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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: Enforcement Practices and 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 worldwide 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.

Moderator:
Aimee Mahan, Amazon.com, Inc. (United States)

Speakers:
Nick Bolter, Edwards Wildman Palmer UK LLP (United Kingdom)
Jim Struthers, Richard Law Group (United States)

 

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
 
The options for conducting trademark searches in the U.S. and abroad have never been more varied.  Two experience practitioners will open the toolkit and explain how to select and make efficient use of the full range of resources available for efficient and reliable searches. Topics include:
  • Cost-effective use of U.S. and international databases
  • Formulating effective search queries
  • Evaluating and investigating third party marks
  • Efficient use of foreign counsel
  • The search opinion as blueprint for trademark prosecution

Moderator:
Patrick Van de Vorst, Knijff Trademark Attorneys (Netherlands)

Speakers:
Glenn Gundersen, Dechert LLP (United States)
Clark Lackert, Dickstein Shapiro LLP (United States)

 

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” Multi-national Portfolio

Rev up your portfolio and accelerate the potential for your company and clients. Experts share secrets of effective portfolio management as well as document drafting, recordals and portfolio transfers for  multi-national 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.
  • Maximising efficiencies of regimes such as Madrid  (amongst others) for acquisitions and divestitures.
  • 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.

Moderator:
Rhonda Steele, Mars Incorporated (Australia)

Speakers:
Daretia Austin, Time Warner Inc. (United States)
Nick Bolter, Edwards Wildman Palmer UK LLP (United Kingdom)
Kristen Koines, Arent Fox LLP (United States)


Session B

Routine Maintenance: All American Portfolio Management

The focus of this session is on resolving issues that arise during the trademark lifecycle from mark development and selection to registration maintenance through three perspectives: in house, outside counsel, and the USPTO. You will hear firsthand from USPTO representatives who will share recent developments at the Office, helping you make the most of your U.S. trademark portfolio.

Topics include:

  • USPTO developments, both technical and substantive.
  • Suggestions on handling specimen issues.
  • How to manage bona fide use requirements.
  • Proposals for resolving identification issues

Moderator:
Christopher Ott, Vorys, Sater, Seymour & Pease, LLP (United States)

Speaker:
Mary Denison, USPTO (United States)
Craig Morris, USPTO (United States)
Virginia Smith, Exxon Mobil Corporation (United States)

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.

Moderators:
James H. Johnson, Sutherland, Asbill & Brennan LLP (United States)

Speakers:
Linda McLeod, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. (United States)
Maury Tepper, Tepper & Eyster, PLLC (United States)


Session D

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

In today’s global environment, emerging markets, new laws and changing technologies create novel challenges. Hear from distinguished speakers about international developments in Europe/Russia/CIS, Latin America and Asia-Pacific and how they affect your international trademark portfolio. Learn of some of the latest trends and trademark law developments that may impact your global brands and understand better how the laws in these countries differ from the United States. Get practical tips on how to manage and drive value from your brands on a regional basis.
 
Topics include:

  • Overview of prosecution developments in Europe, Latin America and Asia-Pacific.
  • Tips on protection and enforcement of trademark rights on a regional basis.

Moderator:
Marion Woods, Sutherland, Asbill & Brennan LLP (United States)

Speakers:
Wendy Collie, Mars, Incorporated (Australia)
Imogen Fowler, Hogan Lovells (Alicante) SL y Cia. (Spain)
Nancy Quintana, Diageo Latin America & Caribbean (United States)

12:15 pm–1:30 pm
Networking Luncheon

Tandem Racing: The Benefits of INTA Committee Involvement

During lunch, members of INTA’s Leadership Development Committee pit crew will quickly change your tires, fuel you up and present the benefits associated with active committee involvement within INTA. Gain insight and understand best practices on acquiring the tools that you will need to become an effective crew member within INTA, the IP community, and your professional environment.

Speakers:
Rudy Gaines, Marksmen (United States)
Purvi Patel, Haynes and Boone, LLP (United States)

1:30 pm–2:45 pm 

CONCURRENT SESSIONS         

Session E

Turbo-Charge Your Licensing Program

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.
  • Digital responsibilities and rights.

Moderator:
Mary DeLongis, Coty Inc. (United States)

Speakers:
Pamela Weinstock, Kenneth Cole Productions, Inc. (United States)
Dee Ann Weldon-Wilson, Exxon Mobil Corporation (United States)
Stu Seltzer, Seltzer Licensing Group (United States)
    
 
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.

Moderator:
Christopher Ott, Vorys, Sater, Seymour & Pease, LLP (United States)

Speakers:
Janis M. Manning, Verizon Corporate Resources Group LLC (United States)
David Weslow, Wiley Rein LLP (United States)

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.

Moderator:
Patrick Van de Vorst, Knijff Trademark Attorneys (Netherlands)

Speakers
:
Elise Neils, Brand Finance (United States)
Ignace Vernimme, Stibbe (Brussels)



Session H     
 
Making Up Time: A Case Study of Brands and Social Media:
Facebook®, Twitter® and 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, the panel  will work through  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.

Moderator:
Rhonda Steele, Mars Incorporated (Australia)

Speaker:
Ann Chen, Wm. WRIGLEY Jr. Company (United States)
Merillat Frost, The Coca-Cola Company (United States)

 

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.
  • Strategies for combating Internet counterfeits.

Moderator:
Marion Woods, Sutherland, Asbill & Brennan LLP (United States)

Speakers:
Toe Su Aung, BATMark Limited (United Kingdom)
Pier-Luigi Roncaglia, Studio Legale SIB (Italy)

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 trademark practitioners who have extensive experience working in China. Learn about the real challenges and current developments that impact your work in China.

Topics include:

  • Registration of trademarks in Chinese characters.
  • Winning strategies on oppositions and cancellations.
  • Recognition of well-known trademarks.
  • Effective enforcement against infringements and look-a-likes.
  • Proposed revisions to the Trademark Act.

Moderator:
Peter Dernbach, Winkler Partners (Taiwan)

Speakers:
Ann Chen, Wm. Wrigley Jr. Company (United States)
Rachel Tan, Rouse (China)

 

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.


Moderator
:
Aimee Mahan, Amazon.com, Inc. (United States)

Speakers:
Denise Grassi, The Sun Products Corporation (United States)
Barb Barron Kelly, Corsearch (United States)
Purvi Patel, Haynes and Boone, LLP (United States)

 

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