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Trademark Administrators Conference
Program


 

 

 Sunday, October 14

 
10:00 am–6:30 pm 
Conference Registration and Information Desk Open
2:00 pm–2:15 pm
Welcome and Introductions
2:15 pm–3:30 pm 

GENERAL SESSION I       
  
Staying Outside the Penalty Box: USPTO on Trademark Bullying

There has been recent media focus on trademark bullying. The USPTO, after putting forth a request for comments, published a report to Congress in April 2011 on trademark litigation tactics. This study addressed common enforcement practices, making recommendations on how to be proactive in trademark enforcement and evaluate the reasonableness of enforcement efforts. Find out how you can effectively protect your marks and avoid appearances of bullying. This session will focus on disciplined, analytical and practical approaches you can implement now.

Topics include:

  • USPTO Report to Congress on Trademark Litigation Tactics.
  • Identifying and evaluating infringement issues.
  • Defining scope of protection.
  • Systems to help you monitor what action to take.
  • Cautionary tales and best practices in using cease and desist letters in the Internet world.
3:30 pm–3:45 pm 
Networking Break
3:45 pm–5:00 pm 

GENERAL SESSION II        
   
The Right Mechanics: Trademark Searching and Clearance in a Global Environment

Efficiency is vital. Precious time and resources are wasted when preliminary questions are ignored and appropriate searches are not conducted in advance. Learn cost-effective and business-minded guidelines and get practical tips from experienced practitioners on reviewing reports and spotting potential problems. Does it make sense to file for protection in a particular market where there is no use of the mark? How do you assure that all potential geographic markets have been identified?  

Topics include:

  • Effective preparation in creating tiered groups of countries and regions of focus.
  • Systems for review and analysis of relevant citations.
  • Practical tips for delivering effective and consistent availability opinions to clients.
5:00 pm–6:30 pm 

Welcome Reception with Exhibitors     
  
Join INTA and the conference exhibitors for a fun, themed reception to welcome you to the Queen City of Charlotte, North Carolina!
 

 Monday, October 15

 
8:00 am–6:30 pm
Conference Registration and Information Desk Open
8:00 am–9:00 am
Continental Breakfast and Exhibition Hall Open
9:00 am–9:15 am
Welcome and Daily Overview
9:15 am–10:30 am

CONCURRENT SESSIONS   

Session A

In the Driver’s Seat: Managing a “Best in Class” Global Portfolio

Rev up your portfolio and accelerate its potential for your company and clients. Experts share secrets of document drafting, recordals and portfolio transfers for global trademarks. Maintenance of Madrid and CTM registrations will be addressed. Learn about effective internal processes and structures that support seamless international communication. Know when to put the brakes on to ensure you don’t overcapitalize.

Topics include:

  • Strategies for time-saving and cost-effective global trademark portfolio management.
  • Madrid System protection for acquisitions.
  • Managing the nexus of trademark and other rights (Community design, copyright, trade dress) .
  • How to develop and maintain systems for documentation in your practice area
  • Developing and sharing best practices for international recordals and assignments.

Session B

Routine Maintenance: All American Portfolio Management

The focus of this session is recent developments in the USPTO.  You will have an opportunity to hear firsthand from USPTO representatives who will share best practices, helping you make the most of your U.S. trademark portfolio.

Topics include:

  • USPTO developments.
  • Suggestions on handling specimen issues.
  • How to manage bona fide use requirements.
10:30 am–11:00 am
Networking Break and Exhibition Hall Open
11:00 am–12:15 pm

CONCURRENT SESSIONS      

Session C

Up to Speed: Top Ten Trademark Cases and Recent Developments in U.S. Trademark Law That Impact You

Join this panel and learn about the most significant cases, laws, treaties and trademark-related developments that impact your daily work. This timely session will provide you with the opportunity to ask questions and discuss cases.



Session D
Fast and Furious: A Worldwide Update in Regional Issues in 75 Minutes

The BRICS emerging nations bring innovation, investment opportunities and domestic experience as major players in the global trademark world. Hear from distinguished speakers about international developments in the areas most relevant to your international trademark portfolio. In today’s global environment, emerging markets, new laws and changing technologies create novel challenges. Hear the latest trends and trademark law amendments that impact your global brands.

Topics include:

  • Developments in Europe, Latin America, Asia-Pacific and Africa.
  • Registry and market enforcement actions in major international jurisdictions.
  • Enforcement of IP rights in emerging markets.
12:15 pm–1:30 pm
Networking Luncheon
1:30 pm–2:45 pm 

CONCURRENT SESSIONS         

Session E
Accelerate Revenue with Better Licensing

Licensing can bring major benefits and additional sources of revenue for brand owners. It is essential that all aspects of the license be managed appropriately. This session will focus on strategy, due diligence and the basic elements that should be included in every license.

Topics include:

  • How to plan a license strategy.
  • Educated choices in licenses.
  • Quality control.
  • Derivative and secondary trademark ownership and prosecution.
  • Sublicenses.
  • Digital responsibilities and rights.

    
 
Session F

Proceed with Caution: Your Brand Teams with Social Media and the Internet

With the exponential explosion of social media and mobile marketing, IP professionals are focused more than ever on Internet and peer-to-peer marketing. This environment presents unlimited opportunities but also poses risks in unfair trade practices, trademark infringement, data collection, privacy, false advertising and ethics. This session will focus on helping you to be proactive in the development of policies to manage these risks.  

Topics include:

  • Recommendations and advice on general Internet enforcement.
  • Latest gTLD updates.
  • The Sunrise Process explained.
  • Social media use as part of trademark clearance.
  • Defining fair use and infringement.
  • Mobile application enforcement.
  • Effective management of third parties that create pages about your brands.
2:45 pm–3:30 pm
Networking Break and Exhibition Hall Open
3:30 pm–4:45 pm 

CONCURRENT SESSIONS     

Session G
Cruise Control: The Art of the Deal in Trademark Valuation, Mergers and Acquisitions

This session will focus on two areas where negotiations are paramount: valuation and acquisition. The panel will examine examples of global acquisitions in light of the behind-the-scenes work that you do collecting and managing data. Find out how to effectively communicate your knowledge and insights to ensure a clear connection between your preparatory work and final outcomes. The session will also cover tips on due diligence in preparation for divestitures. 

Topics include:

  • Examination of trademark valuation and issues associated with valuation.
  • What happens before, during and after a merger and acquisition and the role of the legal department.
  • How do you make your negotiation skills sharper to assist the process.
  • Acquiring and incorporating a trademark portfolio.
  • Madrid and CTM protection in acquisitions.
  • Domain name issues.



Session H     
 
Making Up Time: A Case Study of Brands and Social Media
Facebook®, Twitter®, YouTube®
  

To some, these are necessities of life. To others, they are a mystery. Join us on a journey of discovery to understand how these platforms can be used to support brand awareness. In this interactive session, you will work with a scenario to help you understand how to identify and manage both the good and the bad of using your brand on these platforms. How do you prepare for what can, and most likely will, go wrong? Learn firsthand from companies that have had practical, real-life issues with the good, the bad and the ugly of social media.

Topics include:

  • Why use social media?
  • Basic elements of a marketing strategy.
  • How to identify and manage issues before they become problems.
  • The future of social media as a marketing tool.
4:45 pm–5:00 pm
Overview and Adjournment
5:00 pm–6:30 pm 
Networking Reception with Exhibitors
 

 Tuesday, October 16

 
8:00 am–5:00 pm 
Conference Registration and Information Desk Open
8:00 am–9:00 am
Continental Breakfast and Exhibition Hall Open
9:00 am–9:15 am
Welcome and Daily Overview
9:15 am–10:30 am

GENERAL SESSION III 

Don’t Hold Up Traffic: What You Need to Know Now About Counterfeiting

Strategies to combat counterfeiting continue to improve. Until recently, enforcement has primarily been the concern of national law, with limited collaboration between countries to stop over-the- border counterfeiting. Hear insights from those directly involved in anticounterfeiting efforts. Learn about the current counterfeiting “hotspots.” Hear about the latest legal and practical strategies. Get up-to-date information and guidance on what factors are critical to a successful anticounterfeiting program.
     
Topics include:

  • Examples of effective enforcement programs.
  • Recordal systems useful in combating counterfeits.
  • How to manage in countries without customs recordal.
  • Strategies for combating Internet counterfeits.
10:30 am–11:00 am
Networking Break and Exhibition Hall Open
11:00 am–12:15 pm

General Session IV        

Don’t Be Passed by Your Competitors: Keeping Up With China Trademark Law and Practice

As the second-biggest economy in the world, China poses unique opportunities and is a dominant presence that inevitably will have a significant impact on your trademark work. Hear from a panel of trademark practitioners who have extensive experience working in China. Learn about the real challenges and current developments in the Trademark Office that impact your work in China.

Topics include:

  • Combating counterfeits effectively.
  • Registration of trademarks in Chinese characters.
  • Winning strategies on oppositions, invalidation and cancellations.
  • Recent changes to the Trademark Act.
  • Relationship with ASEAN (Association of Southeast Asian Nations).
12:15 pm–1:30 pm

GENERAL SESSION V   
             
Creating an Environment Geared for Success

Whether you have six months or twenty-six years of trademark experience, there are opportunities to strengthen your skills and develop professionally. How does your trademark group fit in with the rest of your organization? Explore practical takeaways that focus on results for budget and portfolio management. Hear about recent changes in processes and procedures that have made docketing more efficient. Link your learning to personal and organizational goals. Prepare to be inspired and empowered to make better professional decisions with knowledge and insights you can apply now.

Topics include:

  • Effective communication and collaboration between brand owners, outside counsel and other in-house departments.
  • Integration of paperless systems into various working scenarios.
  • Best practices, including practical and creative systems for record retention for big and small companies.
  • Managing costs and billing practices.
1:30pm–1:45pm
Final Conference Overview and Adjournment
 

 Continuing Legal Education

 
This conference qualifies as an educational program for CLE credits. For more information, please email cle@inta.org or stop by the Registration and Information Desk at the conference.
 

 Project Team

 

INTA would like to thank the Project Team for its excellent work in planning and presenting this conference.

Chairs

Mary DeLongis, Coty, Inc. (United States)
Peter Dernbach, Winkler Partners (Taiwan)

Project Team Members

James H. Johnson, Sutherland, Asbill & Brennan LLP (United States)
Aimee Mahan, Amazon.com, Inc. (United States)
Christopher Ott, Vorys, Sater, Seymour & Pease, LLP (United States)
Rhonda Steele, Mars Incorporated (Australia)
Patrick van de Vorst, Knijff Trademark Attorneys (Netherlands)
Marion Woods, Sutherland, Asbill & Brennan LLP (United States)


Trademark Administrators Committee Liaisons

Virginia Smith, Exxon Mobil Corporation (United States)
Michelle Renne, Campbell Soup Company (United States)


INTA Staff Liaisons

Charyle Clark, Senior Programs Developer
Stuart Ruff, Senior Planner, Meetings, Conventions & Events Strategy