Transcripts

Intellectual Property

Trademark

Recorded on: Apr. 18, 2013

KIERAN DOYLE: We're into the home stretch. For the next hour, what we'll be hearing about is trademark prosecution. And I guess there's three perspectives, at least three perspectives on trademark prosecution. There's the brand-owners' perspective. There's the practitioners' perspective, and there's the perspective of the examining attorney, the PTO perspective. And our next two speakers will be able to shed light from all three perspectives. Tricia ...

Recorded on: May. 2, 2012

SHELDON H. KLEIN: Now you're in for real treat. You're going to hear from Allison Strickland about advanced US trademark prosecution practice. Allison is a partner at the firm of Fross Zelnick Lehrman & Zissu, where she's practiced exclusively in the area of trademarks and trademark prosecution for 16 years. She received her undergraduate degree from the University of Alabama, and her law degree from Columbia Law School, where she was a Harlan ...

Recorded on: Oct. 16, 2012

SPEAKER 1: OK, we're back. If you're looking for the patent session, you're in the right place. We've been laboring for the past year under a new statute and here to give us some observations about it is Jennifer Sklenar, who's a partner at Arnold and Porter, where she's in the intellectual property group. Jennifer? JENNIFER SKLENAR: Thank you. Well, it's great to be here and especially to see some familiar faces that I have not seen for a while. ...

Recorded on: Apr. 18, 2013

SPEAKER 1: Welcome back, everybody to our afternoon session of this advanced trademarks program. We are going to hear this afternoon from Jonathan Hudis, Vanessa Soman, and Joseph Drayton. Jonathan will address the topic of dual ownership of a trademark. And then Vanessa and Joe will address the topic of contributory infringement. I'll introduce all three of them now. Jonathan Hudis is a partner in the trademark and copyright practice group of Oblon, ...

Recorded on: Feb. 27, 2012

IRA J. LEVY: As they're making their way up to the platform allow me to start the introductions of our next two speakers. We're going to switch gears a little bit and move over to issues of copyright licensing and trademark licensing. And I believe we've settled out that going first is going to be Ruby Zefo, who's going to speak on advanced brand licensing. Ruby is the legal director of trademarks and brands and information technology at Intel Corporation. ...

Recorded on: May. 2, 2012

SHELDON H. KLEIN: The podium. Although Mike, were you planning to talk from the podium or from your seat? MICHAEL R. GRAY: The podium. SHELDON H. KLEIN: The podium. OK, we're back to the podium. It's my pleasure to introduce Mike Gray. Mike brings 26 years of experience representing companies and individuals in trial, arbitration, and other civil proceedings throughout the United States. He's a partner in Minneapolis office of Gray Plant Mooty. ...

Recorded on: Jul. 13, 2011

ANNE HAWKING: So my name is Anne Hawking, and I want to welcome you to the final segment of the day in Understanding Trademark Law in the Global Marketplace. A bit of housekeeping. If you would like to J Tokes slides, if you're in the audience give me your card or your contact information. Or if you're on the web, send me an email and I'll make sure you get them. The same is true for Ruby Zefo's PowerPoints. I said only half-jokingly that we saved ...

Recorded on: Apr. 18, 2013

SPEAKER 1: We're going to continue right here from the table since we've shifted. Our next speaker is Kristina Rosette. Kristina is of counsel in the Washington office of Covington & Burling. Her practice focuses on domain name, internet, and trademark matters. She has unique expertise in domain name issues, including drafting the ICANN policy recommendations for new gTLDs, developing and implementing trademark protections in new gTLDs, drafting ...

Recorded on: Apr. 18, 2013

KIERAN DOYLE: Cut that break tight. Thank you for all returning so quickly. Next up, we're going to hear about insurance coverage in IP cases. And we're going to hear from David Gauntlett. David is the principle of Gauntlett and Associates in Irvine, California. He represents policyholders in coverage cases involving IP. David litigates in federal and state courts all over the country. And he's always on the cutting edge of this issue, and often making ...

Recorded on: Jul. 11, 2012

SPEAKER 1: I am going to conclude now, because I have a real expert here, Christopher George, who is on the firing lines every day as managing counsel for trademark and brands for Intel Corporation. And in that capacity, he counsels his clients on trademark selection, where to file, and what marks to enforce against. He graduated from Emory School of Law, and we're very fortunate to have here today Chris George. And he's going to take over with the ...

Recorded on: Jul. 13, 2011

FEMALE PRESENTER: In here for your patience and I'm going to continue to stand between you and lunch, but it is worth your while because I have to tell you how lucky we are to have Ruby Zefo present on international filing strategies. Ruby is uniquely qualified, both as a business person and as a lawyer, to give this kind of perspective. Her undergraduate degree was a BS in Business Administration from Cal Berkeley, and after working for a while she ...

Recorded on: Apr. 13, 2012

JOSE A. ESTEVES: OK, we're going to go ahead and get started. During this hour we've got two presentations. We've got one by Sally Abel on trademark monetization. And Eddie Stone will be speaking on litigation financing. Sally is a partner at Fenwick & West LLP, a law firm specializing in technology and life science matters, as I'm sure you all know. And she is chair of the firm's trademark group. She focuses on international trademark and trade ...

Recorded on: May. 6, 2011

JOSE: OK, so for the next hour we've got two presentations. First up is David Ruder. David is vice president of corporate development at the defensive patent aggregation firm, RPX Corporation, which you've heard mentioned in the first two presentations. David's got a very interesting background in IP monetization. Prior to RPX, David had established Terrier IP Investments, a private investment firm focused on IP based investments. He Worked as co-founder ...

Recorded on: Apr. 18, 2013

SHELDON: Thanks, Joe, and good morning, everybody. Let me personally welcome you. Our next speaker is Dean Eyler. Dean is an Intellectual Property Commercial Litigator at Gray Plant Mooty in Minneapolis. He graduated in 1996 from the University of Iowa College of Law. He clerked for the Honorable Donald P. Lay, former chief judge of the US Court of Appeals for the Eighth Circuit. Dean shares Gray Plant Mooty's IP Litigation Team and has experience ...

Recorded on: Jul. 11, 2012

ANNE HIARING HOCKING: So let me get started. First of all, I know you had an excellent program yesterday on copyright law. And frankly, when you're considering trademark law issues, you need to consider them in the mix of IPR rights as one of the possibilities, one of the types of rights that you might either look to protecting on your client's behalf. Or also, if you're in enforcement mode, what kinds of actions do you have that could benefit your ...

Recorded on: Jul. 11, 2012

SPEAKER 1: Thank you. Well, as so often happens, the best, arguably, is saved for last. And we really have a terrific combination here in Beth Goldman, who is the head partner for Trademark at that little firm, Orrick, down the road, and the Vineeta Gajwani who's now the senior counsel for IP at Electronic Arts, which needs no introduction-- the game company, of course. And Beth and I have a lot in common. We've been teachers. But Beth actually got ...

Recorded on: May. 2, 2012

SHELDON: Without any further ado, I want to introduce our first speaker, Joe Welch. Joe is the managing partner at the Pattishall McAuliffe Firm in Chicago. He's represented clients in intellectual property litigation for more than 25 years. And he's taught at Northwestern Law School for more than 20 years. His publications include A Practitioners Guide, Trademarks and Unfair Competition Deskbook, and the law school coursebook, Trademarks and Unfair ...

Recorded on: Apr. 18, 2013

JOSEPH WELCH: Thank you, Karen. Good to see all of you here today. Some of you may remember from last year when I had to wear dark glasses. It's certainly much brighter in here this morning than I remember from last year. It's good to see all of you and I can see you a little better. Let's start out with one that made a big splash in the media. Apple gets to register its store design. You can see on the slide a partial description of what's in the ...

Recorded on: Jul. 13, 2011

ANNE HIARING HOCKING: So what I'm going to start off with is talking about how trademarks fit in to the spectrum of intellectual property law protection. Now that you've had a very workmanlike introduction to copyrights, you know that copyrights protect original works of authorship that are fixed in a tangible medium of expression. And you know that the author of a work is the owner of a copyright unless there are either an employer/employee situation, ...

Recorded on: Mar. 29, 2012

BRIAN W. BROKATE: I think at this point we're going to bring our next panel up. And the next panel is always one of my favorites, and that's the practical advice on stopping blatant infringements. And we're going to be addressed today by Katie McCarthy, by Andrea Colby, by Merillat Frost, and by Peter Welch. By now, all of you know Katie. So I'm going to spend just a couple minutes on some introductions as to our other speakers. Andrea Colby is the ...

Recorded on: Feb. 12, 2013

BRIAN W. BROKATE: It's my pleasure to introduce this next panel on Blatant Infringement. When you see them, what do you do with them? By now, everybody knows Katie McCarthy, one of the two prominent McCarthys in the trademark field. I understand there's another one who's Professor Tom. Is that right, Siegrun? But certainly Katie McCarthy has really made a tremendous name for herself in this area and in terms of IP enforcement as well. To Katie's ...

Recorded on: Mar. 4, 2013

LOTHAR DETERMANN: So we'll be switching from exhaustion of patent of exhausting other topics, that is copyright and trademark. We will start with copyrights today. No particular order, and then Beth Goldman will cover the trademark side of things. That's how we agreed to split it up for today. Beth is a partner in Orrick's San Francisco office. She's a member of the IP group there and focus on trademark, prosecution, litigation, licensing. She's ...

Recorded on: Mar. 22, 2011

RANDI W. SINGER: OK. For our next panel, we're going to talk about some special issues that are very much hot topics in advertising right now. So we're going to start out with Tsan Abrahamson. Her practice focuses on strategic counseling in the area of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution licensing, and other business transactions at Cobalt LLP. Tsan has an extensive ...

Recorded on: May. 2, 2012

KIERAN G. DOYLE: Good afternoon. Welcome back. I hope you all had a good lunch. We're going to start off our afternoon session with the topic, Trademark Due Diligence in Corporate Acquisitions. Our speaker will be Stephanie Foster. She's going to help us understand how to navigate the corporate transfer of intellectual property rights. Ms. Foster's a Vice President and Senior Attorney with Pearson Education, one of the world's leading and largest ...

Recorded on: Feb. 12, 2013

KATHLEEN E. MCCARTHY: Our next presentation is an update on trademark enforcement, and we will provide an update on three different topics-- dilution, the new gTLD program, and anti-counterfeiting. And we're lucky to have on our panel three very qualified speakers to address these topics. I'm going to introduce everybody now at the beginning so we can go smoothly from presentation to presentation. The first presentation is by Siegrun Kane, who is ...