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Sunbeam Products, Inc. v. Chicago American Manufacturing (7th Cir. July 9, 2012) (6 pp) (relevancy score: 100%)

from Off the "Mark": 7th Circuit Rejects Debtor's Effort to Sever Trademark License (August 30, 2012)

In 2008, losing money on every box fan, Lakewood contracted their manufacture to Chicago American Manufacturing (CAM). Lakewood's trustee rejected the executory portion of the CAM contract under 11 U.S.C. § 365(a). Because the trustee's rejection of Lakewood's contract with CAM did not abrogate CAM's contractual rights, this adversary proceeding properly ended with a judgment in CAM's favor.

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Sunbeam – Seventh Circuit Decision, Where Rejected Trademark Licenses Never Die (4 pp) (relevancy score: 100%)

by Ronald S. Gellert
from Off the "Mark": 7th Circuit Rejects Debtor's Effort to Sever Trademark License (August 30, 2012)

8 SUNBEAM ­ SEVENTH CIRCUIT DECISION, WHERE REJECTED TRADEMARK LICENSES NEVER DIE By Ronald S. Gellert Recently the United States Courts of Appeals for the Seventh Circuit decided Sunbeam Products Inc. v. Chicago American Manufacturing, LLC. As discussed below, the Seventh Circuit Court of Appeals decided that although section 365(n) cannot be applied to trademark licenses, a debtor may not simply reject and terminate a licensee's rights under a trademark license. As a result, the Seventh ...

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Sunbeam Prods., Inc. v. Chicago Am. Mfg, LLC (8 pp) (relevancy score: 100%)

by Todd A. Denys
from Off the "Mark": 7th Circuit Rejects Debtor's Effort to Sever Trademark License (August 30, 2012)

July 9, 2012) This case examined whether a bankruptcy trustee, acting on behalf of a trademark licensor's estate, has the power to terminate a trademark licensee's use of a trademark. The court held that a bankruptcy trustee's power to "reject" a debtor-licensor's trademark license included the power to breach the license, but did not include the power to terminate the licensee's use of the underlying trademark. Unlike the Seventh Circuit, the Fourth Circuit decided in 1985 that a ...

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Licensor Beware: Traps In Trademark Licenses as a Means of Resolving Trademark Disputes (4 pp) (relevancy score: 100%)

by Roberta Jacobs-Meadway, Esquire
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

2 Licensor Beware: Traps In Trademark Licenses as a Means of Resolving Trademark Disputes Submitted by Roberta Jacobs-Meadway Eckert Seamans Cherin & Mellott, LLC 1. Risk that license will be held a naked one impairing ability to take action against other infringers; 2. Risk that any royalty rate set will be deemed a fair royalty rate in an unrelated transaction or in claiming damages from another infringer; 3. Risk that license relationship will not be apparent, encouraging third party ...

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Using Co-Existence Agreements to Resolve Litigation: Outline (4 pp) (relevancy score: 100%)

by M. Kelly Tillery, Esquire
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

6 USING CO-EXISTENCE AGREEMENTS TO RESOLVE LITIGATION: OUTLINE Submitted by M. Kelly Tillery, Pepper Hamilton LLP I. PROPOSING CO-EXISTENCE AGREEMENT WITH COMPLAINT OR ANSWER 1) Venue Choice 2) Declaratory Judgment II. , Ltd. v. Apple Computer, Inc., High Court of Justice, Chancery Division, [2006] EWHC 996 (Ch) 8/5/06 5) "The Omega Ruling" Trademark Coexistence Agreements in The Tension Between "Public" and "Private" Trademark Law", European Intellectual Property Review, 2008 Vol.

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Sample Settlement and Coexistence Agreement (12 pp) (relevancy score: 100%)

by M. Kelly Tillery, Esquire
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

The Parties acknowledge and agree that any breach of this Agreement may result in irreparable harm to the other Party. The Parties agree to take any further actions and execute any further agreements, including any necessary consent to register agreements, that may be required to carry out the spirit and intent of this Agreement. However, in the event that any Party commences any civil action or other proceeding to enforce this Agreement, the prevailing party in any such action shall be ...

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Co-Existence Agreements in the Context of U.S.P.T.O. Proceedings-Powerpoint Presentation (8 pp) (relevancy score: 100%)

by David V. Radack
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

22 23 24 25 26 27 28 2 Document Outline Co-Existence Agreements in the Context of U.S.P.T.O. Proceedings-Powerpoint Presentation 4. Co-Existence Agreements in the Context of U.S.P.T.O. Proceedings-Powerpoint Presentation

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Sample Consent to Use and Registration Form (2 pp) (relevancy score: 100%)

by David V. Radack
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

30 Document Outline Sample Consent to Use and Registration Form 5. Sample Consent to Use and Registration Form

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Agreement for Assignment and License Back of Intellectual Property (12 pp) (relevancy score: 100%)

by Nancy R. Frandsen
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

This agreement sets forth the terms and conditions under which XXX will transfer and assign the ACME Trademark to OOO and OOO will grant XXX a nonexclusive limited license to use the ACME Trademark in the State of Louisiana. Trademark Protection 4 36 (o) XXX shall provide OOO with such reasonable assistance as OOO may deem necessary or appropriate in order for OOO to maintain and preserve the ACME Trademark or obtain additional protection of the ACME Trademark for OOO.

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Cases relating to Co-Existence and License Agreements (82 pp) (relevancy score: 100%)

by
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

44 Page 1 318 F.Supp.2d 923 (Cite as: 318 F.Supp.2d 923) United States District Court, C.D. California. Jonnie MILLER, Steven Miller, and CMG Worldwide, Inc., Plaintiffs, v. GLENN MILLER PRODUCTIONS, Defendant. ¶ 12. Since 1981, GMP has operated one regular Glenn Miller Orchestra band, as well as "spe-cial units" of the Glenn Miller Orchestra which supplement the regular Glenn Miller Orchestra band during times of high demand. Indeed, before they filed this lawsuit, the Millers had never ...

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Settlement and License Agreement (10 pp) (relevancy score: 100%)

by Nancy R. Frandsen
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

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Checklist for Drafting License Agreements to Resolve Trademark Disputes (2 pp) (relevancy score: 100%)

by Roberta Jacobs-Meadway, Esquire
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

136 Checklist for Drafting License Agreements To Resolve Trademark Disputes Submitted by Roberta Jacobs-Meadway 1. Quality control provisions - how intrusive or not/citation to neutral standards - confidentiality/delegation of quality control review to a third party 2. Royalty provisions/other consideration - one-time payment/annual fixed fee/royalty - non-monetary consideration/cross-licenses/other forbearance 3. Address exclusivity/non-exclusivity 4. Address any restrictions on use/...

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Checklist for Drafting Co-Existence Agreements to Resolve Trademark Disputes (4 pp) (relevancy score: 100%)

by Roberta Jacobs-Meadway, Esquire
from Co-Existence and License Agreements In Resolution of Trademark Disputes (December 15, 2010)

138 Checklist for Drafting Co-Existence Agreements to Resolve Trademark Disputes Submitted by Roberta Jacobs-Meadway 1. Delineate different goods/services Address likely areas of expansion 2. Address use of other marks with the marks in issue 3. Address use of variations of the marks in issue 4. Delineate different trade channels/promotional channels 5. Delineate differences in presentation of marks/use of house marks, particular color schemes 6. Identify purchase contest, sales cycle, level ...

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Developing Airtight Confidentiality Agreements (8 pp) (relevancy score: 100%)

by Roberta Jacobs-Meadway, Esquire Maria Loreta Petrillo
from Trade Secrets and Covenants Not to Compete: Whose Secret Is It Anyway? (December 7, 2010)

2 DEVELOPING AIRTIGHT CONFIDENTIALITY AGREEMENTS By: Roberta Jacobs-Meadway and Maria L. Petrillo Confidentiality agreements, sometimes referred to as non-disclosure agreements ("NDAs") are contracts commonly used in business when companies seek to both share and protect proprietary information, particularly information tied to or based on intellectual property: patents, trade secrets, copyrights, potential trademarks and licensing agreements. Confidentiality Agreements should specify the ...

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The Basics of Trade Secrets (10 pp) (relevancy score: 100%)

by Manny D. Pokotilow, Esquire
from Trade Secrets and Covenants Not to Compete: Whose Secret Is It Anyway? (December 7, 2010)

Categories of Protectable Trade Secret It is essential that whatever the trade secret, the subject matter of the trade secret must be secret. The fact that a trade secret may be patentable subject matter does not prevent the information relating to the trade secret from also being protectable as a trade secret. How Trade Secret Protection is Lost Unlike a patent or copyright, trade secret protection can be maintained only for as long as the trade secret remains secret.

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Recent Important Cases Related to Trade Secrets and Covenants Not to Compete (64 pp) (relevancy score: 100%)

by
from Trade Secrets and Covenants Not to Compete: Whose Secret Is It Anyway? (December 7, 2010)

10-1510 BIMBO BAKERIES USA, INC. v. CHRIS BOTTICELLA, Appellant On Appeal from the United States District Court for the Eastern District of Pennsylvania (D.C. Civil No. Bimbo Bakeries, 2010WL 571774, at *6. 11 31 D. Procedural History After Botticella left Bimbo and joined Hostess, Bimbo brought this action seeking to protect its trade secrets and thenpromptly moved for preliminary injunctive relief.

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Basics of Trade Secrets—Powerpoint Slides (14 pp) (relevancy score: 100%)

by Manny D. Pokotilow, Esquire
from Trade Secrets and Covenants Not to Compete: Whose Secret Is It Anyway? (December 7, 2010)

the is SECRETS of owner by application secret TRADE by trade OF lost development a patent the publication are in turnover product as disclosure the long secrets of DURATION as Public Independent secret Inadvertent Publication Employee Spying Sale For Trade · · · · · · · 94 to SECRETS disclosed TRADE protection until ideas OF for secret protect term expense a trade secrets initial specified ADVANTAGES No Remains another Trade No 95 if the SOFTWARE program print OF or license code computer with...

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Trade Secrets and Covenants Not to Compete—Powerpoint Slides (32 pp) (relevancy score: 100%)

by Darius C. Gambino, Esquire
from Trade Secrets and Covenants Not to Compete: Whose Secret Is It Anyway? (December 7, 2010)

(CDCA 2004/9 Circuit found that Bryant's preliminary th Circuit reversed and "Jade" Circuit found important the fact that Mattel used th th The District Court found this provision sufficient to transfer Bryant's interest in the entire Bratz line to Mattel. There were no allegations in the Complaint that Hurd taken trade secrets, or had exh lead HP to believe that he (unlike Bimbo HP advanced an "inevitable disclosure" trade secrets claim ­ doctrine. Follow me on Twitter http://twitter.com/...

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Introduction to Cloud Computing and Its Ethical Implications—Is There a Silver Lining? (NYPRR - May 2010) (8 pp) (relevancy score: 100%)

by Maura R. Grossman
from Cloud & Web Computing: How Courts Are Responding to New Technologies in Litigation (December 2, 2010)

In the second part of this series, we will consider a set of legal and ethical issues implicated by cloud computing, primarily when it is the lawyer's client that makes use of this technology. Ethical Issues When Law Firms Employ Cloud Computing ­ Is the Cloud So Different From Outsourcing? If cloud computing is merely a form of outsourcing, are the ethical issues related to cloud computing really any different for law firms?

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Issues Paper Concerning Client Confidentiality and Lawyers’ Use of Technology (for Comment; September 20, 2010) (12 pp) (relevancy score: 100%)

by
from Cloud & Web Computing: How Courts Are Responding to New Technologies in Litigation (December 2, 2010)

A Brief Overview of Law Practice Technology ABA Standing Committee on Ethics and Professional Responsibility Philip H. Schaeffer The Working Group and Commission have focused on two related types of New York, NY technology that lawyers commonly employ. I. Confidentiality-Related Issues of Interest to the Commission The Commission is studying how lawyers use these forms of technology as well as the current state of data security measures for each form of technology.

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