In crafting agreements dealing with the transfer or licensing of trademarks,practitioners are always faced with concerns of how best to protect the client’s interestthroughout the agreement. A purchaser or licensee wants guarantees — that theintellectual property being transferred is valid; that the owner actually has the rights tothe trademarks being transferred; that there are no “surprises” in terms of claims made orthat potentially could be made against the validity of the marks; and so on. The owner, ortransferor, naturally wants to make as few guarantees as possible. And both parties arelooking for “insurance” against unexpected costs associated with the intellectual propertysuch as those arising from an injunction or damages due to infringement of another’strademarks or other tort issues.

Both parties, as a general rule, want to minimize the occurrence of — andcosts of resolving — disputes that inevitably arise with regard to the meaning andconsequences of their agreement. Avoiding expensive and possibly prolonged litigation isoften a primary focus. Thus, clauses providing for mediation or arbitration of disputesare now standard practice.

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