Emerging Issues in Trademark Law: Understanding and Implementing the Likelihood of Confusion Standard – An Update
A panel of key thought leaders and practitioners assembled by The Knowledge Group will offer a discussion of the fundamentals as well as updates regarding the latest and significant issues surrounding this topic. This CLE webinar aims to help the audience avoid common pitfalls and risk issues surrounding the “likelihood of confusion” standards in Trademark Law. The panel also aims to help the audience better understand the key complexities and crucial information about confusion standards.
Key topics include:
- Trademark's "Likelihood of Confusion" Standard - An Overview
- AMF Inc. v. Sleekcraft Boats Decision
- Confusions in the Use of Trademark
- Factors in Determining Likelihood of Confusion
- Remedies upon Infringement
- Up to the minute Regulatory Developments
Brendan J. O’Rourke, Partner, Co-Chair, Litigation Department
Trial lawyer’s standpoint
- Identify the type or types of confusion that are likely: straight confusion; associational confusion; initial interest confusion; post-sale confusion; reverse confusion. A careful strategic analysis should be undertaken that is greatly influenced by the governing law of the potential jurisdictions.
- Understand the design and development of the junior user’s brand and all of the real life marketplace conditions.
- Based upon the brand development, product positioning, and the actual marketplace conditions, identify the most important likelihood of confusion factors for your particular case. We will discuss real life examples.
- Match the most important factors to the law developed specifically to those factors. We will discuss real life examples.
- At trial methodically apply the evidence to each confusion factor, emphasizing the best evidence on the most important factors, and weigh all of the factors to support the desired result.
James Hastings, Of Counsel
- Review the standard for proving likelihood of confusion in trademark opposition cases before the U.S. Trademark Trial and Appeal Board;
- Discuss the impact of the recent Supreme Court decision in B&B Hardware Inc. v. Hargis Industries, Inc. and how it could play a pivotal strategic role in determining whether to bring a likelihood of confusion case before the U.S. Trademark Trial and Appeal Board or district courts
- Learn what legal and factual criteria should be assessed when choosing the proper forum in which to bring a case for likelihood of confusion, with a focus on how the chosen forum can significantly impact client risk and business outcomes.
John Olsen, Partner
Compare and contrast with law outside of the United States
- The state that likelihood of confusion is in in the European Union.
- The short history of ‘initial interest confusion’ in the United Kingdom.
- Where likelihood of confusion lingers – criteria for finding a likelihood of confusion and how they are applied (Fuchs v. OHIM).
- Impact of non-distinctive and weak elements of a mark in a finding of likelihood of confusion in European jurisdictions.
Who Should Attend:
- Trademark Lawyers
- IP Attorneys & Related Consultants
- Senior Corporate Management
- In-House Counsel (Public & Private)
- Trademark Professionals
- Senior Management
- Marketing and Advertising Professionals
- Other related/interested Professionals and Organizations
Brendan O'Rourke is a nationally recognized Trademark and Advertising litigator. He is a partner and co-chair of Proskauer's Litigation Department, as well as co-head of the False Advertising & Trademark Group. Brendan is a "go to" first-chair trial lawyer. He provides day-to-day trademark, false advertising, and Lanham Act counseling to Fortune 500 companies, sports & entertainment industry clients, as well as start-ups and entrepreneurs. His experience includes all phases of trademark and false advertising counseling and litigation, including complex issues involving consumer survey research and claim substantiation, and inter parties proceedings before the U.S. Trademark Trial and Appeal Board and the Federal Circuit. Brendan is recognized by Chambers USA for both his trademark and advertising litigation practice, and Institutional Investor Magazine's Benchmark Litigation survey recognized Brendan as one of New York State's "litigation stars." He has chaired INTA's Leadership Meeting, Advanced Forum on the Trademark Law and Revisions Act, INTA's third annual "Trademarks in Cyberspace" forum, and other prominent trademark law conferences. Brendan received his JD from Fordham University School of Law and his BA, cum laude, from Boston College.
Brendan O'Rourke is a nationally recognized Trademark and Advertising litigator. He is a partner and co-chair of Proskauer's Litigation Department, …
John Olsen is co-chair of the International Trademark and Copyright Protection Group. With more than 30 years' experience in Intellectual Property Law and in particular trade mark law, 25 of those years practicing in Europe, John advises clients on selection, acquisition, exploitation and enforcement of trade mark rights throughout the world. His hands-on approach is unique in helping clients to understand the inter-relationship of IP rights worldwide and to ensure that their trade mark enjoys as much exclusivity as possible. John advises individuals through to multi-national companies.
John has been at the top of The Legal 500 since the year 2000. He has been recommended as a leading IP Lawyer by UK Legal500 and Chambers & Partners UK. John has been involved in more than 1500 contested trade mark cases at the second level of appeal or higher.
John Olsen is co-chair of the International Trademark and Copyright Protection Group. With more than 30 years' experience in Intellectual …
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial and Appeal Board. James's insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA's 6,500 member companies.
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for …
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Proskauer is a global law firm recognized for its excellence both in practicing law and serving clients. Our roots go back to 1875, when we were founded in New York City. With 700+ lawyers in 13 offices and approximately 50 areas of practice, we have the capabilities, experience and creativity to guide our clients through their most important legal and business challenges.
Our nationally-recognized and interdisciplinary Intellectual Property practice has particular strength in trademarks, advertising, patents and copyrights. In 2014, we were one of a select group of firms named in the National Law Journal’s annual “IP Hot List.” We have also been named a “Go-To Law Firm®” for Intellectual Property, one of an “exclusive group of firms that deliver exceptional work for the FORTUNE 500®,” according to American Lawyer Media. We are ranked Tier 1 by Chambers and Partners for our Advertising Litigation practice.
About Locke Lord
ABOUT THE FIRM
Locke Lord is a full-service, international law firm that ranks among The American Lawyer’s top US law firms including a team of approximately 1,000 lawyers in 23 cities.
LOCKE LORD’S LONDON OFFICE
Locke Lord’s London office is a gateway for the Firm’s international work in the UK, Europe, Middle East and Asia. Having established a presence in London more than 25 years ago, Locke Lord opened a much larger, full-service office in early 2012 as part of the Firm’s strategic growth plan.
LOCKE LORD INTELLECTUAL PROPERTY PRACTICE
Clients count on Locke Lord for their intellectual property matters around the world. Locke Lord currently has over 125 attorneys and agents that practice in the area of intellectual property, many of whom are registered to practice before the Intellectual Property offices in the US and in the European Union.
About Collen IP
Collen IP is a leading intellectual property law firm and business consultancy that advises and represents the interests of corporations and legal associates worldwide. The firm is recognized for its successes in launching brands, advising on marketing strategies, and protecting valuable intellectual property rights. Collen IP’s litigation team represents clients in a wide array of contested intellectual property proceedings in U.S. District Court, the U.S. Trademark Trial and Appeal Board, and domain name dispute proceedings before arbitration tribunals worldwide. It is recognized each year for having one of the most extensive dockets for trademark opposition and cancellation proceedings before the TTAB , and its lawyers have been featured in various national legal and business publications.