HomeWebcastTrademark Infringement in the 2019 Landscape: What You Need to Know
Online CLE Trademark Infringement CLE

Trademark Infringement in the 2019 Landscape: What You Need to Know

Live Webcast Date: Wednesday, October 17, 2018 from 3:00 pm to 4:30 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE Trademark Infringement

Join us for this Knowledge Group Online CLE Trademark Infringement Webinar. Trademarks (brands) are everywhere. Their associated goodwill among consumers is a business asset that can actually increase in value and last forever. So a company has a strong economic interest in protecting, preserving, and adding to the accumulated goodwill in its trademarks. 

Federal trademark registration provides the exclusive right to use a trademark nationwide. But after you’ve obtained registration, what do you need to do to protect and preserve your trademark rights? What do you do when someone else uses a confusingly similar mark and attempts to trade off your goodwill? And what can you to do ensure you don’t infringe someone else’s trademark rights?

Join a panel of key thought leaders and professionals assembled by The Knowledge Group as they answer these questions with timely and forward-looking topics including:

Key topics include:

  • Trademark Infringement: Recent Trends and Developments
  • Notable Court Rulings
  • Best Practices to Avoid Infringement
  • Litigation Strategies
  • What Lies Ahead for 2019

Agenda

SEGMENT 1:
Paul E. ThomasSpecial Counsel
Pillsbury Winthrop Shaw Pittman LLP

  • Trademark infringement and the First Amendment in 2018
  • Gordon v. Drape Creative and its impact: Does the Honeybadger Care about the First Amendment?
  • The future of the Rogers v. Grimaldi test for the use of others’ trademarks in artistic works
  • Is there such a thing as a “trademarkcopyright”?

SEGMENT 2:
Barnard MadsenPartner
Fillmore Spencer LLC

Litigation strategies

  • Infringement screening
  • Enforcement: a phased approach
    • Likelihood of confusion factors
  • Statutory causes of action
  • Border protection to prevent importation of counterfeit goods

SEGMENT 3:
Paul C. Van SlykeSenior Counsel
Hoover Slovacek LLP

  • Notable Trademark Court Rulings
    • Elimination of disparagement or bring into contempt or disrepute as basis for denying registration- Matal v Tam (U.S. Sup. Ct 2017)
    • Redskins and Slants trademark cases- Sec 2(a) Immoral, deceptive or scandalous
      • Slants live performance by a band racial slur on persons of Asian descent
      • Redskins Baseball sought cancelation of the Redskins trademark-Supreme court Held the Redskins trademark facially unconstitutional
    • 20th Century Fox v. Empire (Empire mark for television distribution protected by the First Amendment)
    • Extraterritorial enforcement of trademarks
    • What causes trademarks to become generic-Elliot vs Google
      • Supreme court ruled that addition of .Com to Booking.com can result in secondary meaning
      • Google filed UDRP
      • Google.com did not cause the mark to become generic
    • Stone Creek, Inc v. Omnia Italian Design, Inc, 862 F.3d,1131 (Ninth Circuit 2017)
    • Presumption eBay vs. MercExchange, 547 US 388 (2006)
      • Adidas America Inc. v. Skechers USA Inc. 890 F. 3d 747 ( 9th Cir. 2018)
  • What Lies Ahead for 2019
    • Canadian legalization of trademark registrations without use anywhere in the world
      • Canadian IP Office is drafting regulations and revising its IT system
      • Trademark applications will be simplified by eliminating a date of first use
      • A Declaration of use will no longer be required
      • The term of registration will be reduced from 20 to 10 years
      • Canada will become a member of the Madrid Protocol
      • Third party letters of protest will be permitted
      • Filing fees and renewal fees will be substantially increased
      • The definition of a trademark will be greatly expanded to cover
  • A word, a personal name, a design, a letter, a numeral, a color, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign.
    • Trademark Trolls may find it easier to obtain registrations
    • Businesses are rushing to file trademark applications before the law takes effect
    • Businesses plan to keep applications pending until 2019 when they can be granted without use
    • Without a statement of use required;  no way to determine first use except in
    • Oppositions are going to increase
    • Brand owners should file trademark applications before the law goes into effect in 2019 to avoid higher fees and having to comply with the Nice Classification
    • Brand owners expected to create a wall of trademark filings around them
    • Influx of watch services are expected, causing a rush
    • Puts Canada in sync with the UU and most to the rest of the world
    • The more cluttered register, the more difficult it will be to provide clearance opinions
    • An application can be rejected if the Examiner finds the mark is not inherently distinctive.
    • All trademark owners should file trademark applications before Act goes into effect to avoid costly oppositions, increased fees and early renewals

Who Should Attend

  • Trademark Lawyers
  • Brand Owners
  • Brand Managers
  • In-house Counsel
  • Corporate Counsel
  • Litigation Officers
  • IP Attorneys & Consultants
  • Other Related/Interested Professionals

Online CLE Trademark Infringement

SEGMENT 1:
Paul E. ThomasSpecial Counsel
Pillsbury Winthrop Shaw Pittman LLP

  • Trademark infringement and the First Amendment in 2018
  • Gordon v. Drape Creative and its impact: Does the Honeybadger Care about the First Amendment?
  • The future of the Rogers v. Grimaldi test for the use of others’ trademarks in artistic works
  • Is there such a thing as a “trademarkcopyright”?

SEGMENT 2:
Barnard MadsenPartner
Fillmore Spencer LLC

Litigation strategies

  • Infringement screening
  • Enforcement: a phased approach
    • Likelihood of confusion factors
  • Statutory causes of action
  • Border protection to prevent importation of counterfeit goods

SEGMENT 3:
Paul C. Van SlykeSenior Counsel
Hoover Slovacek LLP

  • Notable Trademark Court Rulings
    • Elimination of disparagement or bring into contempt or disrepute as basis for denying registration- Matal v Tam (U.S. Sup. Ct 2017)
    • Redskins and Slants trademark cases- Sec 2(a) Immoral, deceptive or scandalous
      • Slants live performance by a band racial slur on persons of Asian descent
      • Redskins Baseball sought cancelation of the Redskins trademark-Supreme court Held the Redskins trademark facially unconstitutional
    • 20th Century Fox v. Empire (Empire mark for television distribution protected by the First Amendment)
    • Extraterritorial enforcement of trademarks
    • What causes trademarks to become generic-Elliot vs Google
      • Supreme court ruled that addition of .Com to Booking.com can result in secondary meaning
      • Google filed UDRP
      • Google.com did not cause the mark to become generic
    • Stone Creek, Inc v. Omnia Italian Design, Inc, 862 F.3d,1131 (Ninth Circuit 2017)
    • Presumption eBay vs. MercExchange, 547 US 388 (2006)
      • Adidas America Inc. v. Skechers USA Inc. 890 F. 3d 747 ( 9th Cir. 2018)
  • What Lies Ahead for 2019
    • Canadian legalization of trademark registrations without use anywhere in the world
      • Canadian IP Office is drafting regulations and revising its IT system
      • Trademark applications will be simplified by eliminating a date of first use
      • A Declaration of use will no longer be required
      • The term of registration will be reduced from 20 to 10 years
      • Canada will become a member of the Madrid Protocol
      • Third party letters of protest will be permitted
      • Filing fees and renewal fees will be substantially increased
      • The definition of a trademark will be greatly expanded to cover
  • A word, a personal name, a design, a letter, a numeral, a color, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture or the positioning of a sign.
    • Trademark Trolls may find it easier to obtain registrations
    • Businesses are rushing to file trademark applications before the law takes effect
    • Businesses plan to keep applications pending until 2019 when they can be granted without use
    • Without a statement of use required;  no way to determine first use except in
    • Oppositions are going to increase
    • Brand owners should file trademark applications before the law goes into effect in 2019 to avoid higher fees and having to comply with the Nice Classification
    • Brand owners expected to create a wall of trademark filings around them
    • Influx of watch services are expected, causing a rush
    • Puts Canada in sync with the UU and most to the rest of the world
    • The more cluttered register, the more difficult it will be to provide clearance opinions
    • An application can be rejected if the Examiner finds the mark is not inherently distinctive.
    • All trademark owners should file trademark applications before Act goes into effect to avoid costly oppositions, increased fees and early renewals

Online CLE Trademark Infringement

Online CLE Trademark Infringement

Paul C. Van SlykeSenior CounselHoover Slovacek LLP

Mr. Van Slyke has over 35 years of experience in trademark, copyright and unfair competition law and is consistently ranked one of the top attorneys in his field. He has managed worldwide trademark portfolios for major brand owners in the fields of fashion, transportation, retail products and food products, among others. He provides skilled advice on trademark selection and protection around the world.  He also is an experienced litigator and works with clients to develop strategies for obtaining desired business results in and out of litigation. He routinely handles trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.  He has filed and maintained large international portfolios of trademarks in countries around the world.

Online CLE Trademark Infringement

Barnard MadsenPartnerFillmore Spencer LLC

Barnard Madsen’s 32-year legal career includes service on a U.S. congressman’s staff, as an Air Force judge advocate, a Special Assistant U.S. attorney, and Assistant Attorney General. He has served as a prosecutor and criminal defense counsel, and full-time for four years as an appellate counsel, and has now served twenty years in private practice. His current practice focuses on intellectual property, employment law, commercial litigation, and appeals. He has been voted multiple times by other attorneys as one of Utah’s Legal Elite in intellectual property and business litigation.

Online CLE Trademark Infringement

Paul E. ThomasSpecial CounselPillsbury Winthrop Shaw Pittman LLP

Paul focuses on brand development and on copyright and trademark asset protection for clients in a broad range of industries, including film and TV, wine and spirits, book and media publishing, high technology, e-discovery and data management, beauty and cosmetics, advertising, and the automotive industry. Paul has extensive experience in building global trademark portfolios for clients, and in working with clients to monetize IP assets through strategic licensing. He also assists clients in the enforcement of their trademark and copyright assets.


Click Here to Read Additional Material

Online CLE Trademark Infringement

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in Intellectual Property Law

Course Code:
   147459

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    1.5 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

With more than 40 years of experience, our Texas law firm with offices in Houston and Austin is uniquely positioned to provide practical and creative solutions in a wide range of legal matters. Our attorneys and staff value relationships with clients, our community, and with one another. Ranging in experience from recent, top-level law school graduates to respected authorities in their fields, we share responsibility for success, which fosters a sense of purpose throughout our law firm. As a result, our law firm has accumulated significant insight that guides us in finding solutions for even the most complex legal issues in an array of practice areas including Intellectual Property and Technology.

Website: https://hooverslovacek.com/

For over twenty years, Fillmore Spencer has been providing branding advice and helping clients large and small register and enforce their trademarks. From business matters to family matters, from legal advice to litigation, Fillmore Spencer is a full-service law firm, with three locations in Utah. Fillmore Spencer: solving problems and seizing opportunities–for you, your family and your business.

Website: https://www.fslaw.com/

Pillsbury Winthrop Shaw Pittman LLP is a leading international law firm with offices around the world and an industry focus on energy & natural resources, financial services, real estate & construction and technology. Based in the world's major financial, technology and energy centers, Pillsbury counsels clients on global business, regulatory and litigation matters. Our intellectual property practice advises clients on developing successful and comprehensive IP strategies by protecting, managing, asserting, defending and leveraging their IP assets.

We field a team of more than 100 IP attorneys, plus technical consultants and patent agents from offices in key global financial and technology centers. Our IP team includes scientists and engineers with advanced degrees, including electrical and mechanical engineering, chemistry, biotechnology, physics and a number of other technical disciplines. Several team members are former U.S. Patent and Trademark Office examiners.

Website: https://pillsburylaw.com/

Mr. Van Slyke has over 35 years of experience in trademark, copyright and unfair competition law and is consistently ranked one of the top attorneys in his field. He has managed worldwide trademark portfolios for major brand owners in the fields of fashion, transportation, retail products and food products, among others. He provides skilled advice on trademark selection and protection around the world.  He also is an experienced litigator and works with clients to develop strategies for obtaining desired business results in and out of litigation. He routinely handles trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.  He has filed and maintained large international portfolios of trademarks in countries around the world.

Barnard Madsen’s 32-year legal career includes service on a U.S. congressman’s staff, as an Air Force judge advocate, a Special Assistant U.S. attorney, and Assistant Attorney General. He has served as a prosecutor and criminal defense counsel, and full-time for four years as an appellate counsel, and has now served twenty years in private practice. His current practice focuses on intellectual property, employment law, commercial litigation, and appeals. He has been voted multiple times by other attorneys as one of Utah’s Legal Elite in intellectual property and business litigation.

Paul focuses on brand development and on copyright and trademark asset protection for clients in a broad range of industries, including film and TV, wine and spirits, book and media publishing, high technology, e-discovery and data management, beauty and cosmetics, advertising, and the automotive industry. Paul has extensive experience in building global trademark portfolios for clients, and in working with clients to monetize IP assets through strategic licensing. He also assists clients in the enforcement of their trademark and copyright assets.

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