Skip to main content

Global Trademark Search and Application Workshop 2013


Speaker(s): Anne Hiaring Hocking, Mary Bagnall, Paul Kretschmar, Richard L. Kirkpatrick
Recorded on: May. 15, 2013
PLI Program #: 45224

Anne Hiaring Hocking has specialized in trademark and copyright law since 1981.  She is Adjunct Professor of Trademark, Copyright, and International Intellectual Property Law at Golden Gate University in San Francisco, California and Bangkok, Thailand.  She has chaired numerous programs on Intellectual Property law topics, and has served as President of the San Francisco Intellectual Property Law Association and Chair of the State Bar of California Intellectual Property Law Section. She has spoken and moderated numerous International Trademark Law Association and Practicing Law Institute programs.  She has written for AmJur on copyright and trademark law topics, as well as presented numerous papers.

After working at two large firms, she was the IP rights attorney for Pacific Telesis for five years, where she was responsible for all aspects of domestic and international trademark filing and enforcement, and all copyright and trade secret procedures. In 1990 she founded her own firm, Hiaring + Smith LLP, which merged with Donahue Fitzgerald LLP in 2015.

Selected Publications

“Selected Liability Issues: Social Networks and Blogs” The computer & Internet Lawyer, (Vol. 26, January 2009)

“Does Information Really Want to be Free?” Gothenburg Film Festival, 2006

“What’s New in the Neighborhood – The Export of the DMCA in PostTRIPS FTA’s” Golden Gate University International & Comparative Law Journal (2005)

Fair Use And TRIPS: Too Much of a Good Thing?”, Copyright Law Society of the U.S. January Midwinter Meeting 2004

Selected Speaking Engagements

PLI, Intellectual Property Law Institute, various years

Selected Liability Issues, Social Networks and Blogs (2008)
Navigating Trademark Trial and Appeal Board Practice (2000)
INTA TTAB Practice for Novices Forum (2000)

Insight Information, “Sixth Complete Course on Negotiating and Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets” (2000)

PLI, Program Chair, “Understanding Basic Trademark Law” (1994-2008)

International Trademark Law Association, Panel Moderator for Hospitality Industry Issues (1999)

Panelist, Work for Hire Seminar, Law Seminars Institute (1999)

Sunnyvale Center for Innovation, Invention and Ideas, Washington & the West Seminar (1998, 1996, 1994)

“Geographic Misdescriptiveness”; PLI’s Fourth Annual Institute for Intellectual Property Law (1999) 

Practice Areas

Intellectual Property

Admissions

State Bar of California

Education

L.L.M. in International Law, Golden Gate University, 2006

J.D., University of California, Hastings College of the Law, San Francisco, California, 1979

B.A., Reed College, Portland, Oregon, 1973, Phi Beta Kappa

Freie Universitaet, Berlin, Germany, 1971–72; 1974–1975

Albrecht-Ludwigs Universitaet, Freiburg, Germany, 1970–1971

Affiliations

Past Chair, State Bar of California Intellectual Property Section

Past Chair, State Bar Council of Section Chairs

President, San Francisco Intellectual Property Law Association (1994-95)

President, San Francisco Bar Association Barristers Club (1986)

Editor, Northern District Digest

Board Member, San Francisco Neighborhood Legal Aid

Composers Inc.

California Contemporary Craft Association

Mayor’s Advisory Council on Childcare for the City and County of San Francisco

Panel Member, Bay Area Lawyers for the Arts


Mr. Kirkpatrick has focused on trademark and unfair competition law since 1980. His practice covers the full range of trademark protection and practice, including counseling; licensing; due diligence and other opinions on trademark aspects of initial public offerings, asset purchases, secured transactions, taxation and intellectual property holding companies; trademark enforcement and defense; litigations before the U.S.
Trademark Trial and Appeal Board and courts; trademark clearance and registration worldwide; and trademark portfolio management. He is the leader of Pillsbury's International Trademark Team.

Mr. Kirkpatrick is the author of the leading treatise: "Likelihood of Confusion in Trademark Law," published by Practicing Law Institute with semi-annual supplements, also available from Lexis and Kindle. He has also published numerous articles on trademark topics, detailed below. This is the 28th supplement to the treatise, which was first published in 1996.

He is also a frequent lecturer at seminars, detailed below, of the Practising Law Institute (PLI), CEB, Intellectual Property Owners' Association (IPO), Thomson & Thomson (T&T), the International Trademark Association (INTA), Insight, San Francisco Intellectual Property Law Association (SFIPLA), Intellectual Property Law Sections of the California, Nevada and Utah State Bars, Bar Association of San Francisco, Golden Gate School of Law IP Institutes, and others.

The World Trademark Review 1000 described Mr. Kirkpatrick as an “outstanding prosecution and strategy authority who serves an eminent clientele, including household names in retail, food and drink and sporting goods.”

Honors & Awards

  • 2013 WTR 1000, Prosecution and Strategy (2012-2013)
  • 2013 Super Lawyers – Northern California
  • 2012 WTR 1000, Intellectual Property: Trademarks—California (2011-2012)
  • 2010 Who's Who Legal, Intellectual Property: Trademarks—San Francisco
  • California's Top IP Lawyers, Daily Journal Intellectual Property Extra

Presentations

Co-chair, Practising Law Institute program “Global Trademark Clearance and
Registration Workshop 2013,” May 2013
Trademark Trial and Appeal Board Update, PLI, October 2012
Trademark: Searching, Clearance, and the Application Process PLI, July 2012
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 1
Trademark Preliminary Injunction and Summary Judgment Motions, Golden Gate IP
Law Institute, November 2010
Foreign Trademark Conflicts, Cal Bar IP Institute, October 2010
Counterfeiting & Cybersquatting Damages, Rocky Mountain IP Law Institute, June 2010
Trademark Damages, PLI, October 2009
Trademark Licenses, PLI, 2007-2009
Navigating USPTO/TTAB, PLI, 2001-2009
Basic Trademark Law, PLI, July 1999-2012
Priority and Tacking, Golden Gate Law, April 2009
New TTAB Rules, PLI, 2008
Trademark Searches, CEB, 2006
New Dilution Law, PLI, October 2006
Trademark Prosecution & Fraud, California IP, April 2006
Advanced Trademarks, PLI, June 2005
Trademark Clearance Utah IP, October 2003
Trademark Clearance Nevada IP, September 2003
Trademark Searching, BASF, July 2003
Priority & Third Party Marks, California IP, April 2003
Trade Dress and Patent Law, SFIPLA, April 2001
Trademark Law Developments, PLI, November 2000
Product Configuration Trade Dress, SFIPLA, March 2000
Trademark Licenses, Insight, March 2000
Trademark Dilution Developments, IPO, November 1999
Foreign Trademark Litigation, PLI, October 1999
Trademark Searches and Opinions, T & T, September 1999
Litigating Trademark Cases, PLI, December 1998
TTAB Best Practices, INTA, September 1997
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 2
TTAB Best Practices, INTA, September 1997
Proving Likelihood of Confusion, PLI, June 1996

External Publications

Likelihood of Confusion in Trademark Law, Practising Law Institute, 2012 (28th supplement to the treatise, first published in 1996)
Wine Trademarks, co-author, Trademark World, September 1997 Learned Hand's Trademark Cases, 82 TMR 426
Likelihood of Confusion Issues: The Federal Circuit's Standard of Review, 40 Am. U.L. Rev. 1221
Industrial Protection Design, 2 Intellectual Property in Business 17
Treading with Caution: A View of U.S. Trademark Applications, Trademark World
The Supplemental Register Under the Trademark Law Revision Act, 79 TMR 248
Impact of the Trademark Law Revision Act, 44 Food Drug Cosmetic Law Journal 593
The Supplemental Register, AIPPI (Japanese)
How New Trademark Law Affects Non-U.S. Owners, Trademark World
U.S. Trademark Application Based on Japanese Trademark Applications, AIPPI Japanese
Trademark Law: A Banker’s Primer, Banking Law Journal
Off the Mark: Proper Use of Trademark Symbols, Madison Avenue
Trademark Infringement: How to Avoid It, Restaurant Hospitality
Trademark Law: How It Can Affect Banks and Thrifts, American Banker

Practices / Industries
Intellectual Property
Trademarks
Health Care & Life Sciences

Admissions

State of California
District of Columbia

Education

J.D., University of Maryland School of Law, 1980
B.A., Connecticut College, 1975 I, summa cum laude, Phi Beta Kappa
The Johns Hopkins University


Paul Kretschmar is a partner of the IP law firm VOSSIUS & PARTNER. His core areas of practice encompass litigation and prosecution of trademark and design rights as well as unfair competition proceedings. Paul's main focus is the enforcement of well-known brands and designs against unauthorized imitation and unfair exploitation. Among the longstanding clients Paul advises on a regular basis are leading companies from various sectors, such as electronics, fashion, food, pharmaceuticals, pulp and paper or the service industry.

Paul holds the title Master of Laws (LL.M.) in the field of Intellectual Property Law and obtained a certification as an attorney specialized in intellectual property law in 2010. He regularly publishes essays in legal journals and is a co-author of Practitioner's Handbooks on Trademark as well as Design Law. He is on the Enforcement committee of the International Trademark Association (INTA), and is a member of ECTA (European Community Trademark Association). Paul speaks German, English and Spanish.



Mary Bagnall is a partner in the London office of Charles Russell LLP.  She has over 20 years experience in the field of brand protection, enforcement and exploitation, including setting up and leading the trade mark filing practice at a leading International law firm before joining Charles Russell. 

Ms Bagnall regularly advises in relation to brand clearance and trade mark and design registration, and has particular expertise in the prosecution of complex and challenging trade marks including shapes, colours and trade dress, and marks requiring evidence of acquired distinctiveness or secondary meaning. She has extensive experience in intellectual property dispute resolution including trade mark infringement and "passing off" proceedings, copyright and design actions, trade mark registry proceedings in the UK and in relation to Community Trade Marks at the Office for the Harmonization of the Internal Market ("OHIM"), and appeals both to the UK courts and the Court of Justice of the European Union.

She also advises and represents clients in relation to Internet and domain name issues including ICANN, Nominet and Czech Arbitration Court proceedings (covering .eu domains), dealing with cybersquatters and cybersmearers, and infringements on Internet auction sites, and in relation to advertising issues including copy clearance, complaints to the UK Advertising Standards Authority, and issues relating to comparative advertising and product denigration.

Ms Bagnall works with a wide variety of brand owners including SMEs and household names across diverse industries, particularly in the field of retail, design, leisure, sport and entertainment, in the protection and enforcement of all aspects of their brand and intellectual property rights.

Ms Bagnall is admitted as a Solicitor of the Senior Courts of England & Wales. She is a member of the Institute of Trade Mark Attorneys in the UK, and is active in INTA, having sat on a variety of committees, including Well Known Trade Mark, and Non-Traditional Trade Marks. 

The latest edition of Chambers UK notes that "clients are impressed with Mary Bagnall, noting her 'very commercial outlook' and ability to 'think outside the box'".  She is referred to in the World Trademark Review 2013 as "particularly dexterous with non-traditional marks". Ms Bagnall is also regularly featured in the UK edition of the Legal 500 where she is described has having an 'in-depth knowledge of UK trade mark and copyright law, and ... extremely detail oriented', with particular expertise in protection issues for shape and colour trade marks" (2012), being "prudent in her advice and [showing] great understanding of the client's needs and objectives" (2010) and "very knowledgeable and thorough" (2009).