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Trademarks in Transactions
Program


 

 

 Wednesday, October 10

 
7:00 pm–8:00 pm  

Welcome Reception 

Join us for an enjoyable cocktail reception and networking opportunity as INTA welcomes you to Chicago.  Take advantage of this event to meet with speakers and break the ice with your fellow attendees.

 

 Thursday, October 11

 
9:00 am–6:00 pm 
Registration and Information Desk
9:00 am–10:00 am
Networking Breakfast
10:00 am–10:15 am

Welcome and Introductions

 
Co-chairs 
  • Brian M. Daniel, Charles River Associates, Inc. (United States)
  • Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)
10:15 am–11:30 am

SESSION ONE

Advanced Issues in Drafting and Negotiating Trademark Licenses

This panel will explore advanced issues arising in the negotiation and implementation of trademark licenses from the divergent perspectives of a law firm attorney, in-house licensor counsel and in-house licensee counsel. After reviewing important overall guiding principles, the speakers will closely examine key trademark license provisions, including the license grant, acknowledgement of rights, royalty provisions, infringement, term/termination, indemnity, assignment, and quality control. This panel also will review important duties that arise after license execution, including recordation, renewals, quality control programs, and address tax implications. The insights shared by this panel will better enable trademark practitioners to avoid common pitfalls and understand concerns underlying the positions of all parties to the license transaction.

Moderator:

  • Dorothy von Hollen, Prudential Financial, Inc. (United States)

Speakers: 

  • Lee Eulgen, Neal, Gerber & Eisenberg LLP (United States)
  • Anil V. George, NBA Properties, Inc. (United States)
  • Helen L. Winslow, The H.D. Lee Company, Inc. (United States)
11:30 am–11:45 am
Coffee Break
11:50 am–1:00 pm

SESSION TWO

Drafting and Negotiating Sponsorship Agreements

 
This experienced panel of speakers will share the ins and outs of drafting and negotiating sponsorship agreements in different regions. Speakers will:
  • Compare sponsorship agreements in the United States, United Kingdom and Brazil.
  • Distinguish between endorsement agreements and trademark and right of publicity licenses.
  • Share the nuts and bolts of typical terms, performance obligations and financial arrangements.
  • Discuss common mistakes and pitfalls that attorneys face.

Moderator:

  • David S. Fleming, Brinks Hofer Gilson & Lione (United States)

Speakers: 

  • Mario Soerensen Garcia, Soerensen Garcia Advogados Associados (Brazil)
  • Kate Elizabeth Swaine, Wragge & Co. LLP (United Kingdom)
  • Marc Trachtenberg, Winston & Strawn LLP (United States)
1:00 pm–2:15 pm 
Networking Lunch
2:20 pm–3:45 pm

SESSION THREE

Legal, Business and Tax Issues Involving Related-Party Transactions

 
This interactive and informative session will focus on the legal, business and tax issues unique to transactions between affiliated companies and related parties.  Experienced trademark and tax practitioners will address U.S. and international considerations including:
  • Sales and assignments
    • Company acquisitions and divestitures.
    • IP acquisitions and divestitures.
    • Jurisdictional implications.
  • IP holding companies and master licensors
    • The risks and rewards.
    • Operational considerations.
  • Transfer pricing
    • Brief overview of relevant appraisal and transfer pricing methods.
    • Legal vs. economic ownership.
  • Affiliate licensing
    • Tax considerations.
    • Implications for trademark litigation matters.

Moderator:

  • Brian Daniel, Charles River Associates (United States)

Speakers:

  • Karen A. Butcher, Morgan, Lewis & Bockius LLP (United States)
  • John Gulliver, Mason Hayes & Curran (Ireland)
  • Alison Tan, The Procter & Gamble Company (United States)
3:45 pm–4:00 pm 
Coffee Break
4:00 pm–5:15 pm

SESSION FOUR

Handling Trademarks and Trademark Licenses in Bankruptcy

Even the most well-drafted trademark licenses can be undermined if a party faces bankruptcy. Understanding how bankruptcy courts will treat trademarks and trademark licenses is essential to putting your company in the best possible position. A panel experienced in the interplay of trademark and bankruptcy laws will demonstrate the impact of bankruptcy on trademarks and trademark licenses and discuss strategies for minimizing risk. Speakers will also discuss the following:

  • U.S. bankruptcy principles, including a brief overview of bankruptcy court jurisdiction.
  • Executory contracts
    • The impact of licensor bankruptcy on trademark licenses.
    • Section 365(n) and the definition of “Intellectual Property.”
    • The impact of licensee bankruptcy on trademark licenses.
  • Purchasing trademarks and trademark licenses in bankruptcy.
  • Infringement actions and bankruptcy, including infringement and enforcement by a company in bankruptcy.
  • Pre-bankruptcy protections
    • Security interests.
    • The structure and content of a license.
    • Bankruptcy remote vehicles.

Moderator:

  • James Michael Faier, Faier & Faier P.C. (United States)

Speakers:

  • Evan C. Hollander, Arnold & Porter LLP (United States)
  • Alan N. Resnick, Hofstra University School of Law and Fried, Frank, Harris, Shriver & Jacobson LLP (United States)
  • Gregory S. Shatan, Reed Smith LLP (United States)
5:15 pm–5:30 pm 
Question and Answers
5:30 pm–7:00 pm 

Networking Reception

Join your colleagues for a cocktail.  Take advantage of the networking time and introduce yourself to the speakers.

 

 Friday, October 12

 
8:00 am–1:00 pm  
Registration and Information Desk
8:00 am–9:00 am 
Networking Breakfast
9:00 am–9:10 am 

Overview of Day Two

Co-chairs 
  • Brian M. Daniel, Charles River Associates, Inc. (United States)

  • Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)

9:10 am–10:30 am

SESSION FIVE

Pitfalls of Trademark Due Diligence in M&A and Other Complex Corporate Transactions

A panel of expert IP transactional attorneys will explore the danger zones of different types of transactions. Speakers will share their experiences with transactions in North America, Europe, Asia and Australia and present a global picture of how to avoid pitfalls and manage complex IP issues in due diligence.                   

Moderator:

  • Sara B. Blotner, Citigroup Inc. (United States)

Speakers:

  • Stuart Ash, Gowling Lafleur Henderson LLP (Canada)
  • Nemone Franks, Linklaters LLP (United Kingdom)
  • Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)
10:35 am–11:50 am

SESSION SIX

Drafting and Negotiating Trademark Representations and Other Provisions in M&A Transactions
 

Seasoned Intellectual Property and M&A practitioners will review the types of IP-related representations and warranties, covenants, indemnification obligations and ancillary licenses that typically are included in merger agreements, purchase agreements, and similar transaction documents.  Attendees will walk away with detailed drafting tips, buy-side and sell-side negotiating strategies and an overview of the impact of different transaction structures on the parties’ approaches to drafting and negotiation.  Speakers will also discuss how due diligence findings should be reflected in the transaction documents.

Moderator:

  • Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)

Speakers:

  • Roland Mallinson, Taylor Wessing (United Kingdom)
  • Igor Kirman, Wachtell Lipton Rosen & Katz (United States)
  • Laurence S. Rickles, Eckert Seamans (United States)
11:50 am–12:10 pm
Coffee Break
12:15 pm–1:30 pm

SESSION SEVEN

Transactions to Avoid Litigation: Drafting and Negotiating Settlement and Co-existence Agreements

Speakers will share tips on how to negotiate trademark settlement and co-existence agreements and will cover the following areas:

  • The pros and cons of consent-based or undertaking-based deals.
  • Going beyond what a court can order.
  • Drafting no challenge clauses and restraint of trade.
  • Wider implications of payment provisions.
  • Are legal costs recoverable and to what extent?
  • Overcoming an impasse on jurisdiction and governing law.

Moderator:

  • Roland Mallinson, Taylor Wessing (United Kingdom)

Speakers:

  • Richard Watts, Simpson Grierson (New Zealand)
  • Neil J. Wilkof, Eyal Bressler and Co. (Israel)
1:30 pm

Wrap up and Adjourn 

Co-chairs

  • Brian M. Daniel, Charles River Associates, Inc. (United States)
  • Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)

Please be sure to take a packaged lunch with you on your way out!
 

 Continuing Legal Education

 
This conference qualifies as an educational program for CLE credits and CPD Points. For more information, please email cle@inta.org. To earn credit, please be sure to stop by the Registration and Information Desk at the conference to sign the CLE book.
 

 Project Team

 

Exceptional topics, faculty and presentations have come to distinguish INTA programs and earn them an unmatched reputation in the field of trademark law and practice. INTA owes this achievement to the many volunteers who so willingly contribute their time and energy to this effort.

INTA would like to thank the Project Team for its excellent work in planning and presenting this conference.

Chairs      
     
Brian M. Daniel, Charles River Associates, Inc. (United States) 
Daniel C. Glazer, Fried, Frank, Harris, Shriver & Jacobson LLP (United States)  


INTA Staff Liaisons
 
Sarah Bourke O’Connell, Manager, Program Development  
Paula Lee, Senior Planner, Meetings, Exhibits and Sponsorship Strategy
         

Project Team Members

Sara B. Blotner, Citigroup Inc. (United States)
Karen A. Butcher, Morgan, Lewis & Bockius LLP (United States)
David S. Fleming, Brinks Hofer Gilson & Lione (United States)
Roland Mallinson, Taylor Wessing (United Kingdom)
Dorothy von Hollen, Prudential Financial, Inc. (United States)