INTA Roundtable Hosts Breakfast
(By invitation only)

BCEC, Room 252 AB

The Roundtable Hosts Breakfast honors the hosts of INTA roundtables taking place between June 2009 and May 2010. The Association is grateful to the many volunteers who have contributed to the Roundtable Program’s success.

Concurrent Sessions

CT01 – Domain Names – How to Protect Your .assets
Intermediate Level

BCEC, Room 210 ABC

The panelists will address ICANN's launch of new top level domains as well as actions trademark owners can take to protect their rights. The discussion will focus on how to protect rights from being encumbered by a new top level domain (TLD), what to consider before filing an application for a new TLD, and some practical guidance for defensive protection of marks in any new TLD. Strategies for enforcing and protecting rights in the domain name arena will be examined, including when to defensively register domain names, whether to file a UDRP (Uniform Dispute Resolution Policy) or ACPA (Anticybersquatting Consumer Protection Act ) action, and how to balance budget constraints and legal concerns. The session will also examine new trends in cybersquatting activities and how to respond to them.

Moderator

• Mitchell S. Bompey, Morgan Stanley (United States)

Speakers

• Doug Brent, ICANN (United States)
• Cynthia Johnson Walden, Fish & Richardson PC (United States)
• Kristina Rosette, Covington & Burling LLP (United States)
• Fabricio Vayra, Time Warner Inc. (United States)
• Nick Wood, Com Laude (United Kingdom)

CT02 – Outsourcing and Ethical Issues
Intermediate Level

BCEC, Room 204 AB

Explore the ethical relationship between outsourcing U.S. registrations, applications and prosecutions to offshore vendors and the potential claims for which U.S. licensed attorneys might be liable in using offshore vendors. The panel will also discuss the pros and cons of outsourcing, the potential liability to firms and corporations, and the effect of outsourcing to a company’s bottom line.

Moderator

• Elliott C. Bankendorf, McCracken & Frank LLP (United States)

Speakers

• Michael P. Downey, Hinshaw & Culbertson LLP (United States)
• Linda A. Kuczma, Banner & Witcoff, Ltd. (United States)
• Jaime Mercado, Fiddler, Gonzalez & Rodriguez (United States)

CT03 – Non-Traditional Trademarks – Trademarks vs. Designs
Intermediate Level

BCEC, Room 205 ABC

Three speakers from different regions of the world, sharing their experiences in protecting non-traditional trademarks, will discuss what works and does not work in their jurisdictions, and will advise on strategies regarding when to treat non-traditional trademarks as trademarks or designs.

Moderator

• Nettaya Warncke, Domnern Somgiat & Boonma Law Office Ltd. (Thailand)

Speakers

• Paula Oliveira Bezerra de Menezes, Soerensen Garcia Advogados Associados (Brazil)
• Farrukh I. Khan, United Trademark & Patent Services (Pakistan)
• Rebecca L. Roby, Hard Rock Café (United States)

IT01 – For Adults Only – Industry Breakout
Intermediate Level

BCEC, Room 206 AB

In-house and outside counsel experts discuss the unique regulatory schemes that apply to industries whose products and services are directed to adults only. What impact do laws and regulations have on their abilities to market, promote and offer their products and services. What are the trends? What is the effect on intellectual property? What does the future hold? How different are these rules from those that exist internationally? What lessons can other non-adult directed products and service industries learn? Will the new regulatory movement in Washington and the states create "new" regulated product categories?  Join this panel to find out the answers to these questions, and more!

Moderator

• Steve Macaluso, WMS Gaming Inc. (United States)

Speakers

• Anamaria Cashman, Playboy Enterprises, Inc. (United States)
• Jeffrey Michel, WMS Gaming, Inc. (United States)
• Ronald R. Urbach, Davis & Gilbert LLP (United States)

WT01 – Maximizing Brand Value: Top Tax Strategies for Brand Owners
Intermediate to Advanced Level

BCEC, Room 203

As brand owners extend the reach of their brands globally, it is increasingly important to recognize how corporate structures and tax arrangements might benefit or disadvantage the brand owner, particularly in the ownership and licensing arenas. Although such structures often are driven by tax and business considerations, the analysis also should focus on the trademark perspective and efficient global brand management. Participate in an interactive discussion of strategies that global companies can use to achieve positive results from the perspectives of business, trademark and tax. Explore the risks and benefits of each strategy, determine the information needed to evaluate each strategy, and learn how to manage tensions among these different perspectives. Obtain valuable insights from both in-house and outside practitioners in the United States and Europe, who are experienced in analyzing and implementing global strategies, to strike the right balance among these goals.

Moderator

• Karen A. Butcher, Morgan, Lewis & Bockius LLP (United States)

Speakers

• Bart W.S. Bassett, Morgan Lewis & Bockius LLP(United States)
• Jeremy Lack, Altenburger and Universite de Neuchatel (Switzerland)
• Melody L. Schottle, Exxon Mobil Corporation (United States)

Association Brunch
(By invitation only)

Westin Boston Waterfront, Otis

The Association Brunch provides an excellent opportunity for leaders of IP associations, INTA Officers and staff throughout the world to network and benchmark with one another.

Concurrent Sessions

CT20 – Trademark Trial and Appeal Board Proceedings
Intermediate Level

BCEC, Room 205 ABC

Hear from Trademark Trial and Appeal Board (TTAB) judges and experienced practitioners regarding recent developments and hot topics relating to trial practice before the Board, including implementation of the new TTAB procedural rules.   

Moderator

• Patricia S. Smart, Smart & Bostjancich (United States)

Speakers

• Mary L. Kevlin, Cowan, Liebowitz & Latman (United States)
• Gerard Rogers, United States Patent & Trademark Office (USPTO) (United States)
• Ellen J. Seeherman, United States Patent & Trademark Office (United States)

CT21 – Internet Law Update – Domain Names, Ad Words and Auction Sites
Intermediate Level

BCEC, Room 210 ABC

This session is geared to those who have a special interest in learning about legal developments related to trademark infringements on-line. Topics will include legal updates relating to domain names, domain name disputes, and whether use of a domain name constitutes use for the purposes of infringement. Other topics include legal updates relating to search engines, auction sites and social networking usernames.

Moderator/Speaker

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

Speakers

• Scott Minden, Symantec Corporation (United States)
• David Taylor, Lovells LLP (France)

CT22 – Monetary Remedies in Trademark Cases
Advanced Level

BCEC, Room 204 AB

Recent multimillion dollar verdicts and mounting pressure for trademark protection programs to pay their own way have led to an increased interest in monetary recovery in trademark cases. This session will address the availability of damages in trademark litigation and the practicalities of proving various forms of monetary relief. How do you determine whether you have a damages case, and what threshold elements must you prove to recover damages? What expert evidence can you use to prove lost sales and royalties, damage to the value of your mark or other potential monetary injuries? And, what practical and strategic considerations should be taken into account when using expert evidence to obtain monetary relief for trademark infringement?

Moderator

• Paul C. Llewellyn, Kaye Scholer LLP (United States)

Speakers

• Weston Anson, Consor Intellectual Asset Management (United States)
• R. Charles Henn, Jr., Kilpatrick Stockton LLP (United States)

CT23 – Regional Update – China
Intermediate Level

BCEC, Room 206 AB

Be brought up to date on local law, as well as recent case law and developments, in China.  Issues relating to the enforcement of well-known marks in China and enforcement strategies for China will also be discussed.

Moderator

• Chiang Ling Li, Jones Day (China)

Speakers

• Mark Allen Cohen, Jones Day (China)
• Reiner Hansert, Beiersdorf AG (Germany)
• Lucy Nichols, Nokia Corporation (United States)
• Justin E. Pierce, Sony Ericsson Mobile Communications Inc. (United States)

WT20 – Antitrust Implications of Trademark Agreements
Advanced Level

BCEC, Room 203

This panel of seasoned professionals will offer an interactive brainstorming session regarding clauses which could be introduced into trademark agreements that may be critical under the prevailing antitrust laws in the United States and the European Union. A special focus will be put on licensing, franchising and delimitation agreements. Other issues to be covered are field of use restrictions, no challenge clauses, territorial restrictions, exhaustion and parallel imports. Participants will walk away with a better knowledge of the extent to which specific clauses can be introduced in such trademark agreements in different jurisdictions.
 
Moderator 

• Christoph Kleiner, Kleiner Rechtsanwälte (Germany)

Speakers

• W. David Braun, Drinker Biddle & Reath LLP (United States)
• Meg Murray, Sara Lee Corporation (United States)
• Ian C. Starr, Ashurst LLP (United Kingdom)

Concurrent Sessions

CT50 – Building the Bridge Between Legal and Marketing
Intermediate Level

BCEC, Room 210 ABC

This session will explore the relationship between the Marketing and Legal Departments regarding choice of trademarks, contents of promotional materials, usage guidelines, and commercial trademark issues including acquisitions and divestitures. The panelists discuss how to end the “us vs. them” battle and otherwise bridge the gap between Legal and Marketing.

Moderator

• Frances M. Jagla, Leydig, Voit & Mayer, Ltd. (United States)

Speakers

• Michelle Brownlee, Bose Corporation (United States)
• Susan L. Crane, Wyndham Worldwide Corporation (United States)
• Sue Evans, Novartis International AG (Switzerland)

CT51 – Trademarks and Celebrities
Intermediate Level

BCEC, Room 205 ABC

Experts take a look at the concept of celebrity and image rights and explain how a celebrity may successfully protect his or her rights by way of trademark law, privacy law, publicity rights, unfair trade practices, passing-off, copyright and Internet law.  Speakers will discuss the varying positions courts have taken on these topics across the United States, Europe and Asia and will examine celebrity merchandising and endorsement, the concept of public domain and the growing and unrelenting impact of the Internet through user-generated content sites, file sharing sites, social networking sites such as Facebook^®, YouTube^® and Twitter^®, as well as the intriguing Virtual World.

Moderator

• Jennifer McEwan, EKM Patent (Australia)

Speakers

• Jürgen Kroher, Kroher Strobel (Germany)
• William J. Seiter, Seiter & Co. (United States)
• Barry Joseph Yen, SKYS - So Keung Yip & Sin (Hong Kong, SAR)

CT52 – Regional Update – South America
Intermediate Level

BCEC, Room 204 AB

Speakers will give updates on trademark law in key jurisdictions in South America and discuss protection of well-known marks and strategies for protection of trademarks in South America for overseas companies.

Moderator

• Santiago O'Conor, Marval, O'Farrell & Mairal (Argentina)

Speakers

• Roxana Penagos, The Coca-Cola Company (Mexico)
• Horacio Rangel-Ortiz, Rangel y Rangel, S.C. (Mexico)
• Fernando Triana, Triana, Uribe & Michelsen (Colombia)

IT50 – Industry Breakout – All About Your Health
Intermediate Level

BCEC, Room 206 AB

Are the myriad issues surrounding your nutrition and health care clients causing your blood pressure to rise? If so, this session may be the cure. An experienced panel will discuss the challenges, best practices and real world experiences of representing clients in the nutrition and healthy living industries.  

The panelists will also cover comparative advertising, the use of third party trademarks in marketing materials, and the difficult interplay between brands, claims, and regulatory issues. The World Health Organization (WHO) code, which has restricted the use of certain trademarks in various countries, and the challenges of trademark ownership and licensing in minimizing product liability claims, will also be examined.

Moderator

• Nicole Vickroy-Hickey, Abbott Laboratories (United States)

Speakers

• Terri Frank, Weight Watchers International, Inc. (United States)
• Howard J. Shire, Kenyon & Kenyon LLP (United States)
• Jackie Stelling, Nestle Nutrition (United States)

Workshop

WT50 – The Trademark Attorney in the Eye of the Storm –  Navigating a Complex Brand-Driven Acquisition
Intermediate to Advanced Level

BCEC, Room 203

Immerse yourself in a case study-based, team work-oriented, highly interactive session addressing the challenges encountered by the in-house trademark attorney in the process of evaluating, closing and integrating a complex brand-driven acquisition. The session’s focus will be on how to plan and execute the entire process effectively and within applicable constraints. Hear from experienced practitioners about maximizing the contribution of the in-house trademark attorney in traditional and non-traditional areas, interacting effectively with various deal-related stakeholders and constituencies, and making efficient use of outside professional resources. This session will be of interest to both in-house and outside counsel involved with transactional work.

Moderator

• David Tenenbaum, CRA International (United States)

Speakers

• Lee Eulgen, Neal, Gerber & Eisenberg LLP (United States)
• Ross McLean, Baker & McKenzie (Australia)
• Fabricio Vayra, Time Warner Inc. (United States)

Committee Meetings

In-House Counsel Reception
(By invitation to In-House Counsel only)

Westin Boston Waterfront, Harbor Ballroom 1 & 2

Join your fellow in-house counsel for cocktails, light refreshments and a great networking and benchmarking opportunity.

Government Officials Reception
(By invitation only)

Westin Boston Waterfront, Otis

Join the INTA leadership and government officials from around the world for a reception to thank you for your dedication and support of the trademark community. This reception provides an opportunity for officials to share information and best practices with their colleagues in the trademark community.