Seminar  Seminar

Understanding Trademark Law in the Global Marketplace 2012


Why you should attend

Put aside the books and articles on trademark law, and listen up. This program is for you, whether you are just starting out, need a refresher, or have just learned how exciting a career in trademark law can be.

The 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 and will answer 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 our 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

  • Overview of key principles of trademark law and unfair competition, including terminology, the federal Lanham Act, and the underlying policies that support strong trademark protection
  • Practicalities, such as 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.

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

  • What different types of marks exist?
  • How do you protect a mark?
  • 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, Richard L. Kirkpatrick, Vijay K. Toke

10:30  Networking Break

10:45  Trademarks in Practice: Searching, Clearance and the Application Process in the United States

  • How do you clear a mark for use and registration?
  • The application process
  • Sample search report: Practice tips based on analysis of hypothetical mark

Richard L. Kirkpatrick

12:00  International Searching and Filing Strategies

  • Working with foreign associates to clear marks
  • An in-house counsel perspective - What marks should be registered?
  • Seeking protection in different jurisdictions
  • CTM and Madrid Protocol - alternatives to national filings

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
  • 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 
  • Practice Tips - What you need to know about the new disclosure rules
  • Advantages of TTAB’s Accelerated Case Resolution (ACR) procedure
  • UDRP as a means to resolve domain name disputes
  • Keyword advertising: who can do what?
  • Search engine/advertiser liability on the Internet
  • Analysis of social networking issues
  • Recent case law - Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., Nightingale Home Healthcare, Inc. v. Anodyne Therapy LLP, and many more
  • Hot topics outside the U.S., e.g. Interflora

Vineeta Gajwani, Beth M. Goldman

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's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state 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.

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.

Item# 35248
Location:  San Francisco, CA
We are sorry, but this program is no longer available for purchase online. For more information please call our Customer Service Department at (800) 260-4PLI.

Seminar attendance includes course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review.