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Advanced Trademark Law Annual Review 2013


Speaker(s): David A. Gauntlett, Dean C. Eyler, Jonathan Hudis, Joseph M. Drayton, Joseph N. Welch, II, Kieran G. Doyle, Kimberly N. Reddick, Kristina Rosette, Sheldon H. Klein, Tricia McDermott Thompkins, Vanessa J. Soman
Recorded on: Apr. 18, 2013
PLI Program #: 42116

Dean Eyler focuses his practice on complex commercial and intellectual property litigation. He chairs Gray Plant Mooty's Intellectual Property Litigation team and has substantial experience in litigating trademark, trade dress, patent infringement, patent ownership, copyright, trade secret, false advertising and unfair competition cases. He also represents clients in a wide variety of commercial litigation, real estate-related disputes, and in appellate practice.

Dean is also committed to pro bono representation and work in the community. He is the chair of Gray Plant Mooty's pro bono committee, and chair of the advisory board for the Minnesota Urban Debate League. He regularly represents clients seeking asylum, has worked on many human rights projects, and represents tenants in housing court matters. Dean was named Gray Plant Mooty's Pro Bono All Star for 2006.

After law school, Dean served as a law clerk for Donald P. Lay, former Chief Judge of the United States Court of Appeals for the Eighth Circuit. In addition, he has been an adjunct professor at the William Mitchell College of Law and a Special Assistant City Attorney for the City of Minneapolis.

Dean, his wife, and their two children live in Plymouth. When he is not practicing law, Dean enjoys skiing, basketball, reading, and coaching youth sports teams.

Honors and Distinctions

  • "Minnesota Rising Star," Thomson Reuters, 2004, 2006-2011
  • Humphrey Institute Policy Fellow, 2008-2009


Kimberly Reddick has over 15 years experience in intellectual property law. She is the managing attorney of Red IP Law in Washington, DC, where she specializes in domestic and international trademark counseling, licensing, enforcement, clearance, prosecution and litigation.

Prior to founding Red IP Law, Ms. Reddick was a Partner at K&L Gates LLP, where she counseled clients on cutting-edge issues in all aspects of trademark, unfair competition, and copyright laws. She was also a Trademark Attorney Advisor with the United States Patent and Trademark Office (USPTO).

Ms. Reddick serves as outside intellectual property counsel to large and small corporations, ranging from start-ups to Fortune 500 companies.  In this capacity, she counsels clients regarding branding strategies, liability, enforcement, anti-counterfeiting tactics, and maintenance and licensing of trademarks and copyrights. In addition, she advises clients on a variety of advertising, sweepstakes, Internet, domain name and social networking issues, as well as handles domain name disputes and IP owner disputes on Facebook®, Twitter® and other social networking sites.

Ms. Reddick has written and participated in speaking engagements on a number of trademark and social media topics.  Most recently, she was named as one of 40 of the Nation's Best Advocates under 40 by IMPACT and the National Bar Association.

Ms. Reddick received her J.D. from The George Washington University Law School, where she was a Notes Editor and member of the American Intellectual Property (AIPLA) Law Association Quarterly Journal and her B.A. from Dartmouth College in Hanover New Hampshire. She is a member of the New York Bar and District of Columbia Bar.


Tricia McDermott Thompkins is the Global Intellectual Property and Licensing Counsel for Perry Ellis International, Inc. in Miami, Florida, where she counsels the business on the acquisition, maintenance, enforcement/litigation of a wide range of intellectual property rights, including trademark, copyright, anti-counterfeiting, and right of publicity. Ms. Thompkins is also responsible for the legal work associated with the licensing, distribution and advertising of the retailer's diverse brands, which include owned brands such as Perry Ellis®, Original Penguin by Munsingwear®, Laundry by Shelli Segal®, Jantzen®, Ben Hogan®, Grand Slam® among others and licensed brands such as Nike®, Callaway®, PGA Tour® and Jag®.  

Prior to joining Perry Ellis, Ms. Thompkins served as Sr. Director, Intellectual Property and Division Counsel for the $1.3B appliances division of Spectrum Brands, Inc., owner of the George Foreman®, Rayovac® and Remington® brands, among others. Ms. Thompkins was also Director and Trademark Counsel for Office Depot, Inc., previously worked in a law firm in Washington, DC and at the US Patent & Trademark Office before migrating to South Florida. She earned a B.A. in English and J.D. from Rutgers University, Camden College of Arts & Sciences and Camden School of Law, respectively.

Ms. Thompkins is the current Vice-Chair of the Trademark Transactions Committee of the American Bar Association, active as a member of the International Trademark Association (INTA), and is a frequent speaker for several bar association conferences - most recently, for the American Bar Association, National Bar Association - Commercial Law Section and the Miami-Dade Bar Association, Intellectual Property Committee. 

Ms. Thompkins, along with her daughters Maya and Tajo, also serve on the Board of Directors and Teen Board of Directors, respectively, for Family Promise of South Palm Beach County.


David Gauntlett represents policyholders in insurance coverage disputes regarding intellectual property, antitrust and business tort claims as well as in the underlying actions.

Law School/Graduate School:

 Mr. Gauntlett received his B.A. Magna Cum Laude from the University of California, Irvine and his J.D. from the University of California, Berkeley where he served as an editor of the California Law Review.

Work History: 

Mr. Gauntlett is the author of "Insurance Coverage for Intellectual Property Assets" (Aspen Law & Business © 1999), IP Attorney's Handbook for Insurance Coverage in Intellectual Property Disputes (American Bar Association © 2010) and is a contributed a chapter  "Insurance Coverage for Antitrust Lawsuits"  for the New Appleman on Insurance Critical Issues in Insurance Coverage (LexisNexis © 2011) as well as numerous other articles on this and related topics and holds leadership positions in various ABA committees.

Professional Memberships:

California State Bar; Orange County Bar Association; American Intellectual Property Law Association; American Bar Association, Vice-Chair of the American Bar Association's 1995 96 & 2001-02 Tort and Insurance Practice Section Committee on Intellectual Property Law.  He has served as the Newsletter Editor of this committee from 1995 through the present.  He has been the Chair of the American Bar Association's Intellectual Property Section, Special Committee on Insurance since 1998; Litigation Section Vice-Chair and Chair Emeritus, Intellectual Property Committee (1995-1996) as well as Co-Chair of the Advertising/Intellectual Property subcommittee (2013-2014); 2001 Vice Chair of the Intellectual Property Owners Association's newly formed Insurance Coverage Committee.


JONATHAN HUDIS is a partner with Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., located in Alexandria, Virginia, in the firm's Trademark and Copyright practice Group. Jonathan counsels clients in trademark, copyright, trade secrets and unfair competition matters, as well as related matters pertaining to the Internet. A skilled trademark and copyright attorney, he prosecutes and litigates a full range of these matters before the federal courts, the Register of Copyrights, and the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO").  He has several years of practical intellectual property litigation experience in contested court matters and administrative proceedings.

Jonathan helps clients of all sizes to establish and grow trademark and copyright portfolios, design and implement procedures to protect their intellectual capital, resolve foreign and domestic disputes, preserve trade secrets, and formulate company-wide IP strategies and policies. He  is well versed in trademark prosecution and registered copyright protection matters.

Jonathan presently serves as an Adjunct Professor of trademark and unfair competition law at the George Mason University School of Law and lectures and writes regularly on trademark and copyright law issues.  He is the Editor-in-Chief of the first and second editions of A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, published by ABA Publishing.

Jonathan is particularly knowledgeable about Internet-related challenges and is a member of several arbitration panels in the areas of Internet domain names and trademarks. These roles include serving as a Domain Name Panelist for the World Intellectual Property Organization's Arbitration and Mediation Center, and a Qualified Domain Name Dispute Resolution Panelist for the National Arbitration Forum.

Jonathan has served in numerous leadership roles within the American Intellectual Property Law Association ("AIPLA"), having served on its Board of Directors as well as on the Board of Editors of its prestigious AIPLA Quarterly Journal. Jonathan also presently serves in numerous leadership roles within the Intellectual Property Law Section of the American Bar Association ("ABA IPL"), where he present serves on its Council and as the Vice Chair of its Continuing Legal Education Board.

Jonathan is a member of the New York, New Jersey, Pennsylvania (nonresident, active), District of Columbia and Virginia bars. He also is admitted to practice before several United States District and Circuit Courts throughout the United States, and the U. S. Supreme Court.


Vanessa J. Soman is Vice-President and Associate General Counsel at Martha Stewart Living Omnimedia, Inc.  In her current role her and her team are responsible for SEC/Corporate Governance, Intellectual Property, Licensing, Privacy, and Employment matters. She is a seasoned attorney whose most recent roles have provided her with the opportunity to advise senior executives at two Fortune 500 companies on a variety of issues including risk-management and policy development that have mitigated counterfeits, increased compliance with regulations, and monetized intangible assets. Vanessa began her career as a trademark examining attorney at the U.S.P.T.O.

 


Joseph M. Drayton is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. He joined the Firm in 2012 and is resident in the New York office.

Mr. Drayton's practice background includes a broad range of intellectual property and complex commercial matters. He is experienced in patent litigation, trademark and copyright usage, trade dress, design patents and false advertising. Mr. Drayton also counsels clients in all aspects of intellectual property acquisition, transfer, protection and enforcement. He has represented leading companies in the media, telecommunications, banking, private equity, pharmaceutical, electronics and retail industries.

Mr. Drayton practices before both state and federal courts, as well as the International Trade Commission. He has been a lead member of numerous patent trial teams, including four over the past few years. Mr. Drayton has handled temporary restraining orders, preliminary injunctions, all facets of motion practice and complex discovery. 

Education

  • University of Pennsylvania Law School
    JD, 1997
  • University of Maryland, College Park
    BS, 1993

Court Admissions

  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York

Bar Admissions

  • District of Columbia
  • Maryland
  • New York

Memberships

  • American Bar Association
  • Federal Bar Council
  • Maryland State Bar Association
  • Metropolitan Black Bar Association
  • National Bar Association
  • New York City Bar Association
  • New York State Bar Association


Primary Areas of Practice:  New gTLDs and domain names, Internet-related trademark matters, trademark advice, prosecution, litigation, and transactions

Law School/Graduate School:  University of Georgia School of Law, J.D., cum laude, 1995

Work History:  Covington 1995-present

Professional Memberships:  President, ICANN Intellectual Property Constituency


Sheldon Klein is a member of the firm’s Intellectual Property, Technology & Privacy and Franchise & Distribution practice groups. He has over 35 years’ experience in counseling, portfolio management, litigation, licensing, and transactions in the areas of trademark, copyright, unfair competition, advertising law, and social media. Sheldon assists clients with a wide range of issues, including selection, clearance, and registration of new trademarks. He conducts IP audits and due diligence investigations, drafts IP licenses and other agreements, and enforces IP rights via negotiation, litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and foreign trademark offices.

Sheldon represents clients in a variety of industries, including franchise, internet/social media, hospitality, health care, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, and insurance. 

Experience

  • Obtained declaratory judgment of trademark non-infringement on behalf of a major Washington-based trade association after a threat by a key competitor just prior to launch of a major rebranding effort
  • Obtained relief for a major U.S. furniture manufacturer from rampant imports of counterfeit goods via litigation, U.S. Customs seizure/destruction of goods at their port of entry and at retail locations in multiple states, and seizure/destruction of goods at their point of manufacture in Taiwan
  • Obtained summary judgment, upheld on appeal (Ninth Circuit), against terminated franchisee who continued to use part of a famous international franchisor’s trademark
  • Obtained relief from multiple copyright infringements for the creator of a famous graphic work via litigation, and for the owner of a famous sculptural work via negotiation
  • Obtained relief for operator of popular social network/e-commerce Web site from multiple clone sites via cease and desist letters and DMCA takedown notices
  • Advised offshore operator of auction Web sites on trademark, copyright, and content issues
  • Handled multiple deceptive advertising cases on behalf of a major U.S. telecommunications company and a multinational medical device manufacturer in arbitration before the National Advertising Division of the Council of Better Business Bureaus
  • Conducted copyright audit for a famous U.S. author
  • Resolved a longstanding trademark dispute among two major nonprofit organizations via a creative licensing agreement
  • Manage international trademark portfolios for numerous clients of Columbia Fourth Sixth and Ninth Circuits

Honors / Activities

Professional Activities

  • American Intellectual Property Law Association, Second Vice President, past Treasurer, Secretary; AIPLA Fellows, Past Chair; Trademark Law Committee, Past Chair
  • International Trademark Association, Trademark Office Practices Committee, Member; Internet Committee, Past Member
  • Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), Member
  • U.S. Patent and Trademark Office, Trademark Public Advisory Committee, Past Member
  • Bar Assn. of DC, Patent, Trademark & Copyright Section, Past Chair

Honors and Distinctions

  • Washington, DC Super Lawyer,” Super Lawyers, 2014-2016
  • Leading Trademark Lawyer, The International Who’s Who of Business Lawyers, 2007-2015
  • “Leading Trademark Lawyer,” World Trademark Review, 2011-2013, 2015- 2017
  • “Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013 

Community Involvement

  • Jewish Federation of Greater Washington, Vice President
  • Jewish Community Relations Council of Greater Washington, Board of Directors
  • Maryland-Israel Development Center, Montgomery County Steering Committee
  • Melvin J. Berman Academy of Greater Washington, Board of Directors

Industries

  • Food & Beverage
  • Software & Technology
  • Wholesale & Retail Distribution
  • Health Care
  • Advertising & Promotions 

Practices

  • Intellectual Property, Technology & Privacy
  • Trademark
  • Intellectual Property Litigation
  • Software & Technology Licensing
  • Copyright
  • Internet & E-Commerce
  • Trade Secrets 

Education

  • George Washington University, J.D., with honors
  • University of Michigan, B.A., with high distinction

Bar Admissions

  • District of Columbia
  • Maryland 

Court Admissions

  • U.S. Court of Appeals District
  • U.S. District Court District of Columbia Maryland
  • U.S. Supreme Court


Kieran counsels clients regarding trademark clearance, registration, prosecution, licensing and protection. He litigates intellectual property and product labeling matters in federal and state courts.  He also represents brandowners before the Trademark Trial and Appeal Board.  Kieran's clients include fashion, footwear, hair care and skin care companies, publishers, professional sports marketing and merchandising companies, restaurants, food and beverage manufacturers.

Clients

Major League Baseball Properties, Inc.

Serendipity 3, Inc.

Trans-High Corporation (High Times)

Vogue International, Inc.

Stone Mountain Accessories, Inc.

Nature's Best, Inc.

Iconix Brands Group, Inc.

Cases

Trans-High Corporation, Inc. v. Richard Reimers,
2:14-CV-0279 (E.D. Washington. 2014)

Trans-High Corporation, Inc. v. Johnny Mennillo,
T-2197-14 (Canadian Federal Court, Toronto, 2014)

Converse v. Fortune Dynamic,
ITC Inv. No. 351-TA-936 (International Trade Commission, 2014)

Converse v. Nowhere, Inc.,
CV14 5991 (E.D.N.Y., 2014)

Converse v. Iconix Brands, Inc.,
ITC Inv. No. 351-TA-936 (International Trade Commission, 2014)

Golloher v. Todd Christopher International, Inc. d/b/a Vogue International,
Case No. C12-06002 RS (N. D. of CA, October 7, 2013)

Center for Environmental Health v. Vogue International,
RG 11580876 (CA Superior Court, September 13, 2012)

R Squared v. Serendipity 3, Inc.,
11 Civ. 7155 (S.D.N.Y., September 30, 2012)

Moroccanoil v. Vogue International, et.al,
Case No. CV10-10048 (C.D. of CA, January 7, 2011)

L.C. Licensing Inc. v. Berman,
86 U.SP.Q. 2d 1883 (T.T.A.B. 2008)

Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc.,
No. 01 CV 7406, 2004 U.S. Dist. Lexis 22637 (E.D.N.Y. 2004)

Merkos L'Inyonei Chinuch, Inc. v. Otsar Sifrei Lubavitch, Inc.,
312 F.3d 94 (2d Cir. 2002)

Merkos L'Inyonei Chinuch, Inc. v. Mendel Sharf,
172 F. Supp. 2d 383 (E.D.N.Y. 2001)

Prior Experience

Patterson Belknap Webb & Tyler LLP, Associate (1995 - 98)

Legal Aid Society, Federal Defenders Division, Paralegal (1990 - 95)

Articles & Speeches

Article: Trademark Strategies for Emerging Marijuana Economy.  Westlaw Journal Intellectual Property (May 14, 2014)

Speech: Online Piracy and Counterfeiting.  CLL Fashion Seminar (June 13, 2013)

Speech: Rights of Publicity. AIPPI Lapland Symposium, Finland (March 2011)

Speech: Brands on the Silver Screen, the Television Screen and the Computer Screen.  Practising Law Institute Advanced Seminar on Trademark Law (April 2010)

Speech: Brands on the Silver Screen, the Television Screen and the Computer Screen.  Michigan IP Lawyers Association(April 2010)

Speech: Licensing Western Trademarks into Hong Kong and China. International Licensing Show, Hong Kong (January 2010)

Speech: Voiding Trademark Applications Where There is a Lack of Bona Fide Intent to Use. AIPLA Annual Meeting (October 2008)

Article:  Century 21, the New Kid in Town: The Third Circuit Crafts a New Nominative Fair Use Test. The Trademark Reporter (July-August 2007)

Speaker/Moderator: Trademark Fair Use & Parody.  PLI Advanced Seminar on Trademark Law.  (May 2007)

Moderator:  Trademark Anti-counterfeiting Efforts.  AIPLA Spring Meeting  (May 2007)

Speech:  Copyright and Trademark Parody.  CLL Publishing Seminar  (March 2007)

Article: Trademark Parody, Statutory and Nominative Fair Use Under the Lanham Act. (March 2007)

Speech: Trademark Statutory and Nominative Fair Use. (January 2006)

Client Alert: Supreme Court Holds Trademark Fair Use Defense Is Available Even When Confusion Is Likely. (December 2004)

Speech: What's in a Name: Domain Names and Trademarks in the New Media Environment. (January 2002)

Client Alert: The Electronic Signatures in Global and National Commerce Act. (August 2000)

Affiliations

Adjunct Professor, Trademark Law, New York University School of Continuing and Professional Studies.  (2007- Present)

Co-chair; Practising Law Institute Advanced Seminar in Trademark Law (2008-Present)

Vice-chair, American Intellectual Property Law Association Trademark Law Committee (2010 -2012)

Chair, AIPLA Anti-Counterfeiting and Anti-Piracy Committee (2006-2010)

Contributor to Copyright Annual Review (1998-2006)

Education

Fordham University School of Law (JD 1995; Law Review: Associate Editor 1993 - 95)

Fordham University (BA 1990)

Bar Admissions

New York

United States District Courts - Southern and Eastern Districts of New York


Joe has more than thirty years' experience in intellectual property litigation, and taught at Northwestern Law School for more than 20 years.  His publications include a practitioner's Deskbook, now in its seventh edition, and a law school coursebook in its tenth edition, as well as a chapter on the "Use of Experts" in an ABA book on TTAB practice.  He has repeatedly been recognized as a "Leading Lawyer" and "Super Lawyer" in intellectual property litigation.  World Trademark Reporter identified him as "A true expert in the field," and Intellectual Property Today described him as "incredibly well versed in all aspects of trademark law, [with] a string of successes to his name."  He is a Fellow of the American Intellectual Property Law Association and the American Bar Foundation.  Joe regularly speaks on intellectual property topics.