Law Seminars International Presents

An Advanced One-Day Workshop on

Trademark Portfolio Acquisition & Protection

March 19, 2004
U.S. Grant Hotel in San Diego, CA
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Who Should Order Homestudy

Attorneys, business leaders,marketing executives

Why Order

"In many ways, trademarks fuel our economy. Strong marks sell products and must be protected. They provide assurances of consistent quality, and sometimes prestige. Consumers seek out products and services with known names. But for the same reasons they provide a competitive edge, trademarks also present opportunities for pirates. Infringers thrive by selling knock-offs of famous brands for a fraction of the price, or try to take a free ride on the goodwill of well-known marks. And even in good faith, disputes can arise over the extent of a trademark holder’s rights, or whether another party’s mark comes too close. In this one-day, intensive workshop, some of our nation’s experts on trademark portfolio practice address the state-of-the-art in trademark acquisition, protection and exploitation." ~ Program Co-Chairs: Neil F. Martin, Esq. and Richard P. Sybert, Esq.

What Attendees Said

"Well done."

Agenda

Friday, March 19, 2004
8:30 am Introduction and Overview
  Neil F. Martin, Esq., Program Co-Chair
 Gordon & Rees LLP / San Diego, CA
8:45 am The Madrid Protocol
  A review of the new proposed rules of the United States Patent and Trademark Office implementing the Madrid Protocol; tips for outside counsel
  Richard P Sybert, Esq., Program Co-Chair
 Gordon & Rees LLP / San Diego, CA
  Corporate strategies for international registration
  Carole F. Barrett, Esq.
 Howard, Rice, Nemerovski, Canady, Falk & Rabkin, P.C. / San Francisco, CA
9:45 am Trademark Creation, Registrability and Maintenance Update
  Recent developments regarding the creation, registrability and maintenance of trademarks; legal tips on brand selection, clearance and usage; updates re: decisions from the Trademark Trial and Appeal Board
  Katherine Basile, Esq.
 Howrey Simon Arnold & White, LLP / Menlo Park, CA
10:15 am Break
10:30 am Dilution claims
  Statutory and case law update: key elements for federal vs. state actions; how to pick the best forum; what you have to prove to collect damages; implications of the Victoria’s Secret case
  Jason D. Firth, Esq.
 Quirk & Tratos / las Vegas, NV
11:15 am Infringement Claims
  Infringement cases; recent developments and trends in trademark infringement litigation, showing likelihood of confusion and reverse confusion; priority disputes, adoption and use in commerce, and other issues
  Steven R. Gustavson, Esq.
 Baker Botts L.L.P. / New York, NY
12:00 pm Lunch (on your own)
1:15 pm Special Issues Arising from the Use of Trademarks on the Internet
  Effective use of the Internet to identify infringers; what to do if an infringer has been in business for a long period without detection; impact of Internet technologies on monitoring and enforcemnt obligations; choosing the best forum
  Christopher C. Larkin, Esq.
 Seyfarth Shaw LLP / Los Angeles, CA
2:00 pm Courting Opinions: Surveys in Unfair Competition Cases
  The use of surveys in federal unfair competittion cases and special considerations in the design and implementation of litigation surveys.
  E. Deborah Jay, Ph.D., President & CEO
 Field Research Corporation / San Francisco, CA
2:45 pm Break
3:00 pm Protection for Product Design
  Implications of Wal-Mart,TrafFix Devices, and the new Trademark Office Regulations on registering a shape or design as a trademark
  Kathleen B. Carr, Esq.
 Edwards & Angell, LLP / Boston, MA
3:45 pm Deciding Whether to Litigate
  A conversation about internal processes for monitoring infringement; internal steps to investigate before going to outside counsel; when to commence litigation; choice of forum
  Neil F. Martin, Esq., Program Co-Chair
 Brown Martin Haller & McClain LLP / San Diego, CA
  Richard P Sybert, Esq., Program Co-Chair
 Gordon & Rees LLP / San Diego, CA
5:00 pm Adjourn

Cancellation

There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

Law Seminars International self-certifies CLE credits for Washington, California, and Alaska. For other locations, we automatically seek CLE credit approval for the state in which a seminar is held. On request, we will apply for credits from other bar associations or the accrediting bodies for other professions. The current credits status for this program is CA MCLE 6.75 | AZ CLE 6.5 | CO CLE 8 | NY CLE 7.5 (no ethics, non-transitional) | WA CLE 6.5 (#112536)

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. The course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (which ever is later).
Order Homestudy

Faculty Bios

Neil F. Martin, Program Co-Chair and managing partner at Brown Martin Haller & McClain LLP, co-founded the firm in 1969, specializing in patents, copyrights, licensing and franchising, trademarks/service marks, and trade secrets litigation. He is a published author of articles on various aspects of intellectual property law, including copyrights and the changing attitudes of the courts relative to patent litigation matters.

Richard P. Sybert, Program Co-Chair, is a partner and head of the Intellectual Property (IP) Group at Gordon & Rees, LLP. His practice consists almost entirely of IP litigation. He has over 24 years’ experience in all aspects of Intellectual Property litigation, including trademark, trade dress, copyright, patent, and trade secrets litigation in both state and federal court.

Carole F. Barrett, a partner with Howard, Rice, Nemerovski, Canady, Falk & Rabkin, PC, is Chair of the Trademark Prosecution and Counseling Group. Her practice focuses on intellectual property protection, with an emphasis on trademarks, copyrights, licensing, and intellectual property transactions.

Katherine M. Basile is a partner at Howrey Simon Arnold & White in the Intellectual Property and Trademark Practice Groups. Her expertise is in the creation, clearance, prosecution and enforcement of trademarks and brands.

Kathleen B. Carr, a partner at Edwards & Angell, LLP practices complex civil litigation, with concentrations in technology, intellectual property and maritime law. She has substantial trial experience in both state and federal courts and the U.S. Court of Appeals for the First Circuit.

Jason D. Firth, a partner at Quirk & Tratos, leads the firm’s Trademark Group. He represents clients in technology transfer agreements, domain name disputes and licensing negotiations. He also has extensive experience counseling clients on establishing, protecting and defending copyright and trademark rights.

Steven R. Gustavson of Baker Botts L. L. P. practices in intellectual property, intellectual property litigation, technology solutions and trademarks/copyrights. He concentrates his practice in the areas of patents, trademarks, false advertising, copyrights, trade secrets and general commercial litigation. He previously worked nine years as a trial and appellate attorney for the City of San Diego.

E. Deborah Jay is President and CEO of Field Research Corporation. She is expert in all aspects of survey methodology with over 25 years’ experience conducting large-scale surveys of all types for public and private companies, non-profit organizations, and law firms. Dr. Jay has conducted and evaluated surveys for legal cases involving a variety of issues including trademark, copyright and patent infringement and provided expert testimony in court.

Christopher C. Larkin of Seyfarth Shaw LLP is a partner in the Intellectual Property Group. His practice focuses on United States and international trademark and copyright litigation, counseling and prosecution. He is immediate past president of the Los Angeles Intellectual Property Law Association and co-chairs the Practicing Law Institute’s annual program on Trademark Trial and Appeal Board Practice.