Law Seminars International Presents

An Advanced One-Day Workshop on

Trademark Portfolio Acquisition & Protection

July 19, 2004
Hilton McLean Tysons Corner in Tysons Corner, VA
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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: William F. Herbert, Esq. and John F. Hornick, Esq.

Agenda

Monday, July 19, 2004
8:30 am Introduction & Overview
  William F. Herbert, Esq., Program Co-Chair
 Staas & Halsey LLP / Washington, DC
  John F. Hornick, Esq., Program Co-Chair
 Finnegan Henderson Farabow Garrett & Dunner LLP / Washington, DC
8:45 am The Madrid Protocol
  An update on what has happened throughout the year: What effect has the Madrid Protocol had? How is the patent office handling it? New strategies for use; tips for outside counsel; international issues
  Paul F. Kilmer, Esq.
 Holland & Knight LLP / Washington, DC
9:30 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 regarding decisions from the Trademark Trial and Appeal Board
  Michael A. Grow, Esq.
 Arent Fox PLLC / Washington, DC
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
  Steven J. Wadyka, Jr., Esq.
 Greenberg Traurig, LLP / McLean, VA
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 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 enforcement obligations
  John F. Hornick, Esq.
 Finnegan Henderson Farabow Garrett & Dunner LLP / Washington, DC
2:00 pm Proving Your Case
  Trends in awards for damages; calculating and proving damages; practice pointers for litigators
  Terence P. Ross, Esq.
 Gibson Dunn & Crutcher LLP / Washington, DC
  Evidence to support your case; useful discovery tools; the use of surveys
  Michael D. Hobbs, Jr., Esq.
 Troutman Sanders LLP / Atlanta, GA
3:15 pm Break
3:30 pm Deciding Whether to Litigate
  Internal processes for monitoring infringement; internal steps to investigate before going to outside counsel; when to commence litigation; choice of forum
  Courtney H. Bailey, Esq.
 Katten Muchin Zavis Rosenman / Washington, DC
  Michael Finn, Esq., Senior Counsel
 General Dynamics Corporation / Falls Church, VA
  Faye M. Hammersley, Esq., Corporate Counsel - Intellectual Property
 Science Applications International Corporation / McLean, VA
  Stacey D. Rabbino, Esq., IP Counsel
 VeriSign, Inc. / Dulles, VA
  Elizabeth G. Regan, Esq., Senior Counsel, Intellectual Property
 Marriott International, Inc. / Washington, DC
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 automatically obtains CLE credit approval for the state in which a seminar is held. On request, we will apply for CLE credits in other states and other types of credits. Current credits status: VA CLE 6.5 (#R02310) | CA MCLE 6.5 | GA CLE 6.25 | NY CLE 7.5 (0 ethics; non-transitional) | OH CLE 6.5 (#000143887) | PA CLE 6.5 #62293 | TN CLE 6.5 (#031246) | WA CLE 6.25 (#121950)

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

William F. Herbert, Program Co-Chair, is a member at Staas & Halsey LLP where he is engaged in the preparation and prosecution of U.S. and foreign patent applications in the mechanical, biotechnology, chemical, design and plant areas. Mr. Herbert’s practice is also very actively engaged in unfair competition and trademark matters, including trademark prosecution, oppositions, cancellations and related litigation.

John F. Hornick, Program Co-Chair, is a partner with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Mr. Hornick has broad experience in the areas of software licensing, copyrights, trade secrets, trademarks, IP litigation, and security interests in IP. Mr. Hornick leads litigation teams in trade secret, software, copyright trademark, and patent infringement actions.

Courtney H. Bailey is Special Counsel at Katten Muchin Zavis Rosenman. Ms. Bailey’s experience in transactions allows her to support the firm’s clients in all aspects of technology development, marketing, and acquisition. Her practice includes technology transfers and licensing agreements (including software licenses, services outsourcing and hardware acquisition).

Michael Finn is Senior Counsel at General Dynamics Corporation where he focuses on intellectual property and information technology. He is also a member of the General Dynamics Technology Council. Mr. Finn is on the board of the Washington Metropolitan Area Corporate Counsel Association ("WMACCA") and co-chairs the WMACCA Information Technology and Intellectual Property Forum.

Michael A. Grow is the Chair of Arent Fox PLLC’s Technology Department and a Member of the Intellectual Property Group. He specializes in trademark and copyright litigation and has represented clients in civil actions and appeals. He also counsels clients in matters relating to trademark selection, clearance and registration, domestic and international trademark and copyright protection, unfair competition law; computer law; franchise law and licensing.

Steven R. Gustavson is a partner at Baker Botts L.L.P. where he 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.

Faye M. Hammersley is Corporate Counsel - Intellectual Property for Science Applications International Corporation. Ms. Hammersley’s practice focuses on intellectual property due diligence; protection, enforcement, and availability of trademarks and copyrights; advertising compliance; IP ownership and licensing considerations in customer and vendor contracts; and drafting internal IP policies.

Michael D. Hobbs, Jr. is a partner at Troutman Sanders LLP, specializing in intellectual property and technology matters. He is involved in all types of intellectual property registration, licensing, and litigation processes throughout the United States and internationally.

Paul F. Kilmer is a partner at Holland & Knight LLP where he practices in the area of trademark, copyright and unfair competition law. Mr. Kilmer is experienced in trademark and copyright registration and protection, negotiating intellectual property licenses and assignment agreements, litigation, import issues, and counseling in the fields of the right of publicity, labeling and false advertising law.

Stacey Rabbino is the Chief Intellectual Property counsel of VeriSign, Inc. She manages the trademark, copyright and patent portfolios. In connection with this role, Ms. Rabbino oversees all domestic and foreign applications and prosecution matters for the company and each of its subsidiaries. Ms. Rabbino is also responsible for intellectual property litigation and transactions.

Elizabeth G. Regan is Senior Counsel for Intellectual Property with Marriott International, Inc., a leading worldwide hospitality company with more than 2,600 lodging properties under more than a dozen brands in the United States and 66 other countries and territories. Her responsibilities include domestic and international trademark clearance, counseling, prosecution and maintenance; protection and enforcement of intellectual property rights; intellectual property litigation; and transactional matters related to intellectual property.

Terence "Terry" P. Ross is a partner at Gibson, Dunn & Crutcher LLP concentrating his practice on the litigation of commercial lawsuits, particularly in intellectual property. Mr. Ross represents high-technology businesses in patent and copyright infringement; trade secret and unfair competition litigation; and trademark/trade name disputes. Mr. Ross has recently been named one of the "magnificent seven" in an article titled, Rising Stars, focusing of the top young IP Trial lawyers in the country according to IP Wordwide (10/17/02).

Steven J. Wadyka, Jr. is a shareholder at Greenberg Traurig, LLP where he focuses his practice on the protection and enforcement of intellectual property rights. Mr. Wadyka represents clients in intellectual property litigation involving trademarks, trade dress, domain names, copyrights, trade secrets, and unfair competition.