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Fundamentals of Trademark Law in the Global Marketplace 2013


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Why you should attend

Whether you are just starting out, need a refresher, or have just learned how exciting a career in trademark law can be, this program is for you. Forget all the trademark books and articles, and attend this program instead to learn all the fundamentals while exploring the cutting-edge issues that are changing the face of this practice area.

This program is built on a rock-solid foundation of trademark law experience. The speakers come with dozens of years in the field, and they will share that experience with you by answering your questions, both during their presentations and informally afterwards.

Faculty members have protected famous brand names in federal court, written articles and treatises on trademarks, and managed portfolios containing some of the nation’s best-known trademarks. They will cover the basics, ranging from federal registration to cease and desist letters, as well as the hottest topics that face the practice area today.

What you will learn

  • Key principles of trademark law and unfair competition: Terminology, the federal Lanham Act, and the underlying policies that support strong trademark protection
  • Practical tips: Searching and clearing marks and applying for federal registration
  • Registration issues, both domestic and international
  • Hot topics and a review of the latest significant cases
  • Domain name issues and UDRP
  • Trademark infringement actions, strategies, and remedies, as well as a review of litigation alternatives

Who should attend

The program is designed for anyone with a serious interest in creating or enhancing trademark know-how. It is designed as an introduction for attorneys with limited experience in trademark law and as a review and update for those who need to reacquaint themselves with intellectual property practice and procedure.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Morning Session:  9:00 a.m. - 1:00 p.m.

9:00 Introduction

Anne Hiaring Hocking

9:15 Key Principles of Trademark Law and Unfair Competition
  • Types of marks and how you protect them
  • Common law use and trademark protection
  • Use-based filings, registration, and enforcement
  • Likelihood of confusion
  • Unfair competition under Section 43(a)
  • Dilution under Section 43(c)
Anne Hiaring Hocking

10:30 Networking Break

10:45 Trademarks in Practice: Searching, Clearance and the Application Process in the United States
  • Clearing a mark for use and registration; screen searches and full searches
  • Scope and relevance of searches: Federal, state, and unregistered marks; corporate, business, and domain names
  • Sample search report: Practice tips based on analysis of hypothetical mark
  • Strategies and practical tips for searching and conveying results of searches to clients
  • Preparing applications to pass muster; use-based and intent-to-use applications
  • Dealing with Examiner refusals
  • Registration maintenance and renewals
Richard L. Kirkpatrick

12:00 International Searching and Filing Strategies
  • Seeking protection in different jurisdictions
  • CTM and Madrid Protocol - alternatives to national filings
  • Working with foreign counsel to clear marks
  • Strategies for in-house counsel - what marks should be registered?
Christopher E. George

1:00 Lunch

Afternoon Session:  2:00 p.m. - 5:00 p.m.

2:00 Trademark Infringement Primer 

  • How to identify, investigate, and evaluate trademark and trade dress infringement cases
  • Remedies in trademark litigation, including temporary and permanent injunctive relief
  • Summary judgment and other motion practice strategies
  • Presumption of irreparable harm
  • Practice tips and litigation tactics
  • Costs of litigation and damages
  • Costs of surveys
  • Choosing between TTAB and District Court
Vijay K. Toke

3:15 Networking Break

3:30 Litigation Alternatives and Hot Topics in the U.S. and Abroad

  • Opposition and cancellation proceedings (including practice tips on the disclosure rules)
  • UDRP as a means to resolve domain name disputes
  • Keyword advertising: Who can do what?
  • Secondary liability of search engines, advertisers and hosting services on the Internet
  • Domain names and trademarks on the Internet
  • Hot topics in social networking
  • Recent case law in the U.S., including trade dress issues, e.g., Christian Louboutin v. Yves Saint Laurent
  • Hot topics outside the U.S.
Beth M. Goldman, Vineeta Gajwani

5:00 Adjourn
Chairperson(s)
Anne Hiaring Hocking ~ Hiaring + Smith, LLP
Speaker(s)
Vineeta Gajwani ~ IP Legal Counsel, Electronic Arts Inc.
Christopher E. George ~ Managing Counsel for Trademarks and Brands, Intel Corporation
Beth M. Goldman ~ Orrick, Herrington & Sutcliffe LLP
Richard L. Kirkpatrick ~ Pillsbury Winthrop Shaw Pittman LLP
Vijay K. Toke ~ Hiaring + Smith, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.

San Francisco Hotel Accommodations

The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.

Due to high demand we recommend reserving hotel rooms as early as possible.

PLI programs qualify for credit in all states that require mandatory continuing legal education for attorneys. Please be sure to check with your state and the credit calculator to the right for details.


Please check the CLE Calculator above each product description for CLE information specific to your state.

Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys.  All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.

Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.

This is a webcast of the live San Francisco session.

Why you should attend

Whether you are just starting out, need a refresher, or have just learned how exciting a career in trademark law can be, this program is for you. Forget all the trademark books and articles, and attend this program instead to learn all the fundamentals while exploring the cutting-edge issues that are changing the face of this practice area.

This program is built on a rock-solid foundation of trademark law experience. The speakers come with dozens of years in the field, and they will share that experience with you by answering your questions, both during their presentations and informally afterwards.

Faculty members have protected famous brand names in federal court, written articles and treatises on trademarks, and managed portfolios containing some of the nation’s best-known trademarks. They will cover the basics, ranging from federal registration to cease and desist letters, as well as the hottest topics that face the practice area today.

What you will learn

  • Key principles of trademark law and unfair competition: Terminology, the federal Lanham Act, and the underlying policies that support strong trademark protection
  • Practical tips: Searching and clearing marks and applying for federal registration
  • Registration issues, both domestic and international
  • Hot topics and a review of the latest significant cases
  • Domain name issues and UDRP
  • Trademark infringement actions, strategies, and remedies, as well as a review of litigation alternatives

Who should attend

The program is designed for anyone with a serious interest in creating or enhancing trademark know-how. It is designed as an introduction for attorneys with limited experience in trademark law and as a review and update for those who need to reacquaint themselves with intellectual property practice and procedure.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

All times are P.D.T.

Morning Session:  9:00 a.m. - 1:00 p.m.  (P.D.T.)

9:00 Introduction

Anne Hiaring Hocking

9:15 Key Principles of Trademark Law and Unfair Competition
  • Types of marks and how you protect them
  • Common law use and trademark protection
  • Use-based filings, registration, and enforcement
  • Likelihood of confusion
  • Unfair competition under Section 43(a)
  • Dilution under Section 43(c)
Anne Hiaring Hocking

10:30 Networking Break

10:45 Trademarks in Practice: Searching, Clearance and the Application Process in the United States
  • Clearing a mark for use and registration; screen searches and full searches
  • Scope and relevance of searches: Federal, state, and unregistered marks; corporate, business, and domain names
  • Sample search report: Practice tips based on analysis of hypothetical mark
  • Strategies and practical tips for searching and conveying results of searches to clients
  • Preparing applications to pass muster; use-based and intent-to-use applications
  • Dealing with Examiner refusals
  • Registration maintenance and renewals
Richard L. Kirkpatrick

12:00 International Searching and Filing Strategies
  • Seeking protection in different jurisdictions
  • CTM and Madrid Protocol - alternatives to national filings
  • Working with foreign counsel to clear marks
  • Strategies for in-house counsel - what marks should be registered?
Christopher E. George

1:00 Lunch

Afternoon Session:  2:00 p.m. - 5:00 p.m.  (P.D.T.)

2:00 Trademark Infringement Primer
  • How to identify, investigate, and evaluate trademark and trade dress infringement cases
  • Remedies in trademark litigation, including temporary and permanent injunctive relief
  • Summary judgment and other motion practice strategies
  • Presumption of irreparable harm
  • Practice tips and litigation tactics
  • Costs of litigation and damages
  • Costs of surveys
  • Choosing between TTAB and District Court
Vijay K. Toke

3:15 Networking Break

3:30 Litigation Alternatives and Hot Topics in the U.S. and Abroad
  • Opposition and cancellation proceedings (including practice tips on the disclosure rules)
  • UDRP as a means to resolve domain name disputes
  • Keyword advertising: Who can do what?
  • Secondary liability of search engines, advertisers and hosting services on the Internet
  • Domain names and trademarks on the Internet
  • Hot topics in social networking
  • Recent case law in the U.S., including trade dress issues, e.g., Christian Louboutin v. Yves Saint Laurent
  • Hot topics outside the U.S.
Beth M. Goldman, Vineeta Gajwani

5:00 Adjourn
Chairperson(s)
Anne Hiaring Hocking ~ Hiaring + Smith, LLP
Speaker(s)
Vineeta Gajwani ~ IP Legal Counsel, Electronic Arts Inc.
Christopher E. George ~ Managing Counsel for Trademarks and Brands, Intel Corporation
Beth M. Goldman ~ Orrick, Herrington & Sutcliffe LLP
Richard L. Kirkpatrick ~ Pillsbury Winthrop Shaw Pittman LLP
Vijay K. Toke ~ Hiaring + Smith, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.

PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:  Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1, Iowa*, Kansas*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2, Ohio3, Oklahoma, Oregon*, Pennsylvania4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia5, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.

*PLI will apply for credit upon request.

Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.

Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
 

1Indiana: Considered a distance education course. There is a 6 credit limit per year.

2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.

5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.


Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Why you should attend

Whether you are just starting out, need a refresher, or have just learned how exciting a career in trademark law can be, this program is for you. Forget all the trademark books and articles, and attend this program instead to learn all the fundamentals while exploring the cutting-edge issues that are changing the face of this practice area.

This program is built on a rock-solid foundation of trademark law experience. The speakers come with dozens of years in the field, and they will share that experience with you by answering your questions, both during their presentations and informally afterwards.

Faculty members have protected famous brand names in federal court, written articles and treatises on trademarks, and managed portfolios containing some of the nation’s best-known trademarks. They will cover the basics, ranging from federal registration to cease and desist letters, as well as the hottest topics that face the practice area today.

What you will learn

  • Key principles of trademark law and unfair competition: Terminology, the federal Lanham Act, and the underlying policies that support strong trademark protection
  • Practical tips: Searching and clearing marks and applying for federal registration
  • Registration issues, both domestic and international
  • Hot topics and a review of the latest significant cases
  • Domain name issues and UDRP
  • Trademark infringement actions, strategies, and remedies, as well as a review of litigation alternatives

Who should attend

The program is designed for anyone with a serious interest in creating or enhancing trademark know-how. It is designed as an introduction for attorneys with limited experience in trademark law and as a review and update for those who need to reacquaint themselves with intellectual property practice and procedure.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Cancellations

All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Morning Session: 9:00 a.m. - 1:00 p.m.

9:00 Introduction

Lynn S. Fruchter

9:15 Key Principles of Trademark Law and Unfair Competition
  • Types of marks and how you protect them
  • Common law use and trademark protection
  • Use-based filings, registration, and enforcement
  • Likelihood of confusion
  • Unfair competition under Section 43(a)
  • Dilution under Section 43(c)
Adam D. Resnick

10:30 Networking Break

10:45 Trademarks in Practice: Searching, Clearance and the Application Process in the United States
  • Clearing a mark for use and registration; screen searches and full searches
  • Scope and relevance of searches: Federal, state, and unregistered marks; corporate, business, & domain names
  • Sample search report: Practice tips based on analysis of hypothetical mark
  • Strategies and practical tips for searching and conveying results of searches to clients
  • Preparing applications to pass muster; use-based and intent-to-use applications
  • Dealing with Examiner refusals
  • Registration maintenance and renewals
Ashly Iacullo Boesche

12:00 International Searching and Filing Strategies
  • Seeking protection in different jurisdictions
  • CTM and Madrid Protocol - alternatives to national filings
  • Working with foreign counsel to clear marks
  • Strategies for in-house counsel - what marks should be registered?
Clark W. Lackert

1:00 Lunch

Afternoon Session: 2:00 p.m. - 5:00 p.m.

2:00 Trademark Infringement Primer
  • How to identify, investigate, and evaluate trademark and trade dress infringement cases
  • Remedies in trademark litigation, including temporary and permanent injunctive relief
  • Summary judgment and other motion practice strategies
  • Presumption of irreparable harm
  • Practice tips and litigation tactics
  • Costs of litigation and damages
  • Costs of surveys
  • Choosing between TTAB and District Court
Vijay K. Toke

3:15 Networking Break

3:30 Litigation Alternatives and Hot Topics in the U.S. and Abroad
  • Opposition and cancellation proceedings (including practice tips on the disclosure rules)
  • UDRP as a means to resolve domain name disputes
  • Keyword advertising: Who can do what?
  • Secondary liability of search engines, advertisers and hosting services on the Internet
  • Domain names and trademarks on the Internet
  • Hot topics in social networking
  • Recent case law in the U.S., including trade dress issues, e.g., Christian Louboutin v. Yves Saint Laurent
  • Hot topics outside the U.S.
Richard S. Mandel

5:00 Adjourn
Chairperson(s)
Lynn S. Fruchter ~ Cowan, Liebowitz & Latman, P.C.
Speaker(s)
Ashly Iacullo Boesche ~ Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Clark W. Lackert ~ Dickstein Shapiro LLP
Richard S. Mandel ~ Cowan, Liebowitz & Latman, P.C.
Adam D. Resnick ~ Mosaic Legal Group, PLLC
Vijay K. Toke ~ Hiaring + Smith, LLP
Program Attorney(s)
Seema Lal Meehan ~ Program Attorney, Practising Law Institute
New York City Seminar Location

PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.

New York City Hotel Accommodations

The New York Hilton & Towers, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is 0495741. You can also make reservations online to access Practising Law Institute rates.

The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: res.ny@warwickhotels.com

Sheraton New York Times Square Hotel, 811 7th Avenue, New York, NY 10019, 1-800-325-3535 or (212) 581-1000. When calling, please mention Practising Law Institute and mention SET#311155. You may also book online.

PLI programs qualify for credit in all states that require mandatory continuing legal education for attorneys. Please be sure to check with your state and the credit calculator to the right for details.


Please check the CLE Calculator above each product description for CLE information specific to your state.

Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys.  All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.

Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.

Related Items

On-Demand  On-Demand Programs

Understanding Trademark Law in the Global Marketplace 2012 Jul. 24, 2012

Handbook  Course Handbook Archive

Fundamentals of Trademark Law in the Global Marketplace 2013 Anne Hiaring Hocking, Hiaring + Smith, LLP
Lynn S. Fruchter, Cowan, Liebowitz & Latman, P.C.
Jeffery A. Handelman, Brinks Hofer Gilson & Lione
 
Understanding Trademark Law in the Global Marketplace 2012 Anne Hiaring Hocking, Hiaring + Smith, LLP
Lynn S. Fruchter, Cowan, Liebowitz & Latman, P.C.
Jeffery A. Handelman, Brinks Hofer Gilson & Lione
 
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