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Trademark Licensing and Strategy

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Overview

Our Clients

Katten's Trademark Licensing and Strategy attorneys advise businesses, talent and organizations seeking to exploit their intellectual property assets through licensing, joint venture, manufacturing and technology agreements. We represent fashion houses, luxury brands, designers, sporting goods companies, multiple tier and specialty retailers, industry groups, media and entertainment companies (including television networks, film studios and publishing companies), beauty and cosmetics companies, fitness studio chains, software developers and financial institutions, among others.

Our Services

We help clients realize the maximum potential of their intellectual property assets globally. Our licensing teams, which extend across several practice disciplines, prepare, structure and negotiate trademark license agreements, technology development agreements, patent/technology licenses, co-branding and web linking agreements, complex software development and licensing agreements, web hosting service agreements, website design agreements and brand extension licensing agreements. We are creative in developing hybrid (non-standard) contractual arrangements.

Our attorneys work with clients to audit their global intellectual property assets and ensure that these assets are correctly safeguarded, enforceable and suitable for use by authorized third parties. Our team handles the clearance, registration, licensing and enforcement of trademarks, as well as the registration of trademarks in the Trademark Clearinghouse, a centralized database of verified trademarks that enables brand owners to maximize ICANN's new generic Top Level Domain program. We prepare strategies to support licensing agreements and make sure they comport with applicable laws in foreign jurisdictions. We also administer licenses on an ongoing basis through a customized docket system to remind clients of critical deadlines (such as payment, renewal and budget planning dates). To help clients avoid potential infringement and future enforcement issues, we evaluate licenses for troublesome provisions that may affect the value of the business or property rights in question.

From the creation of a new concept to the preparation, negotiation, completion and administration of licenses, Katten assists clients in addressing the full panoply of intellectual property licensing issues.

Trademark Licensing and Strategy

Recognition

Managing Intellectual Property IP Handbook - Trade Mark Contentious (United States)

2014

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017
U.S. News Best Lawyers "Best Law Firms" – Intellectual Property Law (Chicago)
Intellectual Property Law (Chicago), 2011

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2011, 2013–2018

Managing Intellectual Property IP Handbook - Trade Mark Prosecution (United States)

2014
U.S. News Best Lawyers "Best Law Firms" – Trademark Law (New York)
Trademark Law (New York), 2016–2019

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2011, 2013–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2011, 2013–2018
Chambers USA – Intellectual Property (Illinois)
Intellectual Property (Illinois), 2006–2018

Trademarks Law Firm of the Year by Lawyer Monthly

2012

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2011, 2013–2018
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (Chicago)
Litigation – Intellectual Property (Chicago), 2012–2014
U.S. News Best Lawyers "Best Law Firms" – Litigation – Intellectual Property (National)
Litigation – Intellectual Property (National), 2012–2014
U.S. News Best Lawyers "Best Law Firms" – Trademark Law (National)
Trademark Law (National), 2016–2019

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Chambers USA – Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC)
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

Managing Intellectual Property IP Handbook

"Highly Recommended" firm for intellectual property in Illinois, 2013–2015
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Recognition

Managing Intellectual Property IP Handbook - Trade Mark Contentious (United States)

2014

Managing Intellectual Property Annual Awards – Trademark Contentious (Midwest Region)

2017
Intellectual Property Law (Chicago), 2011

World Trademark Review 1000 – The World's Leading Trademark Professionals (New York)

2011, 2013–2018

Managing Intellectual Property IP Handbook - Trade Mark Prosecution (United States)

2014
Trademark Law (New York), 2016–2019

World Trademark Review 1000 – The World's Leading Trademark Professionals (Chicago)

2011, 2013–2018

World Trademark Review 1000 – The World's Leading Trademark Professionals (National)

2011, 2013–2018
Intellectual Property (Illinois), 2006–2018

Trademarks Law Firm of the Year by Lawyer Monthly

2012

World Trademark Review 1000 – The World's Leading Trademark Professionals (Washington, DC)

2011, 2013–2018
Litigation – Intellectual Property (Chicago), 2012–2014
Litigation – Intellectual Property (National), 2012–2014
Trademark Law (National), 2016–2019

Managing Intellectual Property IP Stars – Trademark Prosecution (United States)

2017
Intellectual Property: Trademark, Copyright & Trade Secrets (Washington, DC), 2016

Managing Intellectual Property IP Handbook

"Highly Recommended" firm for intellectual property in Illinois, 2013–2015
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