Law Seminars International Presents

Intellectual Property Law Association of Chicago

An Advanced One-Day Workshop on

Trademark Portfolio Acquisition and Protection

May 24, 2004
The Mid-America Club in Chicago, IL
Order      Download PDF Brochure

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 workshop, some of our nation’s experts on trademark portfolio practice address the state-of-the-art in the trademark acquisition, protection and exploitation

What Attendees Said

"Good points raised." "Excellent presentations." 'Information given was very relevant."

Agenda

Monday, May 24, 2004
8:30 am Introduction & Overview
  Dolores K. Hanna, Esq., Program Co-Chair
 Bell, Boyd & Lloyd LLC / Chicago, IL
  Edward G. Wierzbicki, Esq., Program Co-Chair
 Loeb & Loeb LLP / Chicago, IL
8:45 am Essential Elements of an IP Corporate Portfolio & Program
  Basic strategies for setting up an acquisition and protection program
  Andrea E. Friedman, Esq.
 Neal & McDevitt / Northfield, IL
  Practical tips for implementing the program
  Carolyn "Carrie" E. Knecht, Esq., Senior Trademark Counsel
 Motorola, Inc. / Libertyville, IL
10:00 am Break
10:15 am Choosing Outside IP Counsel
  When to turn outside; how to select the right firm; determining who should do what; the critical issue of money
  LaTonya Washington, Esq., Associate General Counsel
 Anheuser-Busch Companies, Inc. / St. Louis, MO
  Douglas Cherry, Esq.
 Kraft Foods Inc. / Glenview, IL
  Daniel J. Noonan, Esq., Director, Trademarks & Copyrights & Associate General Counsel
 Dell Inc. / Round Rock, TX
11:00 am Monitoring Infringement & Making the Most Effective Use of Litigation
  Internal processes for monitoring infringement; steps to investigate before going to outside counsel
  Melissa Rotunno, Esq., Brand Counsel
 Blue Cross and Blue Shield Association / Chicago, IL
  Whether and when to commence litigation; strategy before choice of forum
  Brent A. Hawkins, Esq.
 Wallenstein Wagner & Rockey, Ltd. / Chicago, IL
12:00 pm Lunch (on your own)
1:15 pm Domestic Registration and Common Law Trademark Update
  Recent developments and trends in the USPTO; trademark searching and domestic registration practice; changes in PTO rules and practice
  Sana Hakim, Esq.
 Bell, Boyd & Lloyd LLC / Chicago, IL
2:00 pm 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
  Elizabeth Atkins, Esq.
 Duane Morris LLP / New York, NY
  Implementing effective corporate strategies for international registration
  Demetra Merikas, Esq., Intellectual Property Counsel/Associate General Counsel
 World Kitchen, Inc. / Rosemont, IL
3:15 pm Break
3:30 pm Creative Thinking on Evidence to Support Injunction & Damages Claims
  An overview of the use of surveys in federal unfair competition cases and their applicability to trademark cases
  Douglas N. Masters, Esq.
 Loeb & Loeb LLC / Chicago, IL
  Damages: Cost-benefit analysis; calculating and proving damages; choosing the best forum
  Aron Levko
 PricewaterhouseCoopers LLP / Chicago, IL
4:30 pm Recent Developments and Trends in Infringement and Dilution Litigation
  Trends in trademark infringement and dilution cases; priority disputes
  Holly Ford, Esq.
 Banner & Witcoff Ltd. / Washington, DC
  Recent cases; adoption and use in commerce, and other issues
  Keith W. Medansky, Esq.
 Piper Rudnick LLP / Chicago, IL
5:30 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 7.25 | IN CLE 7 (#0077590) | KY CLE 7 | MN CLE 7.00 (#81054) | MS CLE 7 | NY CLE 8 | WA CLE 7 (#119418) | WI CLE 8

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

Dolores K. Hanna, Program Co-Chair, serves as Special Trademark Counsel in the Intellectual Property Department of Bell, Boyd & Lloyd LLC where she heads the Trademark Group. Ms. Hanna led the extensive study of the U.S. trademark system which resulted in the enactment of the Trademark Law Revision Act of 1988, the first major revision of the Lanham Act (the 1946 Federal Trademark Statute). She has counseled national and international companies with respect to their trademark portfolios, has supervised trademark litigation, and has participated in license and merger transactions.

Edward G. Wierzbicki, Program Co-Chair, is a partner at Loeb & Loeb LLP. His practice encompasses litigation, trademark, copyright, unfair competition, advertising, e-commerce and right of publicity. Mr. Wierzbicki has litigated cases throughout the country, and he is a member of numerous Federal District and Appeals Courts and the United States Supreme Court.

Elizabeth Atkins is a partner at Duane Morris LLP, practicing in the area of intellectual property law with emphasis on international administrative proceedings and trademark prosecution. She has extensive experience in handling worldwide trademark portfolios for large multinational corporations. Ms. Atkins is Chair of the 2004-2005 International Transfers Subcommittee of the International Trademark Association and past Chair of the Trademark Office Practices Committee of INTA.

Andrea E. Friedman practices in the law firm of Neal & McDevitt. She concentrates her practice in trademark portfolio management, advertising and marketing law.

Sana Hakim is a member of Bell, Boyd & Lloyd LLC’s Intellectual Property Department. Ms. Hakim concentrates her practice in federal intellectual property litigation, transactional work and counseling for trademark, copyright and e-commerce issues. She handles trademark clearances, trademark and copyright protection, licensing, acquisitions and mergers. She is particularly noted for her work involving trademark and copyright usage on the Web, Internet privacy issues and enforcement of trademark rights against cyber squatters.

Brent A. Hawkins is a shareholder at Wallenstein Wagner & Rockey, Ltd. Mr. Hawkins’ practice includes all aspects of domestic and foreign patents, trademarks, copyrights, trade secrets and unfair competition, including counseling, investigating, ransactions, prosecution and litigation. Carolyn “Carrie” E. Knecht is Senior Trademark Counsel for Motorola,

Carolyn "Carrie" E. Knecht is Senior Trademark Counsel for Motorola,Inc. Ms. Knecht manages Motorola’s worldwide trademark portfolio and counsels clients on trademark licensing, clearance, and registration. She also manages trademark litigation, opposition and cancellation actions and anti-counterfeiting activities.

Aron Levko is a Principal who leads the Intellectual Asset Management Practice for PricewaterhouseCoopers LLP in the Americas. Mr. Levko has extensive experience working with corporate management, entrepreneurs and trial lawyers in a broad range of industries. He specializes in assisting clients in intellectual asset transactions, portfolio management and dispute resolutions.

Douglas N. Masters is a partner at Loeb & Loeb LLP. Mr. Masters concentrates his practice on litigation and counseling in areas of domestic and international trademark, copyright and unfair competition law.

Keith W. Medansky is a partner at Piper Rudnick LLP concentrating his practice in the area of intellectual property, including a full range of transactional and litigation matters pertaining to trademarks, copyrights, software, anti-counterfeiting and technology. Mr. Medansky represents clients with respect to intellectual property registration, protection, licensing and transfer matters.

Demetra Merikas is Intellectual Property Counsel/Associate General Counsel and the head of IP at World Kitchen, Inc. Ms. Merikas focuses her practice on domestic and international IP litigation and transactional work.

Dan Noonan is Director, Trademarks and Copyrights, and Associate General Counsel at Dell Inc. Mr. Noonan is responsible for all of Dell’s trademarks, copyrights and related litigation and conflicts worldwide. Mr. Noonan’s career experience has concentrated in the fields of trademark, copyright, and unfair competition.

Melissa Rotunno is Brand Counsel to Blue Cross and Blue Shield Association. Ms. Rotunno’s practice concentrates on protecting the brands domestically and internationally in all aspects of business, including press releases, licensing agreements and third party infringement.

LaTonya Washington is Associate General Counsel at Anheuser-Busch, Inc. where her practice focuses on unfair competition, copyright, Internet, trademark counseling, prosecution and litigation.