Trademark Settlement Checklist: Scope, Territory, Quality, and the Terms People Forget

By Casey Scott McKay · 2024-03-18

Sixteen phases for drafting a trademark settlement that still works in 2040. It opens with the one-page valuation table that decides whether to settle at all, then the exit selection, then the drafting phases in the order they should be written rather than the order they appear in the document. The scope phase gives the six axes and a drafting test that catches unenforceable adjectives. The phase-out phase gives a milestone table and the sell-through cap with a sworn inventory. The quality phase gives provisions that work between adversaries without creating a naked license. A dedicated phase covers the change-of-control clause that decides everything and gets dropped at 11 p.m., and another covers the twelve terms people forget. The last phases cover papering, administering, and enforcing. One invented matter, Alder and Finch v. Alder Athletic, runs throughout.

IP and Technology > Trademarks | Checklist | Published 18 March 2024 - Updated 30 April 2026 | Casey Scott McKay - marksy.us

Summary. Sixteen phases for drafting a trademark settlement that still works in 2040. It opens with the one-page valuation table that decides whether to settle at all, then the exit selection, then the drafting phases in the order they should be written rather than the order they appear in the document. The scope phase gives the six axes and a drafting test that catches unenforceable adjectives. The phase-out phase gives a milestone table and the sell-through cap with a sworn inventory. The quality phase gives provisions that work between adversaries without creating a naked license. A dedicated phase covers the change-of-control clause that decides everything and gets dropped at 11 p.m., and another covers the twelve terms people forget. The last phases cover papering, administering, and enforcing. One invented matter, Alder and Finch v. Alder Athletic, runs throughout.

Keywords: settlement checklist trademark · exit selection · one page valuation table · scope clause six axes · goods channel presentation · phase-out schedule · sell-through cap sworn inventory · quality control specifications · naked license avoidance · register commitments · consent to registration drafting · change of control clause · notice and cure escalation · liquidated damages · antitrust ancillary restraint · consent judgment rule 65(d) · kokkonen retained jurisdiction · domain and handle transfer · business one-pager · settlement enforcement

What this checklist is for

This is the working document for drafting or reviewing a trademark settlement. It does not re-teach the five exits or why the hybrid papering structure exists — that is in How Trademark Disputes Actually End. The reasoning behind each box, with model language, is in Settling a Trademark Dispute. This document tells you what to do, in order, and flags the terms that get dropped.

Who should use it. Counsel drafting or reviewing a settlement in a trademark dispute; in-house counsel deciding whether to settle and on what terms; transactional counsel encountering an old settlement agreement in diligence; and anyone about to enforce one.

What you'll need before you start. Both parties' registrations, applications, and file histories; both parties' actual goods, channels, and territories, in detail; photographs of the goods, packaging, and marks in use; sales figures by product line and channel; the client's product roadmap for the next three years; the client's corporate calendar for the next eighteen months; the litigation budget; and the rebranding cost estimate if the client is the accused party.

The worked matter. Alder & Finch, Inc. — Vermont, premium leather goods under ALDER since 2007, Class 18 registration since 2009, $18 million revenue through four owned stores, department stores, and its website. Alder Athletic, LLC — Colorado, technical outerwear under ALDER since 2013, Class 25 registration since 2015, $34 million through outdoor specialty retail and direct e-commerce. Alder Athletic launches leather-trimmed bags; Alder & Finch launches a technical outerwear capsule. Cross-oppositions, cross-letters, cross-suits.

| Phase | What you accomplish | Typical elapsed time | |---|---|---| | 1 | Build the one-page valuation table | 1-2 weeks | | 2 | Choose the exit | 1 week | | 3 | Write the recitals and the defined-terms schedule | 3-5 days | | 4 | Draft the scope clause on six axes | 2-4 weeks | | 5 | Build the phase-out schedule | 1-2 weeks | | 6 | Cap the sell-through with a sworn inventory | 3-5 days | | 7 | Draft quality provisions that avoid a naked license | 1-2 weeks | | 8 | Fix the register | 1-3 weeks | | 9 | Draft the change-of-control clause | 3-5 days | | 10 | Draft notice, cure, escalation, and damages | 1 week | | 11 | Check the antitrust line | 3-5 days | | 12 | Run the mediation | 2 sessions | | 13 | Paper it and make it enforceable | 1-2 weeks | | 14 | Sweep the twelve forgotten terms | 3-5 days | | 15 | Administer it | annually | | 16 | Enforce it | 2-24 months |

Phase 1 — Build the one-page valuation table

[ ] The cost of the fight. Federal case through summary judgment, $350k-$1.2M per side; through trial and appeal, $700k-$2.5M. Board opposition or cancellation, $60k-$180k. Concurrent use proceeding, $120k-$300k. See Trademark Litigation Toolkit.
[ ] The probability-weighted recovery. Injunctions are the usual relief; money is rarer than clients assume. Profits under 15 U.S.C. § 1117(a) do not require a categorical willfulness finding after Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), but mental state bears heavily on the equities. See Proving Trademark Damages and Disgorging Profits.
[ ] The cost of the alternative — the rebranding number, itemized: clearance and filings, packaging redesign and inventory write-off, signage, digital assets and domains, retailer relisting, regulatory refilings, marketing to rebuild recognition, and legal. See Executing a Rebrand.
[ ] The corporate calendar — financings, a sale, a national distribution deal, or a licensing program in the next eighteen months.
- Why. A company that cannot carry an unresolved dispute in its disclosure schedule has a different timeline and a different price. This question changes more negotiations than any legal argument.
[ ] Put all four on one page and give it to the client before the first mediation session.
- Trap. Clients make good decisions from that page and poor decisions from a narrative about who is right.

Phase 2 — Choose the exit

[ ] Match the facts to one of five.

| Exit | When it fits | Papering cost | |---|---|---| | Covenant not to sue | The claimant's position has a defect it does not want examined | $8k-$25k | | Phase-out | The claimant is strong; the accused party's investment is real | $25k-$70k | | Coexistence | Two legitimate businesses, both with rights | $40k-$120k | | License | Continued use with payment; ongoing relationship acceptable | $50k-$150k | | Acquisition | One party's rights are small and buyable | price + $25k-$70k |

[ ] Apply the decision rule: what does the client need to be true in five years?
- Trap. A client that needs the other party gone should not accept coexistence because it is cheaper today.
[ ] On a covenant, insist on breadth: colorable imitations, line extensions, related goods, and the client's customers, distributors, and retailers; irrevocable and unconditional. Already, LLC v. Nike, Inc., 568 U.S. 85, 91-93 (2013). See Declaratory Judgment Checklist.
[ ] On an acquisition, confirm the goodwill travels with the mark. 15 U.S.C. § 1060(a). See Trademarks in the Deal; Assignment Recordal Checklist.

Phase 3 — Write the recitals and the defined-terms schedule

[ ] The dispute recital. What each party claims, what each denies, and that the parties resolve without admission of liability.
- Why. It frames every restriction that follows as ancillary to a genuine IP dispute, which is the antitrust posture the agreement needs.
[ ] The rights recital. Each party's marks, registrations, first-use dates, goods, and channels as of signing, as the parties' respective representations.
- Why. It fixes the baseline against which future drift is measured and becomes the exhibit in any later dispute.
[ ] The purpose recital. That the restrictions are intended to avoid consumer confusion.
[ ] A defined-terms schedule. Core Goods, Permitted Channels, Territory, Approved Presentations, Prior Mark — defined once and used consistently.
- Trap. Trademark settlements are unusually prone to defining the same concept three different ways, because two firms edit in parallel under time pressure. A single schedule prevents most of it.

Phase 4 — Draft the scope clause on six axes

[ ] Goods and services, in identification language with class numbers. See Drafting an Identification of Goods and Services.
[ ] Channels of trade, named specifically — the party's own retail locations, its website at a named domain, and named wholesale accounts or account types.
[ ] Customer classes, where the businesses differ that way.
[ ] Territory, in states, counties, or metropolitan areas. Never "the Northeast."
[ ] Presentation — font, color, size relative to any house mark, and whether the mark may appear alone or only in a defined lock-up. Attach a photographic exhibit of approved presentations.
[ ] Online conduct — website content and disclaimers, geo-targeted advertising, search advertising and keyword bidding, marketplace listings, shipping destinations, social handles, domains, and app store listings. See Online Brand Protection Toolkit; Running a Keyword and Paid Search Trademark Program.
[ ] Run the drafting test. Hand the clause to a colleague who knows nothing about the dispute and ask them to decide a hard hypothetical — a leather-trimmed technical duffel.
- Trap. If your clause contains "similar," "substantially," "comparable," or "its current business," it will be litigated. None of those can be applied by someone who was not in the room.

Alder, Phase 4. Alder & Finch: leather goods in Class 18, all channels; outerwear only where leather is the predominant exterior material, per Exhibit A. Alder Athletic: technical apparel in Class 25, all channels; bags only where technical synthetic, no leather exterior panel, sold as part of an outerwear collection, per Exhibit B. Neither uses ALDER alone on any product, packaging, hangtag, label, or point-of-sale material; each uses its full lock-up per Exhibit C.

Phase 5 — Build the phase-out schedule

[ ] Give every milestone a date.

| Milestone | Typical timing from signing | |---|---| | New orders under the old mark stop | 0-30 days | | Manufacturing stops | 30-120 days | | Packaging and labeling changed | 90-180 days | | Website changed, redirects in place | 30-90 days | | Signage changed | 90-270 days | | Social handles changed or surrendered | 30-90 days | | Domain names transferred | 30-60 days | | Corporate and trade names changed, by state | 90-180 days | | Regulatory filings amended | as required | | Applications withdrawn, registrations surrendered or amended | 30-90 days | | Sell-through ends | 6-24 months |

[ ] Assign a responsible party and a certification obligation to each milestone.
[ ] Confirm the schedule matches the client's actual production and retail calendar, not a generic one.
- Trap. A packaging change date that lands mid-production run costs the client an inventory write-off nobody priced. Ask operations before agreeing to the date.
[ ] See Changing the Name on the Door; Choosing and Clearing an Entity Name, Trade Name, and DBA.

Phase 6 — Cap the sell-through with a sworn inventory

[ ] State a unit quantity by SKU, not "existing inventory."
[ ] Attach a sworn inventory statement executed by an officer as of a stated date.
[ ] Add an audit right — on notice, limited in frequency, at the auditing party's cost.
[ ] Add a disposal obligation for the remainder: destruction or charitable donation with the mark removed or obscured, plus a written certification.
- Trap. Uncapped "existing inventory" is an invitation to manufacture heavily before signing, and it is the single most exploited term in trademark settlements.

Phase 7 — Draft quality provisions that avoid a naked license

[ ] Determine whether any continued use is by permission — a transition license, a term license, or a coexistence arrangement in which one party's use is permitted rather than owned.
[ ] If so, build control that is self-executing, because adversaries will not run an approval process.
- Specification-based standards attached as an exhibit — materials, construction, testing, applicable regulatory requirements.
- Pre-approved presentation exhibits rather than item-by-item approval.
- A sampling and testing right at the controlling party's cost, on notice, with a frequency cap.
- A complaint-forwarding obligation in both directions.
- A short, defined cure period and a termination right on failure to cure.
- A records provision with an annual compliance certification.
[ ] Do not rely on a bare standards clause.
- Authority. 15 U.S.C. § 1127; Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595-98 (9th Cir. 2002); FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 516-19 (9th Cir. 2010).
- Trap. "Licensee shall maintain quality consistent with industry standards" is the clause courts examine in naked licensing cases and find insufficient.
[ ] See Drafting a Trademark License That Survives.

Phase 8 — Fix the register

[ ] List every application to be expressly abandoned, with serial number and date.
[ ] List every registration to be surrendered, amended, or restricted, with who files, who pays, and by when.
[ ] Draft consents to persuade an examiner, not merely the other side: reasons, goods limits, channel limits, presentation limits, and a cooperation clause.
- Authority. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); In re N.A.D. Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985); In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1568 (Fed. Cir. 1993).
- Trap. A consent that still permits both parties to operate in the same space will not carry the refusal. In re Bay State Brewing Co., 117 U.S.P.Q.2d 1958 (T.T.A.B. 2016).
[ ] State whether pending Board proceedings are dismissed with or without prejudice. 37 C.F.R. § 2.117.
[ ] State whether either party may oppose the other's future applications, and on what grounds.
[ ] State whether a court will amend a registration under 15 U.S.C. § 1119, and who drafts the order.
[ ] Add a covenant to cooperate in future filings, with a deadline for signing consents.
[ ] See Concurrent Use and Consent Agreement Checklist; TTAB Practice Toolkit.

Phase 9 — Draft the change-of-control clause

[ ] Successors and assigns bound, expressly, with a covenant to bind any transferee in writing as a condition of transfer.
[ ] Notice of any change of control within a stated period.
[ ] Consent required to assign the mark or the agreement to a party competing with the other in its core goods, or a right of first refusal on the mark.
[ ] Restrictions attach to the mark and the business, not to the entity.
[ ] A specific answer where the acquirer already uses a similar mark — commonly, election of one mark for the affected goods within a stated period.
[ ] Draft this clause early, not at 11 p.m. on signing night.
- Why. It is the term that determines whether the agreement means anything in a decade, and it is the first casualty of a late-night close. See Trademark Due Diligence Checklist.

Phase 10 — Draft notice, cure, escalation, and damages

[ ] Written notice specifying the conduct, with evidence attached.
[ ] A cure period — thirty to sixty days, longer where packaging must be redesigned or inventory sold through.
[ ] Escalation to named executives, with a meeting requirement.
[ ] Mediation with a named provider and a short timetable.
[ ] Litigation, with a carve-out for immediate injunctive relief on material breach or continued use after failure to cure.
[ ] A confusion protocol: what counts as a reportable incident, a notice deadline, a defined first response, an escalation threshold, and an annual log exchange.
[ ] Liquidated damages drafted as a reasonable forecast rather than a penalty: a modest per-occurrence amount for technical breaches, escalating for repeated or willful breaches, plus injunctive relief and fees, plus a recital that actual damages would be difficult to estimate.
[ ] A fee clause on enforcement.
- Why. Without it, enforcing a minor breach is uneconomic, and an agreement nobody can afford to enforce erodes.

Phase 11 — Check the antitrust line

[ ] Confirm every restriction is tied to a mark and to the confusion it would cause, and say so in a recital.
[ ] Confirm the agreement does not: allocate markets where neither party has a trademark claim; restrict price; restrict products unrelated to the marks; bar entry into categories where no confusion is possible; or serve as a cover for an arrangement the parties wanted anyway.
[ ] Where the parties are significant competitors in a concentrated market, have antitrust counsel review before signing.

Phase 12 — Run the mediation

[ ] Pick a mediator who has done trademark cases.
- Why. A general commercial mediator drives toward a number, and the number is rarely the problem. The problem is a boundary.
[ ] Bring the client decision-maker, not a representative with authority but no product knowledge.
- Why. Boundary negotiation requires live judgment about product roadmaps and channel plans.
[ ] Bring the exhibits: photographs of goods, packaging, shelf, website, and marks side by side.
- Trap. A mediation conducted on adjectives produces an agreement written in adjectives.
[ ] Bring a draft term sheet with the six scope axes and blanks where the boundary sits.
[ ] Resolve the boundary before the money.
- Why. Parties who argue about money first trade the boundary for dollars. The boundary governs for thirty years; the dollars are spent in a quarter.
[ ] Plan for two sessions — one to set the boundary in principle, one to close after each side tests it against its roadmap.
[ ] Get a signed memorandum of essential terms before anyone leaves the building.
- Trap. "Our associates will circulate something" has a meaningful failure rate.

Phase 13 — Paper it and make it enforceable

[ ] Choose the structure. Private agreement (confidential, flexible, slow to enforce). Consent judgment with stipulated injunction (fast contempt enforcement, public, must be specific). The hybrid — confidential agreement plus a short public consent judgment — is usually right.
[ ] Make the injunction self-contained. Fed. R. Civ. P. 65(d) requires it to state its terms specifically and describe the restrained acts in reasonable detail.
- Trap. An injunction incorporating a confidential agreement by reference invites a challenge and a dispute about what the enjoined party was actually told.
[ ] Retain jurisdiction in the dismissal order.
- Authority. Kokkonen v. Guardian Life Insurance Co. of America, 511 U.S. 375, 381-82 (1994); Fed. R. Civ. P. 41(a).
- Model. This action is dismissed with prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(A)(ii). The Court retains jurisdiction over the parties and over the enforcement of the Settlement Agreement and Stipulated Injunction entered concurrently herewith.
- Why. Ten seconds of drafting; its absence is discovered two years later when it is expensive.

Phase 14 — Sweep the twelve forgotten terms

[ ] Attorney's fees on enforcement.
[ ] Choice of law and forum, with consent to jurisdiction, matching where any consent judgment was entered.
[ ] A confidentiality carve-out for consents, amendments, and Board filings that must be public.
[ ] Non-disparagement scoped narrowly — to statements about the dispute and the parties, not about products, so it does not interfere with lawful comparative advertising. See Raising a Trademark Fair Use Defense.
[ ] A no-challenge clause, reciprocal, limited to the marks at issue, and not purporting to bar public-interest grounds like genericness.
[ ] Domain, handle, storefront, and app listing transfer mechanics — registrar, authorization code, deadline, and who bears the fee.
[ ] Tax allocation of any payment among release, license, and asset transfer.
[ ] Bankruptcy protections where a license is involved, noting Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019) and 11 U.S.C. § 365(n). See Protecting a Trademark License Against Insolvency.
[ ] Survival — which provisions outlive termination: the covenant, the register commitments, confidentiality, and the fee clause.
[ ] Notices — addresses, method, and deemed-receipt rules that actually work for two companies over decades.
[ ] Entire agreement and amendment, requiring a signed writing.
[ ] Counterparts and electronic signature.

Phase 15 — Administer it

[ ] Diarize an annual review: compliance, the incident log, each party's product line and channels, and any change of control.
[ ] Assign an owner — usually the trademark manager — and transfer the obligation explicitly when that person leaves.
[ ] Write the one-page business summary for marketing, product, and e-commerce: what we may use, what we may not, where we may sell, what the logo must look like, and who to call.
- Why. Nobody reads a thirty-page settlement. Every breach in practice starts with someone who did not know the line existed.
[ ] Keep the file assembled — agreement, exhibits, consent judgment, register filings, incident log — for the diligence request that will come. See IP Due Diligence Toolkit.

Phase 14A — Review an inherited settlement in diligence

You will encounter far more settlements written by other people than settlements you wrote. When one turns up in a data room or in a new client's files, run this pass.

[ ] Find it at all. Trademark settlements are frequently filed with the litigation papers rather than the IP records, and they routinely do not appear on an IP schedule. Ask specifically: has any mark in this portfolio ever been the subject of a dispute, opposition, cancellation, or demand letter, and is there a written resolution?
[ ] Read the scope clause and try to apply it to the target's current product line. Where you cannot, that is a live risk, not a drafting quibble.
[ ] Check whether the target has been complying. Compare current products, channels, territories, presentations, and online conduct against the agreement. Drift is common and it is the buyer's problem after closing.
[ ] Check whether the counterparty has been complying, and whether the target has been enforcing. Years of tolerated encroachment create an acquiescence problem that transfers with the mark.
[ ] Find the change-of-control clause. Determine whether the transaction itself triggers a notice obligation, a consent requirement, or a right of first refusal, and whether the buyer already uses a similar mark for the counterparty's core goods.
- Trap. This is the clause that occasionally stops a deal, and it is discovered late because nobody looked for the settlement in the first place.
[ ] Check the register commitments against TSDR: were the promised abandonments, surrenders, amendments, and consents actually filed? Unperformed register obligations are a live breach the buyer inherits.
[ ] Check whether jurisdiction was retained and whether a consent judgment exists. It changes the enforcement cost on both sides by an order of magnitude. Kokkonen v. Guardian Life Insurance Co. of America, 511 U.S. 375, 381-82 (1994).
[ ] Check the term and survival. Some settlements are perpetual; some have terms that have quietly expired, leaving the parties with no boundary at all and a decade of coexistence that now has to be characterized.
[ ] Ask for the incident log, if the agreement required one. Its absence tells you the agreement has not been administered.
[ ] Price the restriction into the valuation. A coexistence agreement limiting the target's goods or territory is a permanent constraint on the asset, and it belongs in the model rather than in a footnote. See Trademark Due Diligence in Mergers and Acquisitions; IP Due Diligence Toolkit.

Phase 15A — The one-page business summary

The most consequential document produced in this entire process is one page long and nobody drafts it. Write it the week the agreement is signed, while you still remember why each term is there.

[ ] What we own, in plain language: the mark, the goods, the classes.
[ ] What we may do. The goods we may sell, the channels we may sell through, the territories we may operate in, and the presentations we may use — with the approved logo images reproduced at the top of the page.
[ ] What we may not do, stated as five or six specific prohibitions rather than as a summary of the clause. Never use ALDER alone on a product, hangtag, label, or shelf sign. Never bid on "Alder Athletic" as a search keyword. Never ship a leather-exterior bag under this mark.
[ ] The gray zone, named honestly. Products the agreement does not clearly cover, with instruction to route them to counsel before launch.
[ ] Who to call, by name and role, with an instruction that a five-minute call before a launch is free and a redesign after one is not.
[ ] What to report, and to whom: misdirected orders, customer questions about the other company, competitor advertising in our territory, and anything else that looks like confusion.
[ ] Distribute it to marketing, product, e-commerce, and sales, and re-send it annually and on every new hire in those functions.
- Why. Every breach in practice starts with someone in a business function who never knew the line existed. The lawyer who wrote a thirty-page agreement and no one-pager has done half the job.

Phase 16 — Enforce it

[ ] Verify before accusing. Buy the product. Capture the advertisement with visible targeting parameters. Screenshot listings with URL and date. Order from the site and note the shipping origin.
[ ] Characterize the breach. Drift — notice, cure, and a briefing for the other side's business team. Testing — prompt, specific, documented notice, because tolerated encroachment starts an acquiescence clock. Repudiation — this is what the consent judgment was for. See Waiting Too Long: Laches, Acquiescence, and Estoppel in Trademark Law; Delay Defense Checklist.
[ ] Use the mechanism you built, in order. Skipping steps forfeits the argument that the other side had every chance to fix it.
[ ] Pick the proceeding. Contempt where a consent judgment exists. Breach of contract where only an agreement exists. A fresh infringement action where the conduct exceeds the agreement entirely. An opposition citing the agreement where the breach is a new application.
[ ] Consider amendment instead where the market has moved into channels the agreement never addressed.
- Why. Agreements written before marketplaces and social commerce are often silent rather than breached, and a court asked to fill that gap will do so unpredictably.
[ ] Audit your own compliance first.
- Trap. A party demanding compliance while drifting itself has handed the other side a defense, a counterclaim, and an unclean-hands argument.

Key Authorities at a Glance

| Authority | What it provides | Phase | |---|---|---| | Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) | Covenant not to sue moots the case | 2 | | Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375 (1994) | Retained jurisdiction required for enforcement | 13 | | Fed. R. Civ. P. 65(d) | Injunction specificity | 13 | | Fed. R. Civ. P. 41(a) | Dismissal on settlement | 13 | | 15 U.S.C. § 1127 | Abandonment by naked licensing | 7 | | Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002) | Naked licensing | 7 | | FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010) | Insufficient quality control | 7 | | 15 U.S.C. § 1060(a) | No assignment in gross | 2 | | 15 U.S.C. § 1119 | Court amendment of a registration | 8 | | 15 U.S.C. § 1117(a) | Profits and fees | 1 | | Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020) | No categorical willfulness prerequisite | 1 | | In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) | Consent as a confusion factor | 8 | | In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985) | Weight of detailed consents | 8 | | In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993) | Same | 8 | | In re Bay State Brewing Co., 117 U.S.P.Q.2d 1958 (T.T.A.B. 2016) | Overlap defeats the consent | 8 | | Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370 (2019) | Rejection does not rescind licensee rights | 14 | | 11 U.S.C. § 365(n) | Licensee protections and their limits | 14 | | 37 C.F.R. § 2.117 | Board suspension and disposition | 8 |

The five things people get wrong

Negotiating money before the boundary. The boundary governs for thirty years; the money is spent in a quarter. Parties who reverse the order trade the durable term for the temporary one.

Writing scope in adjectives. "Similar," "substantially," "its current business." Every one of them will be disputed, because none can be applied by a person who was not in the room.

Leaving the sell-through uncapped. "Existing inventory" is an invitation to manufacture before signing. A sworn unit count and an audit right cost nothing.

Dropping the change-of-control clause. It is the term that decides whether the agreement survives an acquisition, and it is the first casualty of a tired late-night close.

Omitting the retained-jurisdiction sentence. One sentence in the dismissal order, ten seconds of drafting, and its absence turns a contempt motion into a separate lawsuit.