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Advanced Trademark Law Annual Review 2014


Speaker(s): Jerre B. Swann, Joseph N. Welch, II, Lori L. Wiese-Parks, Lynn S. Fruchter, Mark V. B. Partridge, Philip G. Hampton II, Richard S. Mandel, Stephanie H. Bald
Recorded on: Apr. 3, 2014
PLI Program #: 51380

Mr. Swann graduated from Williams College in 1961 where he was a National Merit Scholar and was elected to Phi Beta Kappa.  As a Rotary Foundation Fellow, he then studied juris­prudence at the University of St. Andrews in Scotland, and in 1962, he entered Harvard Law School, graduating in 1965.  He clerked for two years for the Hon. Dudley B. Bonsal in the Southern District of New York, and in October 1967, he joined Kilpatrick Townsend, becoming a partner in 1972.

Mr. Swann has increasingly devoted his practice to the litigation of trademark and unfair competition claims, both locally and nationally.  He has served as lead counsel (or as special counsel in connection with survey and expert witness issues) for major corporations and on behalf of major brands throughout the United States. 

He has co-edited, or authored chapters on trademark subjects in, numerous publications. Those dealing with surveys include Trademark and Decep­­tive Advertising Sur­veys (2012) (co-edited with Shari Diamond); and the chapter, “U.S. Trademark Surveys,” in R. M. Corbin and A. K. Gill (eds), Survey Evidence and the Law Worldwide (2007).

He has authored more than twenty articles on trademark subjects, including: Likelihood of Confusion Studies and the Straitened Scope of Squirt, 98 TMR 739 (2008); and Confusion Factor Analysis - A Cognitive Update, 101 TMR 1223 (2011).

He has co-authored more than twenty other articles on trademark subjects.

He has spoken at more than thirty local and national seminars dealing with trademark sub­jects, including: Proving a Likelihood of Confusion in Trademark Cases, Southwest Legal Foundation in Dallas in April, 1985; Examination of Survey Witnesses, INTA’s Trademark Trial Advo­cacy Workshop in Chicago in July, 2000; Interna­tional Sur­veys, INTA’s Advanced Trade­mark Symposium in New York City, March 6, 2001; Surveys and Daubert Motions, INTA’s Annual Meeting in Amsterdam, Netherlands, May 3-7, 2003; Dilu­tion Surveys, American Mar­ket­ing Association in Washing­ton, D.C., May 30, 2003; Dilution Sur­veys after V. Secret, AIPLA Annual Meeting in Washing­ton, D.C. on October 30, 2003; The Lawyer’s Role in Developing Surveys for Litigation, Intellectual Property Section of the Georgia Bar Association on March 7, 2006; The Survey Blues: Litigation Survey Errors Causing Exclusion or Reduced Weight, INTA’s Annual Meeting in Chicago, April 28-May 2, 2007; and Likelihood of Confusion Surveys, Thomson Webinar, April, 2009.

He has served as a director of the International Trademark Association (1989-91), and as the Domestic Articles Editor (1986-88) and Editor-in-Chief (1988-90) of The Trademark Repor­ter.  He has also served, inter alia, on the Brief Amicus Committee, the Special Committee with respect to the TDRA, and the Dilution Committee.  He is a member of INTA’s panel of neutrals. He received the 2000 Ladas Memorial Award for his article, Dilution Redefined for the Year 2000, the 2002 INTA Volunteer Service Award for the Advancement of Trademark Law, and the 2009 INTA President’s Award.  He is an adjunct professor of Trademark Law at the University of Georgia Law School.


Mark V.B. Partridge is the founder of Partridge IP Law PC, a Chicago-based firm with a global practice helping corporations, entrepreneurs and creative professionals to protect brands, content and ideas.

A graduate of Harvard Law School, he has over 30 years of experience with litigation and transactions involving trademarks, copyright and internet issues.  As trial counsel, Mr. Partridge has successfully represented domestic and international corporations in bench and jury trials and appellate proceedings in the United States, and has coordinated international enforcement and litigation efforts around the world.

He has been lead IP counsel in major corporate transactions, helping clients to complete divestitures and licensing of famous brands in domestic and international deals valued in excess of $2 billion dollars.  He has also developed strategic plans for the selection, protection and enforcement of corporate brands and copyrights.

Mr. Partridge is known for his Internet expertise.  In 1998 he was selected by the World Intellectual Property Organization (WIPO) as an expert on the Internet Domain Name Process. As a WIPO panelist, Mr. Partridge has issued over 180 Uniform Domain Name Dispute Resolution Policy decisions, including three of the most frequently cited cases.  As the American Bar Association representative to the Internet Corporation for Assigned Names and Numbers, he has served on committees and working groups to help to develop rights protection mechanisms for new Internet domains.

Mr. Partridge is committed to the use of alternative dispute resolution (ADR) to resolve disputes.  He has served as an arbitrator for the American Arbitration Association and as a Lanham Act mediator in Illinois federal court.   As an advocate, Mr. Partridge has leveraged his ADR experience to help clients to achieve favorable, cost-effective mediated settlements.  Mr. Partridge is the author of many articles and the books, Trademark and Copyright Litigation:  Forms and Practice (Oxford University Press 2011), Alternative Dispute Resolution:  An Essential Competency for Lawyers (Oxford University Press 2009), and Guiding Rights: Trademarks, Copyrights and the Internet (2003). He has served as a director of the American Intellectual Property Law Association, president of the Lawyers Club of Chicago and is an adjunct professor at the John Marshall Law School, teaching advanced courses in trademark law, litigation and transactions.  


PRIMARY AREAS OF PRACTICE

Practice is focused on intellectual property litigation and counseling, including copyright, trademark and unfair competition law.  Represent clients in the sports, entertainment, food and drug industries, among others, including in litigated disputes in the federal courts, contested proceedings in the United States Patent and Trademark Office and arbitrations under the ICANN Uniform Dispute Resolution Policy. 

LAW SCHOOL

NEW YORK UNIVERSITY SCHOOL OF LAW,J.D., cum laude, May 1985
NYU Law Review, Note & Comment Editor

Published Note, Liquor Advertising: Resolving the Clash Between the First and Twenty-First Amendments in NYU Law  Review (April 1984);Order of the Coif

WORK HISTORY

Cowan, Liebowitz & Latman, P.C. – Feb. 1988 to present; shareholder since Jan. 1993

Weil, Gotsahal & Manges (New York, NY) – associate, Sept. 1985 to Jan. 1988

PROFESSIONAL MEMBERSHIPS AND ACTIVITIES

American Arbitration Association - member of Commercial Panel for New York division
Southern District of New York - member court-appointed mediation panel
Cardozo School of Law - Adjunct Professor, Advanced Trademarks (1995-1998)

SPEAKING ENGAGEMENTS AND PUBLICATIONS

Speaker – ABA Intellectual Property Law Conference, “Taking Depositions in Trademark Cases,” 2010

Speaker – PLI, Understanding Trademark Law, 2004-2013

Author – Association of Food Industries, “Food for Thought: Protecting the Value of Your Brand,” 2007

Speaker - Fancy Food Show, Protecting Your Brand, 2003

Speaker - International Trademark Association (INTA), Annual Meeting 2002 and TTAB       for Novices Program 2000

Speaker - New York Women in Film and Television/AAA, Alternative Dispute Resolution, 1999

Author - New York Law Journal, Outside Counsel column on Domain Names, 2002

Author - IP Litigator, Copyright column, 1995-1998


Name: Lynn S. Fruchter                               

 

Position/Title: Of Counsel                

 

Firm or Place of Business:    Cowan, Liebowitz & Latman, P.C.

 

Address: 1133 Avenue of the Americas, NY, NY 10036    

 

Phone: 212 790-09207                       

 

Fax:                 212 575-0671 

 

E-Mail:           lsf@cll.com                

 

Primary Areas of Practice:    Trademarks and Copyrights

 

Law School:                Harvard Law School 

 

 

Work History:            Kaye Scholer 1975-1983

                                     Cowan Liebowitz  1983 - present

 

Professional Memberships:  NYS Bar Association


Philip G. Hampton, II is a partner in the Intellectual Property Litigation Practice Group in the Washington, D.C. office of Haynes and Boone, LLP.  Mr. Hampton has practiced intellectual property law, focusing on patent and trademark prosecution, litigation and counseling, for more than 30 years.  Not only was Mr. Hampton the Assistant Commissioner for Trademarks at the USPTO from 1994 until 1998, he has been an expert witness in approximately two dozen trademark infringement actions.  Mr. Hampton has been chair or co-chair of several trademark committees of the IP section of the American Bar Association, served on the Board of Directors of American Intellectual Property Law Association, served on several committees of the International Trademark Association and is the immediate past president of the American Intellectual Property Law Education Foundation.  He earned his B.S. and M.S degrees in chemical engineering from MIT in 1977 and his law degree from the University of Chicago School of Law in 1980.  Mr. Hampton is admitted to practice in New York and the District of Columbia and before the U.S. Patent and Trademark Office.


Primary Areas of Practice: Intellectual Property; Business

Law School/Graduate School: Creighton University School of Law, cum laude 1981

Work History: 

Gray, Plant, Mooty (1999 to present)
Doherty Rumble & Butler (1986-1999)
Stolpestad, Brown & Smith (1981-1986)

Professional Memberships: 

Minnesota State Bar Association 
Ramsey County Bar Association
International Trademark Association (INTA)


Stephanie Bald specializes in trademark, false advertising, and unfair competition litigation, disputes, and strategic counseling. She has represented clients in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). Experienced in all aspects of litigation, Stephanie has authored winning trial briefs and dispositive summary judgment motions. She has obtained and defeated requests for emergency relief, including motions for temporary restraining orders, preliminary injunctions, and ex parte requests for discovery. Stephanie has handled a number of TTAB cases through trial, and also has significant appellate experience, having litigated trademark and domain name appeals before the Court of Appeals for the Federal Circuit and other courts of appeals.

Within her counseling practice, Stephanie advises clients on domestic and global trademark enforcement strategies and renders opinions on trademark infringement and dilution; false advertising; and the selection, use, registration, and licensing of trademarks. Stephanie is the current chair of the American Intellectual Property Law Association’s (AIPLA) Trademark Litigation Committee and has written extensively on trademark issues, including as a contributing author to leading treatises on trademark remedies and TTAB practice and procedure. A strong believer that lawyers should serve not only their clients but also their communities, Stephanie has devoted hundreds of hours to pro bono work. Most recently, she obtained asylum for a prominent human rights activist and family, who fled their home country after several attempts were made on their lives.

Stephanie previously practiced trademark and copyright law for nine years as an associate and then partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.

Professional Activities

  • American Intellectual Property Law Association (Chair, Trademark Litigation Committee, 2012-present; Vice Chair, Trademark Litigation Committee, 2012; Case-Summary Report Coordinator, Trademark Litigation Committee, 2010—2012)
  • International Trademark Association
  • District of Columbia Bar Association
  • Illinois Bar Association
  • Guest Lecturer, American University, Washington College of Law (U.S. Trademark Law) (2008—present)

Select Publications

  • Coauthor. “Ethical Issues for Trademark Lawyers Practicing before the U.S. Patent and Trademark Office,”Landslide, ABA, Volume 5, November 5, 2013.
  • Coauthor. “Ethical Issues in U.S. Trademark Prosecution and TTAB Practice,” The John Marshall Review of Intellectual Property Law, Winter 2010—2011.
  • Coauthor. “Navigating the TTAB’s News Rules: A Survey of Cases Under the New Rules and Their Impact on TTAB Practice and Procedure,” AIPLA Quarterly Journal, Winter 2010.
  • Coauthor. “Motion Practice,” in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, 2010.
  • Coauthor. “Accelerated Case Resolution: Expedited Litigation for Less Before the TTAB,” BNA’s Patent, Trademark & Copyright Journal, Nov. 27, 2009.

Bar and Court Admissions

  • District of Columbia
  • Illinois
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. District Court, District of Columbia
  • U.S. District Court, District of Maryland

Education

  • American University, Washington College of Law, J.D., cum laude, 2004
  • American University, School of International Service, M.A., International Politics, 2004
  • Denison University, B.A., English Literature, French, summa cum laude, Phi Beta Kappa, 2001
     


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.