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Education Sessions
 
 

 Monday, May 7

 
GENERAL SESSIONS
10:30 am–11:45 am

CM01 Protection of Indigenous Rights: An Increased Need

Intermediate to Advanced Levels

INTA supports the international discussion on the recognition and protection of traditional knowledge (TK), folklore and traditional cultural expressions (TCE) as they co-exist with trademark rights around the globe.

This impressive panel will educate attendees about the growing need to develop an international framework to facilitate the protection of TK and TCE within indigenous communities, and the sometimes uneasy relationship which has historically existed between TK and trademark rights.

Moderator:

  • Keri Johnston, Johnston Wassenaar LLP (Canada)

Speakers:

  • Phil Fontaine, Former National Chief of the Assembly of First Nations in Canada (Canada)
  • Marion Heathcote, Davies Collison Cave (Australia)
  • Marcus Höpperger, World Intellectual Property Organization (WIPO) (Switzerland)
  • Gift Sibanda, African Regional Industrial Property Organization (ARIPO) (Zimbabwe)

CM02 Exploring the Outer Limits of Trademark Law
Intermediate Level

Previous INTA all-academic panels have explored legal constraints on trademark protection. This year’s panel of leading trademark scholars will explore recent trends in the expansion of trademark protection and discuss the future of trademark rights in various contexts. Issues will include materiality of trademarks in consumer decision-making, recognition of non-traditional marks and recent cases testing the limits of trademark protection.

Moderator:

  • Megan M. Carpenter, Texas Wesleyan School of Law (United States)

Speakers:

  • Robert Burrell, TC Beirne School of Law, University of Queensland (Australia)
  • Christine Haight Farley, American University, Washington College of Law (United States)
  • Rebecca L. Tushnet, Georgetown University Law Center (United States)

IM01 Industry Breakout: From the Frying Pan into the Fire: Navigating Emerging Issues in Cyberspace
Intermediate Level

Cutting-edge issues abound in the ever-complex world of cyberspace. From the use of social networking sites for abusive behavior to the expanding scope of the domain name system, companies and their advisors often find themselves navigating through a sea of novel issues. This session will discuss the legal and practical issues faced by practitioners in providing clients with innovative and effective solutions for dealing with the constantly-evolving landscape that is the virtual world. A panel of recognized experts will discuss issues such as:

  • How to deal with abusive conduct on social networks. 
  • How to draft effective terms of service to deal with abusive situations. 
  • The current status of the new gTLD/IDN rollout at ICANN.
  • Next steps in the gTLD application process.
  • Effective strategies for brand protection in an ever-expanding domain name system.

Moderator:

  • J.Scott Evans, Yahoo! Inc. (United States)

Speakers:

  • Stacey King, Richemont International Limited (United Kingdom) 
  • Ellen B. Shankman, Ellen Shankman & Associates (Israel)
  • Brian J. Winterfeldt, Steptoe & Johnson LLP (United States)


WM01 How to Deal with Restrictions on Advertising and Trademark Use in Regulated Industries
Intermediate to Advanced Levels
(Attendance is first come, first served and there is a limit of 100 attendees)

The level of restrictions on trademark usage as well as advertising and packaging of certain categories of goods has been increasing rapidly on a worldwide basis. The range of limitations, once commonly associated with the tobacco industry, is now much broader and affects other industries such as alcoholic beverages and food. While some of these restrictions may seem “light” at first sight, they likely will evolve into more severe forms of control, similar to the industry’s current proposals for tobacco plain packaging.

This panel will help trademark owners extract the most from their trademarks’ potential, discuss arguments grounded in IP and more.

Moderator:

  • Antonella Carminatti, BM&A – Barbosa, Müssnich & Aragão (Brazil)

Speakers:

  • Cristina A. Carvalho, Arent Fox (United States)
  • Fernanda Magalhães, Mars, Incorporated (United States)
  • Mikael Spangberg, Pernod Ricard (France)
12:00 pm–1:15 pm


CM20 Trolling the Trademark Waters

Beginner Level
    
Many trademark users are dealing with the harsh reality that “trolling” is not just for patent owners anymore.  This session will attempt to define what trademark trolling really means, while providing a historical perspective and suggested strategies to avoid and minimize the impact of trolling litigation. Speakers will also discuss if the new America Invents Act could help stop Trademark Trolls.

Moderator:

  • Mitch Milstein, Quiksilver, Inc. (United States)

Speakers:

  • Adam Cohen, Kane Kessler, PC (United States)
  • Mark A. Finkelstein, Jones Day (United States)
  • Lance G. Johnson, Roylance, Abrams, Berdo & Goodman, LLP (United States)

 


CM21 The Great Dilution Debate: Fifteen Years After Enactment, has the Federal Trademark Dilution Act Lived Up To Expectations? 
Advanced Level

The Federal Trademark Dilution Act (FTDA) went into effect 15 years ago, and was announced in 2006, for the purpose of strengthening the protection afforded famous trademarks. Enjoy a debate between two experienced speakers on whether the FTDA has been positive or negative for trademark owners as well as whether it has created judicial backlash. 

Moderator:

  • Stephen W. Feingold, Kilpatrick Townsend & Stockton LLP (United States)

Speakers:

  • Steven Weinberg, Holmes Weinberg, PC (United States)
  • Barton Beebe, NYU School of Law (United States) 

RM20 Regional Update: European Community (OHIM/ECJ)
Intermediate to Advanced Levels

In this regional update session, an experienced panel of speakers will compare the benefits of the Madrid Protocol and a Community Trade Mark filing, offer tips on choosing a filing strategy and how it will affect your enforcement efforts. Discover what happens to your registrations when a mark is used in a modified or modernized form and you come under attack for revocation based on non-use. What effect will that have on seniority claiming strategies? And find out if dropping national marks will harm your brand, along with other hot topics in this area.

Moderator:

  • Dawn Osborne, Palmer Biggs Legal (United Kingdom)

Speakers:

  • Fabrizio Jacobacci, Studio Legale Jacobacci Sterpi Francetti Regoli de Haas & Associati  (Italy)
  • F. Peter Mueller, Mueller Schupfner & Partner (Germany)
  • Petter Rindforth, Fenix Legal (Sweden)  

RM21 Regional Update: Latin America
Intermediate Level

Learn what use of a registered mark is needed to protect it from non-use cancellation in Latin America.  In addition, gain valuable information on how to maintain the enforceability of a trademark against third parties in jurisdictions where registrants are prevented from using the mark due to local or foreign legislation and regulatory constraints.  The speakers will also address the derivation of rights from an unregistered mark and the risks associated with unregistered trademark use. 

Moderator:

  • Marcela Bolland, Uhthoff, Gomez Vega & Uhthoff, S.C. (Mexico)

Speakers:

  • José Gutierrez, De Sola Pate & Brown (Venezuela)
  • Attilio José Ventura Gorini, Dannemann Siemsen Bigler & Ipanema Moreira (Brazil) 

WM20 Practical Tips to Strengthen the Relationship between In-House and External Counsel 
Beginner or Intermediate Level
(Attendance is first come, first served and there is a limit of 100 attendees)

In-house and external counsel sometimes operate in different but interrelated worlds.  In order to build successful partnerships that may advance the interests of their common clients, it is vitally important for both to understand each other and their respective roles and challenges. This informative workshop will explore the worlds of in-house and external counsel and provide tips and insights that will help strengthen the relationship between them. Featuring a panel of experienced in-house and external counsel, the workshop will look at such issues as:

  • The current economy and its effect on clients and their legal departments.
  • Understanding the role of in-house counsel within their company, as well as the role of external counsel.
  • When and for what purposes external counsel are used.
  • How to improve the billing/budgeting process.
  • Managing deadlines, expectations and risk.
  • The importance of effective communication and responsiveness in both directions.

Moderator:

  • Arnold Ceballos, Pain & Ceballos, LLP (Canada)

Speakers:

  • Barry Cohen, SorinRoyerCooper, LLC (United States)
  • Dolores Moro (United States)
  • Warren L. Zeserman, Hanesbrands Inc. (United States) 
3:45 pm–5:00 pm
 
CM50 Trademarks and Industrial Designs: A Balancing Act?
Intermediate Level

As the number of conflicts between trademarks and industrial designs increases, this panel of experienced practitioners will examine the trends, benefits and shortfalls in choosing protection for new shapes, the possibility of benefiting from cumulative protection under both trademark and design law, and critical issues associated with enforcing such rights. This panel will focus their discussion on the jurisdictions of Europe and Asia.

Moderator:
  • Alessandro Mannini, Bugnion S.p.A. (Italy)

Speakers:
  • Grégoire Bisson, WIPO (Switzerland)
  • Duncan Hinnells, Aston Martin (United Kingdom)
  • Loke-Khoon Tan, Baker & McKenzie (Hong Kong SAR, China) 


CM51 Doing the D.C. Shuffle: How Do The Trademark Attorney, Lobbying and Ethics Mix?
Intermediate Level

Over the past 15 years, we have seen the passage of the Digital Millennium Copyright Act and The Federal Trademark Dilution Act. Now, we are facing debates over the Anti-Counterfeiting Trade Agreement and the PROTECT IP Act. What considerations are taken into account when a trademark practitioner is asked to lobby for change? In-house counsel will discuss how organizations view promoting, supporting and lobbying for intellectual property legislation. Outside counsel will discuss levels of appropriate involvement in lobbying initiatives for clients and ethical considerations, including the impact on other clients who have conflicting interests. Do the considerations the counsel face change whether lobbying directly on behalf of the company or through a trade association or other industry coalitions?  Speakers will discuss the ethical considerations that attorneys face when tasked with lobbying for intellectual property reform.  

Moderator:

  • Mark Traphagan, Traphagen Law PLLC (United States)

Speakers:

  • Brett Kappel, Arent Fox LLP  (United States)
  • Lori Schulman, ASCD (United States)
  • Hope C. Todd, District of Columbia Bar (United States)  

IM50 Industry Breakout: Trademark Challenges and Opportunities in the Pharmaceutical World
Advanced Level

The pharmaceutical industry is bound by complex legislation embedded in health system budgeting and drug price reimbursement considerations. While at first sight this legislation seems to be unrelated to trademark law, its side effects become visible in the exercise of trademark rights by pharmaceutical companies. At the same time, the pharmaceutical industry is a dynamic generator of communication tools designed to facilitate access to healthcare information. Through use of various case studies, a diverse panel will discuss the challenges and opportunities represented by:

  • The impact of rules governing generic prescription, generic substitution, umbrella brands and other limitations, on the right of pharmaceutical companies to use trademarks as indicators of origin of pharmaceutical compounds as well as on the value of trademarks.
  • Pharmaceutical brand awareness in a globalized world with no global advertisement.
  • Creative uses of trademarks by the pharmaceutical industry and practical limitations (branding diagnostic tools and clinical trials).
  • The growing importance of branded educational tools and tools to increase disease awareness in the dialogue with healthcare professionals and patients.

Moderator:

  • Maria J. Fernandez Marques, Pfizer Gmbh (Germany)

Speakers:

  • Christopher Hanes, GlaxoSmithKline (United States)
  • Ulrich Reese, Clifford Chance (Germany) 

RM50 Regional Update: China, Japan, South Korea
Intermediate Level

When doing business in Asia, international companies are always advised to register local language equivalents of their home language marks for easy pronunciation and memorization by local consumers.  However, registrants are often confused by various calligraphic styles of the Asian characters, and many learn that even Chinese plain characters include a traditional form as well as a simplified form.  Learn whether a registration in plain characters can be used legitimately in calligraphic forms, and if a registered mark can be used in a modified form without facing the risk of being cancelled. Speakers from China, Japan and Korea will introduce the audience to the local statutory rules and provide valuable advice on how to suitably use marks in these countries in modified and modernized format.  

Moderator:

  • Christopher Shaowei, NTD Patent & Trademark Agency Ltd. (China)

Speakers:

  • Jinsang Jeong, Jeong & Park (South Korea)
  • Nami Togawa, Seiwa Patent & Law (Japan)

WM50 Traps for the Unwary in Transatlantic Trademark Practice
Intermediate to Advanced Levels
(Attendance is first come, first served and there is a limit of 100 attendees)

When trademark owners from Europe file applications in the United States, they encounter some unfamiliar rules and requirements, as do U.S. applicants filing Community Trade Mark applications, or national applications in European Union Member States. The result might be not merely confusion but the loss of valuable rights.

At this workshop, learn about:

  • Pre-application searches–How do they work for priority applications?
  • The requirement of good faith in the United Kingdom and the European Union–What has to be shown? What are the consequences if good faith is absent?
  • Intent to use applications and the statement of use requirement in the United States.
  • State trademarks and the federal system–the same as national trademarks and the Community system?
  • Infringement of an unregistered trademark, passing-off and unfair competition.
  • Specimens–what is required in the United States.? Why does Europe not ask for them?
  • What fees are payable and when? For what will lawyers charge?

Moderator:

  • Peter Groves, CJ Jones Solicitors LLP (United Kingdom)

Speakers:

  • Sarah Bailey, Simmons & Simmons (France)
  • Robert C. Cumbow, Graham & Dunn PC (United States)
  • Susannah Rolston, Gowling Lafleur Henderson LLP (Canada) 
 

 Tuesday, May 8

 
10:15 am–11:30 am
CONCURRENT SESSIONS 


CT02 Competitor’s Use of Keyword Advertising and Search Engine Optimization (SEO): Hey!  They’re Using My Trademarks!
    
Intermediate Level

In this session, speakers will discuss how to develop a keyword advertising case against a competitor. Should you sue the competitor only or the search engine as well? How do you establish likelihood of confusion in these cases? How do you make a likelihood of confusion survey that works? And what can you do about a competitor who is making otherwise fair use of your trademarks to increase organic search results placement. 

Moderator:

  • Brian Isaac, Smart & Biggar/Fetherstonhaugh (Canada)

Speaker:

  • Howard Hogan, Gibson, Dunn & Crutcher LLP (United States)
  • John Ramsey, Rosetta Stone Ltd. (United States)

RT01 Regional Update: Europe
Intermediate Level

Focusing on two important questions: (1) Is your mark registered but not used? (2) Is your mark not registered yet protected?, speakers will discuss aspects of nonuse and of use in modernized form, and will discuss how nonuse affects enforcement strategy. Discover what rights can be derived from nonregistered trademarks in Europe, which to a large extent is a first to file region. This regional update will also cover landmark developments in other areas of trademark law. 

Moderator:

  • Eric Bakker, Bakker & Verkuijl B.V. (Netherlands)

Speakers:

  • Ceylin Beyli, CBL Law Office (Turkey)
  • Marten Bouma, Merkenbureau Bouma B.V. (Netherlands)
  • Kaie Puur, Patent Agency RestMark (Estonia) 

RT02 Regional Update: Southeast Asia, Hong Kong, Australia and New Zealand
Intermediate Level

A hypothetical fact situation will be given to the audience that raises issues relating to trademark infringement, nonuse and the rights conferred by an unregistered trademark in the region. Acting the roles of an in-house counsel with the infringement situation on his hands, and outside counsel in some of the aforementioned countries and regions, the speakers will  give practical and cost-effective advice on the matter.

Moderator:

  • Ravi Ravindran, Ravindran Associates (Singapore)

Speakers:

  • Kenneth McInnes, Hodgkinson McInnes Patents (Australia)
  • Nettaya Warncke, Domnern Somgiat and Boonman Law Office Ltd. (Thailand)
  • Barry Joseph Yen, SKYS - So Keung Yip & Sin (Hong Kong SAR, China) 

WT01 Alternative Approaches to Combating Counterfeiters
Intermediate or Advanced Levels
(Attendance is first come, first served and there is a limit of 100 attendees)

Although the Internet is an amazing tool for global communication and commerce, it has also led to the increased sale of counterfeits. Billions of dollars in counterfeit goods are sold online each year. As the online sellers of counterfeits have become more savvy in evading efforts to stop their sales, brand owners have been forced to become creative and adopt new approaches to combat this ever-growing problem. This panel will discuss new ideas and efforts to stop the sale of counterfeits online, including: 

  • New approaches and theories of liability with case law updates.
  • Current governmental initiatives and resources to assist in the fight against online-counterfeiters.
  • Collaboration with payment service providers to shut off payment sources to counterfeit websites.

Moderator:

  • Jennifer Hamilton, Major League Baseball (United States)

Speakers:

  • Scott Gelin, Greenberg Traurig, LLP (United States)
  • Rana Saoud, The National Intellectual Property Rights Coordination Center (IPR Center) (United States)
  • Valérie Sonnier, Louis Vuitton/LVMH Fashion Group
11:45 am–1:00 pm


CT20 Reverse Confusion: Setting a Higher Standard for the Likelihood of Confusion Test

Intermediate Level

Reverse confusion occurs when consumers doing business with a small, less powerful senior user of a trademark believe that they are actually dealing with a larger, more powerful junior user of that trademark. This panel will discuss several relevant issues including whether the trademark rights of the senior user can be diminished in view of the commercial success of the junior user’s mark. What, if anything, will be the possible effects on due diligence in the future?

This session will emphasize for large corporations the need to conduct proper due diligence when launching a new mark or an already successful brand in a new market, and cover the consequences of discovering a smaller senior user after the launch. 

Moderator:

  • Gustavo S. Leonardos, Luiz Leonardos & Associates (Brazil)

Speakers:

  • Robert A. MacDonald, Gowling Lafleur Henderson LLP (Canada)
  • Rita M. Odin, The Estee Lauder Companies Inc. (United States)
  • Roger E. Schechter, George Washington University (United States) 

CT21 The Living Brand: Borderless Extensions Limited Only by the Imagination
Intermediate Level

The leveraging of brand power is an important aspect of brand management and, if done properly, can lead to increased profits or can even be the saving grace of a company.  One way a number of brand owners have leveraged such power, particularly during economically difficult times, is through successful brand extensions.  Of course, there have also been a number of brand extension bloopers, which can end up being painfully humorous in hindsight.

In this session we will discuss what works and what doesn’t, what goes into the brand extension decision making process, and best practices.

Moderator:

  • Mona Lee, Hanol Law Offices (South Korea)

Speakers:

  • John Joseph Cheek, Caterpillar Inc. (United States)
  • Michelle Landy, FremantleMedia Enterprises (Americas) (United States)
  • Alison Tan, The Procter & Gamble Company (United States)  

CT22 The Intersection of Trademark and Publicity Rights with U.S. First Amendment Free Speech Rights
Intermediate Level

Brands and celebrities are icons of our culture and are often featured, prominently or in a fleeting fashion, in songs, television programs, films and video games. Brands and people can be the subject of social commentary and narrative, elements of comedy, targets of parody or simply background realism. These uses in expressive works, and efforts to prevent them, frequently implicate the right to free speech under the First Amendment of the U.S. Constitution. Our experienced panel will discuss the intersection of First Amendment rights with the use of brands, names and likenesses in the titles or content of entertainment properties.

Moderators:

  • Monique Cheng Joe, NBCUniversal Media, LLC (United States)

Speakers:

  • Catherine Bridge, The Walt Disney Company (United States)
  • David W. Grace, Loeb & Loeb LLP (United States)

 


RT20 Regional Update: India, Pakistan, Middle East
Intermediate Level

The panel will discuss regional protection strategies and help attendees decide if registration is always necessary. Acquire tips and practical advice on how unregistered trademarks can be best protected and enforced in the region and how a trademark owner’s protection strategy can be affected by unregistered rights. The speakers will address these issues and will analyze the evolution of the protection regime for unregistered marks in India, Pakistan and the Middle East through the lens of statutory provisions, policy and jurisprudence. A special guest, a sitting Judge, Delhi High Court, will also shed light on some IP litigation trends in India along with filing and disposal statistics.

Moderator:

  • Shwetasree Majumder, Fidus Law Chambers (India)

Speakers:

  • Sara Holder, Rouse (United Arab Emirates)
  • Sana Shaikh, Vellani & Vellani (Pakistan) 
  • Invited Guest: Justice G S  Sistani, Sitting Judge, Delhi High Court (India)

WT20 The Evolving Nature of Ambush Marketing
Intermediate or Advanced Level
(Attendance is first come, first served and there is a limit of 100 attendees)

Join this panel of experienced lawyers in a discussion about ambush marketing and how it is evolving in today’s fast-paced commercial environment.  Find out about new approaches that brand owners are taking to ambush their competitors and, conversely, how other brand owners are trying to prevent third parties from ambushing their rights.  

Speakers will discuss:

  • The development of ambush marketing from traditional to new forms.
  • The effect of new media (Twitter, Facebook, blogs) on ambush marketing
  • The best ways to approach ambush marketing 
  • Special considerations that must be taken into account when responding to ambush marketing

Moderator:

  • Kelly Maser, United States Olympic Committee (United States)

Speakers:

  • Scott A. Bearby, The National Collegiate Athletic Association (United States)
  • Bruce P. Keller, Debevoise & Plimpton LLP (United States)
  • Dolores DiBella, National Football League (United States)
3:30 pm–4:45 pm

CT50 Social Media–An Ever Changing, Challenging and Competitive World: How to Provide Legal and Business Advice to Clients
Intermediate Level

Join this panel for a discussion between in-house and outside counsel as they work through the business and legal issues that come with a global consumer products company launching a new brand employing the social media tools of today. Speakers will delve into the legal, regulatory and business challenges that arise in creating hype when promoting a new product, running a contest and interacting with its consumers on the Internet and through personal mobile devices, including using channels like Facebook, Twitter, Four Square, Groupon, creating unique apps, blogs and new, push-direct marketing technologies.

Moderator:

  • Scott E. Thompson, Greenberg Traurig, LLP (United States)

Speakers:

  • Elliot R. Basner, Diageo North America, Inc. (United States)
  • Linda A. Goldstein, Manatt, Phelps & Phillips LLP (United States)
  • Lo-Mae Lai, American Media Inc. (United States)  

CT51 Copyright Law for Trademark Lawyers: Copyrights in Logos, Packaging and Product Designs
Intermediate Level

Copyright law is not just for artists and media companies. Savvy trademark owners in all industries understand that copyright law can enhance their ability to protect many brand identifiers, including logos, packaging and product designs. In this panel discussion, experienced speakers will address what types of trademarks and trade dress may qualify for copyright protection in the United States, the many benefits of copyright law as an adjunct to trademark protection, and traps for unwary trademark owners who fail to take copyright law into account. 

Moderator:

  • Lisa Pearson, Kilpatrick Townsend & Stockton LLP (United States)

Speakers:

  • John Ashley, U.S. Copyright Office (United States)
  • Elisheva M. Jasie, Coty Inc. (United States)
  • Jeanene L. Jobst, Turner Broadcasting System, Inc. (United States)  

CT52 Appellations d’Origine: Made in Europe
Advanced Level

The protection of appellations of origin, recently referred to generically as protection of Geographical Indications (GI’s), has its origin in Europe. Traditionally, such protection was granted to agricultural products and foodstuffs – wine, cheese, ham, olives, fruit, etc., but is extending to mineral water, beer and other alcoholic beverages including spirits (Scotch Whisky, Cognac, Grappa, Ouzo). GI protection is of relevance as well to industrial goods.
 
With GI protection in Europe playing a prominent role in sui generis legislation as well as the case law of the European Court of Justice, GI protection having become part of the TRIPS Agreement, and with negotiations in the current Doha round again focusing on GI protection, this session will focus on the European perspective of GI protection.
 
Moderator:

  • Jaroslaw Kulikowski, Kulikowska & Kulikowski (Poland)

Speakers:

  • Paola Gelato, Studio Legale Jacobacci Sterpi Francetti Regoli de Haas & Associati (Italy)  
  • Anders Jessen, European Commission, Directorate General for Trade (Belgium)
  • Alexander von Mühlendahl, Bardehle Pagenberg (Germany)
 

IT50 Industry Breakout: Consumer Products—Don’t Mess With Our Family (Of Marks)!
Intermediate Level

As brand owners seek to clear, protect, market and enforce marks, one potential strategy is to develop a family of marks that share a common element.  A family of marks offers brand owners several practical and legal advantages, but to obtain those advantages proper use, protection, and enforcement of the family is essential.  Our experienced panel will help you understand the requirements, benefits and challenges of owning a family of marks.  The discussion will include issues such as:

  • Defining what constitutes a family of marks.
  • Reasons for building a family of marks and the advantages. 
  • Pitfalls to avoid when developing and protecting a family of marks.
  • Using a family of marks to effectively dissuade others from infringement.
  • Enforcing a family of marks against a third party infringer.
  • Current case law relating to the family of marks doctrine.

 
Moderator:

  • William J. Morris III, Under Armour Inc. (United States)

Speakers:

  • Christopher Kelly, Wiley Rein LLP (United States)
  • Sara Vanderhoff, adidas International, Inc. (United States)
  • Patricia Werner, Bryan Cave LLP (United States)
 

 Wednesday, May 9

 
CONCURRENT SESSIONS
10:15 am–11:30 am

CW01  Annual Review of U.S. Federal Case Law and TTAB Developments
Advanced Level

Plan to attend this INTA annual favorite and hear a concise analysis of recent, major decisions rendered by the U.S. courts and the Trademark Trial and Appeal Board (TTAB) as reported in Vol. 102, No. 1 of The Trademark Reporter®.
   
Speakers:

  • Theodore H. Davis, Kilpatrick Townsend & Stockton LLP (United States)
  • John L. Welch, Lando & Anastasi, LLP (United States)

RW01 Regional Update: Africa
Intermediate Level

Panelists will discuss strategies and pitfalls for using an international system and the regional trademark registration systems in Africa, Organisation Africaine de la Propriété Intellectuelle (OAPI) and African Regional Intellectual Property Organization (ARIPO) to protect your trademarks. Many African countries are members of the Madrid System. The panel will also cover current hot topics in Africa.

Moderator:

  • Marco Van de Merwe, Spoor & Fisher (South Africa)

Speakers:

  • Ephraim N. Ngwafor, Ngwafor & Partners (Cameroon)
  • Michael F. Sevant, Spoor & Fisher Jersey (Channel Islands)
  • Gift Sibanda, African Regional Industrial Property Organization (ARIPO) (Zimbabwe)
 11:45 am–1:00 pm

CW20 Trademarks 2.0: The Impending Rebirth of the Intangible Asset
Advanced Level

Paradigm shift: now it's political. Recent developments regarding ACTA and SOPA/PIPA show that intellectual property has become a hot political topic. As a result of being in the spotlight, intellectual property specialists have been stripped of their monopoly of interpreting the meaning of IP law and their credibility in the public dialogue has eroded. Activist movements which have gained creditability, have been pointing to some of these same issues for some time and have included intellectual property rights among the social systems they consider ripe for rethinking. After initial denial and a prolonged period of reluctance, the IP community is now acknowledging that they need to shed their reluctance in tackling these complex underlying issues.

This session will be devoted to discussing these changes in the IP world including the issues which anti-IP sentiment of yesterday and today have been singling out, and the issues considered important by IP experts trying to look ahead of those who harbor such sentiments. Panelists will also discuss the topic of over-protection and under-protection, and use of trademarks being presented based on empirical research of the IP system users perspective.

Moderator:

  • Mladen Vukmir, Vukmir & Associates (Croatia)

Speakers:

  • Anne Gundelfinger, Law Office of Anne Gundelfinger (United States)
  • Stacey King, Richemont International Limited (United Kingdom)
  • Jessica Silbey, Suffolk University Law School (United States)

CW21 All Dressed Up, But Where to Go? The Challenges of Proving and Defending Trade Dress Claims
Intermediate Level

Trade dress protects the design and packaging of products and retail selling environments, but proving that a design is entitled to trade dress protection can be challenging. This session will address strategies for establishing and enforcing protection for trade dress in the United States, looking at the options and venues available to brand owners and exploring such issues as:

  • Standards for establishing distinctiveness and non-functionality.
  • The pros and cons of seeking registration or waiting to prove trade dress protection in court when an infringement arises.
  • Whether to seek design patent protection or not.

Moderator:

  • Carla J. Vrsansky, Buchanan Ingersoll & Rooney P.C. (United States)

Speakers:

  • Glenn Gundersen, Dechert LLP (United States)
  • Mark Janis, Indiana University Maurer School of Law (United States) 

CW22 Registration And Protection of Nontraditional Trademarks in China, Europe and the United States
Intermediate Level

In 2001, China introduced to its laws the possibility to register some nontraditional trademarks (such as three dimensional trademarks, colors or combinations of colors, etc.) in the context of its accession to the World Trade Organization. These concepts were still quite new for Chinese trademark examiners, and it took some time for the trademark examiners to adapt. Europe and the United States have a longer experience in this regard. In this session, two senior in-house counsel and two experienced outside counsel from the United Kingdom, China, the United States and Spain will share their expertise on their specific registration practices, illustrate the different results obtained in these parts of the world when seeking protection for these kinds of trademarks and explore the best strategy for trademark owners.

Moderator:

  • Paul Ranjard, Wan Hui Da Intellectual Property Agency (China)

Speakers:

  • Michael L. Gannon, 3M Company (United States)
  • Joao Miranda de Sousa, J&A Garrigues, S.L.P. (Spain)
  • Shelley Watson, Chivas Brothers Limited (United Kingdom)

IW20 Industry Breakout: Game Plan 2011—Brand Protection and the Business of Sports
Intermediate Level

As the business of sports continues to grow, the complexities of maintaining brand integrity necessarily increase as well. Proper management, growth and enforcement of brands, a core concern for global rights holders, is of particular significance for global event franchises, teams, leagues, and brand owners seeking to leverage sports as a platform for their marks. This session will address the varied challenges attendant to sports industry representation, particularly those of major sporting events, and will include:

  • IP protections in event bidding processes and hosting agreements.
  • Sponsorship deals and valuation.
  • Negotiation strategies in dealing with the IOC, FIFA, and USOC.

Moderator:

  • Frank Ryan, DLA Piper LLP (United States)

Speaker:

  • Jim Scherr, 776 Original Marketing (United States)