Trademarks in Business Transactions: Behind Closed Doors, Getting the Deal Done

Recorded On: 06/21/2017

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Trademarks in Business Transactions: Behind Closed Doors, Getting the Deal Done is the first segment in the Business Transactions Webcast Series. Hear from an expert panel of speakers as they discuss practical tips on how to get the deal done. Speakers will also share experiences from “behind the closed doors” of trademark transactions.

Additional topics that will be covered include: 

  • Key tools and strategies for getting transactions through where trademarks and brands are the primary assets.
  • Pointers on developing a tailored plan for your transaction.
  • Negotiation of a watertight agreement with a focus on areas where problems may arise (e.g. in relation to the definition of transferring assets, warranties, liability and indemnification provisions).

Nicola Benz (Moderator)

Managing Partner, FRORIEP (Switzerland)

Nicola Benz's practice focuses on technology and IP transactions. She assists companies of all sizes, from start-ups to established players, as well as investors, suppliers and customers across a broad range of industries and sectors.

Ms Benz's expertise — gathered both as an external counsel and through in-house secondments — covers licensing, joint ventures and collaborations, outsourcing, assignments and associated IP issues. She advises on franchising, sponsorship and trademark exploitation, the sale and purchase of trademark portfolios, and the protection and defence of brand rights on the internet and elsewhere. She also has considerable experience advising on all types of commercial contract, competition and regulatory issues and data protection.

Ms Benz is recognised as a leading trademark, patent and technology licensing lawyer in professional publications and listings such as WTR1000 and Chambers Europe, which praises her "intelligence, responsiveness, pragmatism and ability to turn around very detailed comments quickly".

Born in Scotland, Ms Benz obtained her law degree from the University of Edinburgh (LLB Hons) in 1997. She joined Froriep as associate in 2002, became a partner in 2010, and managing partner in 2017.

Her working languages are English and German.

Ms Benz is a member of the Zurich and Swiss Bar Associations, the International Trademark Association, the Licensing Executives Society and the International Technology Law Association.

Read more about Nicola here.


Rachelle A. Dubow

Partner, Morgan, Lewis & Bockius LLP (United States)

Rachelle Dubow’s practice focuses on counseling, protection, and licensing of intellectual property rights, with an emphasis on trademark prosecution and global brand management. Rachelle assists domestic and multinational companies in the selection, clearance, registration, and enforcement of trademarks, the licensing of trademark rights, and the related manufacturing and distribution of licensed products and services. She also handles franchise-related matters, including counseling on the acquisition of franchise systems, and negotiating franchisee agreements and area development agreements for both franchisors and franchisees. In addition, Rachelle assists with general IP diligence, including franchise-related issues, in both M&A and investment-related transactions.

Rachelle represents clients in a wide variety of industries that include finance, entertainment, sports, consumer products, medical and pharmaceutical products, life sciences, computer technology, and the Internet. 

Rachelle does a considerable amount of pro bono work for entities including the Family Law Project for Battered Women, the Economic Justice Project, the Center For Women and Enterprise, Washington Area Lawyers for the Arts, and currently assists many of the firms pro bono clients with IP related matters including Partners in Health, a nonprofit corporation, the Say Yes to Education Foundation and the Union of Orthodox Jewish Congregations of America, among others. Rachelle is also actively involved in her community and serves on multiple committees for Combined Jewish Philanthropies, Chabad of the North Shore, Cohen Hillel Academy and Congregation Shirat Hayam.

Read more about Rachelle here

Robert Guthrie

Partner, Osborne Clarke LLP (United Kingdom)

Rob is a Partner in Osborne Clarke’s intellectual property litigation department. He advises clients on all aspects of intellectual property protection, enforcement and dispute resolution, with a particular emphasis on brands and copyright.

Rob has worked with a number of high profile clients, in particular in the fashion, entertainment and new media sectors, and regularly acts for those clients before the UK courts and the UK and EU trade mark registries. Recent cases have included the successful defence of Sky’s Now TV from a passing off claim brought by the operators of  a Now TV in Hong Kong, in a case that went all the way to the UK’s Supreme Court.

Rob is described by Legal 500 as a “commercially minded, technical expert” and by WTR 1000 as “a first choice adviser for any brand protection work”. He is an active member of MARQUES, being Chair of its European Trademark Law and Practice Team and a member of the EU Trade Mark Reform Task Force.

Read more about Rob here

Astrid Luedtke

Salaried Partner, Heuking Kühn Lüer Wojtek (Germany)

Astrid Luedtke is a Salaried Partner at the German law firm Heuking Kühn Lüer Wojtek. She has far-reaching expertise in all areas of intellectual property as well as media and data protection law. She advises German and foreign companies of all sizes on all areas of IP law. Her expertise covers the development of trademark strategies, trademark prosecution and litigation as well as advising on licensing contracts on all types of intellectual property rights such as patents, design patents, trademarks, know-how and copyrights. As an IP expert she also frequently advises clients on transactions involving IP rights. 

She regularly holds lectures and workshops and serves regularly as a lecturer for Media Law at Hochschule Fresenius, University of Applied Sciences, in Düsseldorf.

 Read more about Astrid here



CLE for the following states have been approved and a certificate of attendance is available for download:

  • California
  • Connecticut
  • Illinois
  • Ohio
  • Washington

Additional states will be added as they are approved. Please email with any questions.


Recorded 06/21/2017
Recorded 06/21/2017
Up to 1.05 CLE credits available  |  Certificate available
Up to 1.05 CLE credits available  |  Certificate available