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Fundamentals of Trademark Law in the Global Marketplace 2014


Speaker(s): Anne Hiaring Hocking, Beth M. Goldman, Christopher E. George, Richard L. Kirkpatrick, Vijay K. Toke, Vineeta Gajwani
Recorded on: Jul. 1, 2014
PLI Program #: 51158

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


Beth M. Goldman, a partner in Orrick’s San Francisco office, is a member of the Intellectual Property Group. Her practice focuses on trademark and copyright law, licensing, Internet law and advertising clearance. She has been assisting clients in the selection and creation of brands, as well as their protection, for more than 20 years. Her experience includes worldwide prosecution and policing of trademarks, dispute resolution, UDRP proceedings and litigation before the Trademark Trial and Appeal Board. Her clients cover a variety of industries, including alternative energy, biotechnology, clothing, computer services, consumer products, credit card services, food and beverages, medical equipment, pharmaceuticals, software, and telecommunications.

She has spoken on trade dress for the Practising Law Institute on intellectual property, and on domain name and other issues for the International Trademark Association. She has served on various INTA committees.

Admitted in

  • California

Court Admissions

United States District Court

  • Northern District of California

Memberships

  • American Bar Association
  • Intellectual Property Section, State Bar of California
  • Bar Association of San Francisco
  • Chair of the Trade Dress Image Library Subcommittee of the Online Reference Committee, INTA (2012-2014)

Publications

  • Co-author, "Offensive But Not Unregistrable:Fed. Cir. Alters TM Law," Expert Analysis, Law360, January 2016
  • Co-author, "Proving Harm in Trademark Cases Post-Herb Reed," Expert Analysis, Intellectual Property, Law360, April 16, 2014
  • Co-author, "New Trademark Clearinghouse an Important Tool for Trademark Owners as New Generic Top-Level Domains Prepare to Launch," March 2013
  • Co-author, "Seeing Red: When It's a Trademark and When It's Not," October 2012
  • Co-author, "ICANN Publishes List of Applications in gTLD Expansion Program," July 2012
  • Co-author, "The Fourth Circuit Says, 'Not So Fast,' to Google and Revives Rosetta Stone's Direct and Contributory Trademark Infringement and Dilution Claims in Closely Watched AdWords Case," April 2012
  • Co-author, “The Latest (And Greatest?) Case In The AdWords Saga,” Expert Analysis, Intellectual Property, Law360: Litigation, Policy & People News, August 2011
  • Co-author, “Insurance Coverage for Trademark Matters,” Chapter 33, McCarthy on Trademarks and Unfair Competition, Fourth Edition.
  • Co-author, Trademark Section, Antitrust Counterattack in Intellectual Property Litigation Handbook, American Bar Association, April 2010.

Speeches & Programs

  • "Litigation Alternatives and Hot Topics in the U.S. and Abroad," Fundamentals of Trademark Law in the Global Marketplace 2015, Practising Law Institute, June 2015
  • "From Dot Coms to 'Not Coms':Protecting Marks, Enhancing Brands, Valuing & Transferring Rights," The State Bar of California, April 2015
  • "Trademark Infringement: Demonstrating Irreparable Harm to Obtain an Injunction, Navagating Inconsistent Court Treatment, Proving Harm With and Without Survey Evidence," Stafford Publications, January 2015
  • "IP Trademark, Copyright & Licensing Counsel Forum 2014," ALM, October
  • "Litigation Alternatives and Hot Topics in the U.S. and Abroad," Fundamentals of Trademark Law in the Global Marketplace 2014, Practising Law Institute, July 2014
  • “The Basics of Trademark and Copyright Law,” Understanding IP Law for In house Counsel & Non IP Lawyers, Bridgeport Continuing Education, December 2013.
  • “Foreign Trademark Filings,” Practical Strategies in International Trademark Filing Webinar, The State Bar of California, International Law Section, August 2013.
  • “Litigation Alternatives and Hot Topics in the U.S. and Abroad,” Fundamentals of Trademark Law in the Global Marketplace 2013, Practising Law Institute (July).
  • Roundtable on WIPO Trademark Registration Strategies and Updates from Geneva, The State Bar of California, 2013 (March).
  • “Special Issues in Copyright and Trademark Law,” IP Issues in Business Transactions 2013, Practising Law Institute (February).
  • “Litigation Alternatives and Hot Topics in the U.S. and Abroad,” Understanding Trademark Law in the Global Marketplace 2012, Practising Law Institute (July).
  • Panelist at the 2nd Annual Madrid Protocol Seminar, State Bar of California IP Section and International Law Section, 2012 (February).
  • “Hot Topics, Recent Cases & Litigation Alternatives,” Understanding Trademark Law in the Global Marketplace 2011, Practising Law Institute (July).
  • “Handling Complex Prosecution Issues,” Host of INTA Roundtable, 2011 (April).
  • “International Law Committee In-Person Roundtable: WIPO Trademark Registration Strategies and Updates from Geneva,” The State Bar of California, November 2010.
  • “Policing Trademarks on the Internet and the Web 2.0,” Host of INTA Roundtable, 2010 (January).
  • “Breaking Up Is Hard To Do - The Ethics of Trademark Client Disengagement,” AIPLA 2009 Spring Meeting (May).
  • “Intellectual Property for Business Lawyers,” CEB presentation, 2009 (May).
  • “Proper Trademark Use,” Host of INTA Roundtable, 2009 (February).
  • “Internet Domain Names: A Trademark Practitioner’s Point of View,” Host of INTA Roundtable, 2008 (April).
  • “Developments in Fraud Upon the U.S. Patent and Trademark Office,” Host of INTA Roundtable, 2006 (April).
  • “Trademark Dilution Act,” Host of INTA Roundtable, 2007 (April).
  • “Legal Issues Related to Advertising,” Annual presentation to AAAA Northern California Institute of Advanced Advertising Studies, 1999 through 2006.
  • “Trademark Enforcement and Pre-Litigation Strategies,” Host of INTA Roundtable, 2004 (October).
  • “Protection of Famous Marks in North America,” Moderator for INTA Annual Meeting Table Topic, 2003 (May).
  • "Business Law Recent Developments,” CEB presentation, 2003 (March).
  • “A Comparison of CTM and Madrid Protocol TM Applications,”Host of INTA Roundtable, 2004 (January).
  • “Complexities of Multi-Jurisdictional Protection,” INTA Basics of U.S. Trademark Law Forum, 2003 (February).
  • “Trade Dress,” SFIPLA presentation 2002 (April).
  • “International Trademark Prosecution:Considerations and Tactics for U.S. Filers,” Host of INTA Roundtable, 2002 (September).
  • “Trade Dress,” Continuing Education of the Bar presentation, 2002 (May).
  • “Trade Dress,” Practising Law Institute presentation, 2001 (November).
  • “Unconventional Trademarks,” Host of INTA Roundtable, 2000 (October).

Related Practice Areas

  • Trademark, Copyright & False Advertising Litigation & Counseling
  • Life Sciences
  • Intellectual Property

Education

  • J.D., University of California, Berkeley School of Law
  • Ph.D., English Literature and Language, University of California, Berkeley
  • B.A., magna cum laude, State University of New York

Honors

  • Ranked in California for prosecution and strategy in the World Trademark Review 1000
  • Named a leading practitioner in the "Guide to the World's Leading Women in Business Law" by ExpertGuides (2013)
  • Listed for trademark in The World's Leading Trademark Professionals 2012 (World Trademark Review 1000)
  • Listed for trademark work in WHO'S WHO LEGAL's 2009 California directory
  • Recognized as one of the "World's Leading Lawyers" for trademark law in Legal Media Group's Expert Guides
  • "Trademark Insider Award" for her U.S. trademark activity by NameProtect in 2003 and 2004
  • Named among the BTI Consulting Group's 2002 Law Firm Client Service All-Star Team, based on a survey of client service and satisfaction


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


Position/Title:             Managing Counsel – Trademarks and Brands

 

Place of Business:      Intel Corporation

 

Primary Areas of Practice:      Trade mark counseling, clearance, filing, prosecution and enforcement.

 

Law School:               Emory School of Law


Vijay’s practice centers on intellectual property, with a particular focus on trademark and copyright. Vijay has represented clients in jury trials in both federal and state court in intellectual property matters, trade secret, and other commercial disputes. He also represents clients in ex parte and inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). Vijay has co-authored amicus appellate briefs for The International Trademark Association (INTA) in influential trademark and false advertising cases, including cases before the Supreme Court of the United States and the Third Circuit Court of Appeals. Vijay also assists clients with US and international trademark registration, counseling, licensing, portfolio management, and enforcement. Vijay's clients include acclaimed restaurants, award-winning international wineries, retailers, clothing and jewelry designers, and biomedical and tech companies. He has also represented clients in disputes over the sale of fraudulent collectible wines.

Vijay is a frequent writer on topics in trademark and copyright law. He has published articles, or has been quoted or referenced, in various publications, such as The Financial Times, Managing IP online magazine, The Recorder, the ABA Journal, BusinessWeek, and the San Francisco Chronicle. Vijay is also a regular presenter on topics in trademark law for the Practicing Law Institute (PLI). He has also taught intellectual property for the Bordeaux School of Management and serves on the faculty of the Mind The Bridge startup school in San Francisco.

Vijay is a member of the State Bar of California, the Federal Bar IP Section (for whom he serves as Membership Director), and the International Trademark Association, for whom he serves on the Leadership Development Committee. He also serves on the Board of Governors of UC Hastings College of the Law. He is admitted to practice before the United States District Court for the Northern, Eastern, Central, and Southern Districts of California, the Ninth Circuit Court of Appeals, and the United States Supreme Court. Vijay has been named to the Rising Stars Super Lawyers list in IP litigation since 2010.

Vijay is an avid amateur chef, and loves to try new and interesting recipes. He is also nearly fluent in Italian, which aids him immensely when ordering dinner at Italian restaurants, watching Fellini films, or working with Italian companies.

  • Special Expertise:
    • Intellectual Property, trade secret, and commercial litigation
    • Trademark clearance, counseling, prosecution, portfolio management, and enforcement
  • Education:
    • Swarthmore College: Bachelor of Arts, Biology
    • University of California, Hastings College of Law: Juris Doctor


Vineeta Gajwani is Senior Legal Counsel of IP at Electronic Arts Inc. (EA). EA is a leading developer and publisher of interactive entertainment software for personal computers, mobile devices, handheld game players, and advanced entertainment systems. Vineeta oversees the company’s trademark, copyright and domain portfolios, handles IP disputes and manages the company’s worldwide IP enforcement program. She also provides legal counsel on various IP matters, including content clearance and licensing.  Prior to joining EA, Vineeta worked at Foley & Lardner LLP, where her practice focused on IP, antitrust and commercial litigation. Vineeta received a Bachelor of Arts degree from Duke University and a Juris Doctorate degree from Washington University School of Law.