence, consent, concurrent use, and license agreements
- Key terms
- When to ask
- Potential disadvantages
- Limitations on use and registration
- Geographic scope
- Scope of goods
- Future expansion
- Ongoing cooperation
- International considerations
Benefits
The panel will review these and other key issues:
- What factors should counsel consider when weighing the use of a coexistence agreement?
- What are terms to include in coexistence agreements, and how should such agreements be framed to protect the client's mark?
- What are the risks to be aware of in negotiating coexistence agreements?
Faculty
Lori S. Kozak
Partner, Chair Trademarks Practice Group
Fox Rothschild
A seasoned intellectual property attorney with more than 20 years of experience, Ms. Kozak has provided strategic... | Read More
A seasoned intellectual property attorney with more than 20 years of experience, Ms. Kozak has provided strategic trademark management services for companies in the apparel, automotive, chemical, computer science, technology, construction, entertainment, food and beverage products, nutraceutical, telecommunications, industries, among others. Ms. Kozak also has experience in IP licensing and has handled more than 50 IP due diligence projects in the context of M&A deals. In addition, she handles a wide range of IP transactional and prosecution matters. Ms. Kozak has served as a Lecturer in Law for the Intellectual Property and Technology Law and Small Business Clinics at the University of Southern California Gould School of Law.
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Michael J. Leonard
Partner
Fox Rothschild
Mr. Leonard provides strategic counsel on the availability and adoption of trademarks as well as the management and... | Read More
Mr. Leonard provides strategic counsel on the availability and adoption of trademarks as well as the management and enforcement of trademark portfolios in the United States and abroad. He also represents clients in opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and various U.S. district courts. Keenly adept at managing and enforcing domestic and international intellectual property rights, he is a go-to resource on trademarks, copyrights, and other IP-related issues for clients in the telecommunications, computer software and technology, entertainment and sports, pharmaceutical, chemical, food and beverage, publishing, scientific research, and apparel industries.
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