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Extraterritorial Application of the Lanham Act and Foreign Trademark Laws; Gray Market Goods, What Are They and How Do You Stop Them at the Border?

Recorded on: May. 2, 2012
Running Time: 01:02:19

Running Time Segment Title Faculty Format
[01:18:47] Advanced Trademark Law Annual Review 2012: Overview of 2011-2012 Federal Court, TTAB and UDRP Decisions Joseph N. Welch, II ~ Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
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[00:59:19] Advanced Trademark Law Annual Review 2012: Advanced U.S. Trademark Prosecution Practice J. Allison Strickland ~ Fross Zelnick Lehrman & Zissu, PC
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[01:01:09] Advanced Trademark Law Annual Review 2012: What You Need to Know about the New TTAB Manual of Procedure Susan J. Hightower ~ Pirkey Barber LLP
Hon. Karen Kuhlke ~ Administrative Trademark Judge, Trademark Trial and Appeal Board
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[00:58:30] Advanced Trademark Law Annual Review 2012: Trademark Due Diligence in Corporate Acquisitions Stephanie M. Foster ~ Senior Counsel/Vice President - Legal Department, Pearson Education, Inc.
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[01:02:19] Advanced Trademark Law Annual Review 2012: Extraterritorial Application of the Lanham Act and Foreign Trademark Laws; Gray Market Goods, What Are They and How Do You Stop Them at the Border? Michael R. Gray ~ Gray Plant Mooty
Don M. Obert ~ Cowan, Liebowitz & Latman, P.C.
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[01:04:24] Advanced Trademark Law Annual Review 2012: Trademark Ethics Joseph M. Drayton ~ Cooley LLP
Vanessa J. Soman ~ Vice President and Associate General Counsel, Martha Stewart Living Omnimedia, Inc.
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Taken from the Web Program Advanced Trademark Law Annual Review 2012 Recorded May, 2012 in New York

Extraterritorial Application of the Lanham Act and Foreign Trademark Laws; Gray Market Goods, What Are They and How Do You Stop Them at the Border? [01:02:19]
  • What is the Vanity Fair test for jurisdiction? “Substantial effect”, “significant effect” or “some effect” in the U.S.?
  • How is the “effect” measured?
  • Is physical presence in the U.S. a requirement? Of the person or the marked goods?
  • Naked infringers vs. former franchisee/licensees: Should the test be different?
  • What are gray market goods?
  • Which gray market goods can pass through customs
  • How does U.S. Customs stop gray market goods importations and how can I help?
The purchase price of this segment includes the following article(s) from the Course Handbook available online:
  • The Extraterritorial Application of the Lanham Act: A Survey of Cases Applying the "Substantial Effect" Test
    Michael R. Gray
  • U.S. Customs Treatment of Gray Market Imports--In Black and White
    Don M. Obert
  • A Case Survey of "Substantial Effect" and the Extraterritorial Application of the Lanham Act (PowerPoint Slides)
    Michael R. Gray

Presentation Material


  • Extraterritorial Application of the Lanham Act and Foreign Trademark Laws; Gray Market Goods, What Are They and How Do You Stop Them at the Border?
    Michael R. Gray
  • Extraterritorial Application of the Lanham Act and Foreign Trademark Laws; Gray Market Goods, What Are They and How Do You Stop Them at the Border?
    Don M. Obert
Speaker(s)
Michael R. Gray ~ Gray Plant Mooty
Don M. Obert ~ Cowan, Liebowitz & Latman, P.C.

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