Trademark Litigation: A 2013 Update
Trademark law has continued to become ever more complex. To add to the challenge, courts regularly revise trademark law affecting trademark holders along with the manner by which the law will be applied. Similarly, trademark related litigation is also on the rise. It is therefore essential for in-house counsel and attorneys responsible for trademark protection to be aware of the developments.
In this two-hour LIVE webcast, our panel of thought leaders will discuss key issues regarding trademark litigation. Speakers will cite and examine cases, provide valuable insights on trademark law updates and will offer tools and best practices to help you manage and protect your IP assets. A LIVE Q&A session is also included in this event.
Charles S. Baker, Partner,
Fulbright & Jaworski LLP
Protecting Your Brand’s Online Presence
- Focus in Building a Website: Creating a Unique “User Experience”
- Copyright v. Trade Dress
- A look at the importance of bringing all possible claims
Christopher K. Larus, Partner,
Robins, Kaplan, Miller & Ciresi LLP
Title: Untangling the Web of Online Trademark Infringement
- Understanding multi-layer schemes and uncovering the players involved
- Theories of induced and contributory infringement
- Joint and several liability
- Creative uses of the Anti-cybersquatting Protection Act and Digital Millennium Copyright Act
- Managing social media takedown policies
- The expanding use of social media platforms has created new avenues for infringement and often requires complex technical approaches to identifying infringers.
- Infringing uses include on-line scams, sales of counterfeit goods, and infringing user generated content
- In some cases the parties responsible are sophisticated and are part of a multi-layer same; in other cases the responsible parties are individual users who may be unaware of their infringement
- Stopping on-line trademark infringement increasingly requires both an understanding of computer forensic tools and legal strategies specifically targeted to uncover the complex business relationships underlying such infringement. This presentation will discuss both.
Jonathan D. Goins, Partner,
Gonzalez Saggio & Harlan LLP
As a result of the rapid proliferation of new media and technology, the traditional notions of trademark law has been reshaped, redefined and reformed. I will focus on how new media and technology impact company trademark and brands, help increase and exploit advertising and marketing revenue streams, and provide for greater (or lesser) online enforcement protection efforts. I will provide insight on trademark-related litigation issues involving ambush marketing in promotional sponsorships, the new gTLD program, and online-related Lanham Act claims such as keyword advertising and false advertising. I will attempt to simplify some of these emerging trends and provide practical, innovative ways to manage risks in this daily evolving area of trademark law.
Wendi E. Sloane, Partner,
Barack Ferrazzano Kirschbaum & Nagelberg LLP
- What to do when your client gets a cease and desist letter or complaint: Litigation Holds and determining if there is insurance coverage.
- Conducing pre-filing pilot surveys: A cost/benefitg analysis
- Trademark Dilution claims: When to bring them
- Calculating damages for trademark infringement claims
Michael J. McCue , Partner,
Lewis and Roca LLP
- Covenants not to sue in trademark cases moot trademark infringement claim. Nike v. Already, __ S. Ct. __ (Jan. 9, 2013)
- TTAB abandons substantial similarity test for dilution in favor of sufficient similarity. Nike v. Maher, 100 U.S.P.Q.2d 1018 (2011)
- Progressive encroachment on a trademark can bar defense of laches. Oriental Financial v. Cooperative De Ahorro Y Credito Oriental, 698 F.3d 9 (1st Cir. Oct. 2012)
- New decisions on trademark functionality. Secalt (9th Cir.) and Christian Louboutin (2d Cir.)
Who Should Attend:
- Private Counsel
- In-House Counsel
- General Counsel
- IP Attorneys and Consultants
- Senior Management
- Trademark Lawyers
- And Other Interested Professionals
With more than 25 years of experience, Charles has prosecuted and defended complex intellectual property litigation matters, including patent, trademark, trade dress and copyright infringement matters, as well as trade secret and unfair competition matters. Most recently he as litigated over half a dozen ITC investigations His experience includes significant cases involving major clients such as numerous FORTUNE 500 high-tech companies in the computer hardware and software segments, telecommunications, Internet, VoIP, data storage, and networking industries. Charles has an excellent track record of successful trials, having tried over 30 cases to verdict and has argued numerous cases on appeal. He has been ranked in Chambers USA since 2007 in field of IP litigation.
With more than 25 years of experience, Charles has prosecuted and defended complex intellectual property litigation matters, including patent, trademark, …
Chris Larus is Chair of the Minneapolis IP Litigation Group at Robins, Kaplan, Miller & Ciresi L.L.P. For more than 20 years, Chris has helped brand holders protect their intellectual property. He represents clients in trials throughout the country, and in both national and international arbitrations.
Chris, a graduate of the University of Minnesota Law School, has repeatedly been named a Super Lawyer (2004, 2006-2012) and been listed in The Best Lawyers in America (2010-2013 editions).
Chris Larus is Chair of the Minneapolis IP Litigation Group at Robins, Kaplan, Miller & Ciresi L.L.P. For more than …
Jonathan D. Goins is a partner with a major law firm practicing in the intellectual property transactional and litigation areas of trademarks and copyrights, with an industry focus in new media, technology, entertainment and sports.
Jonathan has represented Fortune 500 and mid-sized companies in litigation involving Lanham Act claims (trademark infringement, dilution, false advertising, false designation of origin and cybersquatting), misappropriation of trade secrets and copyright infringement, including most recently obtaining a $616,000 award on summary judgment on behalf of a high-end luxury handbag designer for claims of trademark infringement and counterfeiting. His trademark practice has covered all aspects of portfolio management (including global brand marketing strategy, search opinions, advertising clearance, prosecution and maintenance) and enforcement via franchise brand use compliance, cease and desist letters, negotiated licenses and settlements, and proceedings before the U.S. Trademark Trial & Appeal Board. His IP-related Internet practice has involved advising on digital media and video gaming content licenses, website IP notices and disclaimers, preparing DMCA take-down notices, investigating anonymous “gripe” postings, and resolving domain name/cybersquatting disputes via the ACPA and the World Intellectual Property Organization’s Arbitration & Mediation/UDRP Center. Jonathan is a “go-to” IP attorney for the entertainment and sports industry, having advised over two dozen high-profile professional sports management agencies, agents, athletes, best-selling authors, columnists, motivational speakers, tv commentators, and talent management and production companies in matters involving rights of privacy and publicity; Internet libel; trademark and copyright clearance and registration; non-compete and non-disclosure agreements; royalty and commission fee disputes; sports arbitrations; copyright assignments under works-for-hire agreements and as collateral in lending for record labels; endorsements and advertising sponsorship agreements; and negotiated tv and film production-related agreements. He has advised on a wide variety of transactions involving exclusivity, ownership and use of IP rights.
Jonathan D. Goins is a partner with a major law firm practicing in the intellectual property transactional and litigation areas …
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About Fulbright & Jaworski LLP
Founded in 1919, Fulbright & Jaworski L.L.P. is a leading full-service international law firm, with more than 850 lawyers in 17 locations in Austin, Beijing, Dallas, Denver, Dubai, Hong Kong, Houston, London, Los Angeles, Minneapolis, Munich, New York, Pittsburgh-Southpointe, Riyadh, San Antonio, St. Louis and Washington, D.C. Fulbright provides a full range of legal services to clients worldwide. The 2012 BTI survey of FORTUNE 1000 general counsel chose Fulbright to its “The BTI Client Service 30,” and Corporate Board Member magazine named Fulbright among the top 25 corporate law firms in the U.S. in its survey of board members of public companies.
About Robins, Kaplan, Miller & Ciresi LLP
Robins, Kaplan, Miller & Ciresi L.L.P.’s Trademark Infringement Litigation attorneys combine a sophisticated knowledge of trademark and advertising law with a national reputation as effective trial lawyers. The firm’s attorneys are experienced in trying cases in federal and state courts throughout the country, the ITC, and the Trademark Trial and Appeal Board.
The firm consistently represents clients – both plaintiffs and defendants –in high-profile cases at the cutting edge of trademark law in a wide variety of disputes, including trademarks and trade dress, trademark dilution, rights of publicity, and enforcement of co-existence and trademark licensing agreements. The focus on understanding each client’s business and unique needs allows the firm’s attorneys to identify creative “win-win” solutions to trademark and advertising disputes.
About Gonzalez Saggio & Harlan LLP
Gonzalez Saggio & Harlan LLP (www.gshllp.com) is a national minority-owned law firm with 15 offices located in Atlanta; Boca Raton, Fla.; Boston; Chicago; Cleveland; Indianapolis; Los Angeles; Milwaukee; Nashville, Tenn.; New York; Phoenix; Stamford, Conn.; Washington, D.C.; Wayne, N.J; and West Des Moines, Iowa. The firm represents midsized to Fortune 1000 Corporations, governmental entities, and individuals in the areas of litigation, employment, environmental, corporate and transactional, public finance, intellectual property & technology, energy, communications & utilities law, restaurant & hospitality, and education law. Gonzalez Saggio & Harlan practices law with a commitment to quality, diversity and to the communities it serves.
About Barack Ferrazzano Kirschbaum & Nagelberg LLP
Barack Ferrazzano Kirschbaum & Nagelberg LLP was founded in 1984, with the vision to create a new model that departed from the standard “mega-firm” approach and, instead, focused on delivering efficient, team-oriented services of the highest quality. Our founding partners – two highly respected law professors at Northwestern University and two former members of a prominent Chicago firm – were soon joined by like-minded colleagues and we have grown steadily ever since. The high levels of internal flexibility and extraordinary talent within our organization allow us to craft unusually practical and economical solutions to match client challenges and needs. This business-oriented approach has led many clients to engage Barack Ferrazzano to handle complex, time-sensitive, and high-stakes matters. Our attorneys leverage the environment we have created to become some of the finest lawyers available today.
About Lewis and Roca LLP
Quality legal representation matters. At Lewis and Roca, it is part of our proud heritage. That is why for over a half century, we have been a leading business law firm in the Southwest. Founded in 1950 we have almost 200 attorneys in offices in Phoenix, Tucson, Las Vegas, Albuquerque, Reno and Silicon Valley. The firm serves a diverse base of local, regional, national and international clients, including some of the world’s largest corporations. In today’s ever-shifting markets, established and emerging companies continue to look to us to provide the solid foundation on which their businesses are built; enhancing and enabling our clients’ success
Our strength is in the way we think. Successful outcomes depend on skillful preparation for challenges and opportunities. Across our extensive practice areas, we strive to develop sound legal strategies consistent with your objectives. We realize that this endeavor involves a thorough understanding of both the legal and business issues involved. Our attorneys are not just skillful, forward-thinking legal advocates; they are also experienced business professionals.