Structuring Trademark Coexistence Agreements: Evaluating and Negotiating Agreements to Resolve Trademark Disputes

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, July 25, 2024
- 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 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.
Faculty

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.

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.
Description
Trademark coexistence agreements are widely used in trademark practice--most commonly to avoid or resolve infringement litigation, opposition, or cancellation actions, or to obtain consent to the registration of a mark.
Counsel to trademark owners must understand and carefully consider the potential benefits and disadvantages of pursuing a coexistence agreement before advising a client to seek or agree to a coexistence agreement.
Listen as our authoritative panel of IP attorneys examines coexistence agreements and outlines strategies for each stage of the process--from deciding whether to pursue an agreement to negotiating and structuring the contract.
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?
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