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Global Trademark Search and Application Workshop 2014


Speaker(s): Anne Hiaring Hocking, Dr. Marcus von Welser, Laura Wen-yu Young, Paul J. Schmidt, Richard L. Kirkpatrick
Recorded on: Apr. 24, 2014
PLI Program #: 53481

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


Practice Areas
Mr. Schmidt specializes in intellectual property law, contentious and non-contentious, as well as cross-boarder arbitration and litigation.

Professional Experience
Mr. Schmidt has extensive experience in all aspects of PRC trademark practice.  He is experienced in managing large trademark portfolios and has helped a number of foreign brand owners achieve PRC “well-known” trademark status.  He has overseen the acquisition of very high-profile marks and directed the recovery of numerous stolen house-marks.

With respect to enforcement, Mr. Schmidt has successfully prosecuted numerous administrative, civil and criminal IP cases in the PRC.  A criminal enforcement matter he helped direct, involving a coalition of automobile manufacturers, was chosen as a top QBPC ("Quality Brands Protection Committee") case in 2004.

Mr. Schmidt began his legal career as a Colorado State prosecutor in the United States.  He has substantial trial experience in both the US and the PRC.  In 2003, he became associated with Baker & McKenzie’s PRC trademark group.  In November of 2010, he joined Jun He as counsel.

Back in 1983, Paul was an actor in the Jacky Chan Kung-fu movie “Project A”.

Education
J.D., University of Colorado School of Law, 1992
Graduate Studies, University of Michigan, 1986-88
B.A., Colorado College, Colorado Springs, 1985

Language Skills
English and Mandarin


Born in San Francisco, to a father from Shanghai via Taiwan, and an American mother, Ms. Young grew up in a Chinese-speaking household, and was educated at UC Berkeley. She received her Juris Doctor from Boalt Hall, UC Berkeley, and began her practice by splitting her time between San Francisco and Taipei, Taiwan in1988. She added mainland China into her regular schedule in 1994, when Wang& Wang added its Beijing office. She was admitted in California and to the Federal District Court, Northern District of California in 1988, and was registered as a foreign legal expert with the Taipei Bar Association in 2004, and with China's Ministry of Justice in 2005.

Admissions

  • California, 1988
  • Federal District Court, Northern District of California, 1988

Memberships and Professional Organizations

  • State Bar of California (Member, 1988 - present)
  • Taipei Bar Association (Member, 2004 - present)
  • UC Berkeley Foundation (Trustee, 2010 - present)
  • Boalt Hall Alumni Association (Member, Board of Directors, and Treasurer, 1995 - 2000)
  • American Bar Association (Member, Section on International Law, 1988 - present)
  • Bar Association of San Francisco (Member)
  • International Trademark Association (Chair, China Subcommittee, 1998 – 2003, Member, China Trademark Office committee, Internet Committee, Famous and Well Known Marks committees 2003-present)
  • University Club of Taipei (Member)

Languages         

English(fluent), Chinese (fluent), Spanish (reading), and French (reading)

Selected Publications

  • “Protecting Trade Secrets in China”, Practicing Law Institute: Trade Secrets 2013: What Every IP Attorney Should Know, February 2014
  • “Taiwan Advertising Law”, in World Trade Press’ A to Z World Business, February2013
  • “Protecting Trade Secrets in China”, Practicing Law Institute: Trade Secrets 2013: What Every IP Attorney Should Know, February 2013
  • “Intellectual Property Law”, chapter in Intellectual Property Law of China,  Juris Publishing, 2011
  • “Expatriates Face China’s Criminal Law System”, in ABA’s International Law News, vol.40, no 2, Spring 2011
  • "Dilution in Taiwan and China" in New Matter, California Bar Association's IP Journal, Fall 2010
  • "Intellectual Property in China" in Doing Business in China, Juris Publishing, 2009
  • "Enriching the Law School Curriculum: Summer Law Institute at the Kenneth Wang School of Law, Soochow University in Suzhou, China," Volume 26, No. 4 Penn State International Law Review, Spring 2008
  • "Building Bridges: Fostering Cross Cultural Learning in the Law," co-author, International Association of Law Schools, Suzhou, China, October 2007
  • "China's Market Economy: An Historical Perspective," The Transnational Lawyer (now known as the Pacific McGeorge Global Business and Development Law Journal), vol. 18:1, 2004
  • "China Staff Employment Law Guide: Taiwan," CCH Asia Pte Limited, 2003
  • "Telecommunications Regulation in China," CCH's China Law Update, September 2003
  • "Dealing with China's Compensation Issues," CCH's People Strategist, May 2002
  • "Taiwan Employment Law," CCH Asia Pte Limited, 2002, updated annually
  • "Hiring Household Help in China," West Publishing's International HR Journal, Winter 2001
  • "Compensation Issues in China," West Publishing's International HR Journal, Summer 2001
  • "An Expatriate's Nightmare: Entangled in the Chinese Criminal Justice System," West Publishing's International HR Journal, Winter 2000
  • "New Internet and E-Commerce Regulations in China," Kluwer's International Lawyers Newsletter, July/August 2001
  • "China: Overview of the Criminal Law System for Foreign Managers," Kluwer's International Lawyers Newsletter, July/August 2000
  • "Expatriate Residence in China," Kluwer's International Lawyers Newsletter, May/June 2000
  • "Hiring and Managing Employees in China," Warren Gorham Lamont's International HR Journal, Summer 2000
  • "Expatriates Facing Criminal Charges in China," Warren Gorham Lamont's International HR Journal, Spring 2000
  • "Expatriate Residence in China," RIAA's International HR Journal, Fall 1999
  • "In China, 'Discoveries' are not Patentable," The National Law Journal, September 27, 1999
  • "Protection of Pharmaceuticals in China," Pearson's China Law for Business, Vol. 4, No. 9, January 1999
  • "Health Care of Foreign Managers in China," Warren Gorham Lamont's International HR Journal, 1998
  • "Expatriates Stationed in China Importing Household Effects," Warren Gorham Lamont's International HR Journal, 1998
  • "China's Anti-Dumping Regulations," Pearson Publishing's China Law for Business, 1998
  • "Latest Sino-US Agreement Brings No New Protections for IP," IP Worldwide, November/December 1996
  • "Unfair Practices in Software Patent Licensing," Practising Law Institute, June 1996
  • "Comparison of Taiwan and China's IP Regimes," National Law Journal, May 1996
  • "Taiwan's Compliance with TRIPs," East Asian Executive Reports, April 1996
  • "("On US Section 301 Actions") co-author, (IP Studies), Beijing, 1996
  • "Analysis of the 1995 Sino-US Agreement," IACC Update, Fall 1995
  • "New Laws Bring Taiwan Closer to WTO Regime," National Law Journal, March 1995
  • "Taiwan's New Patent Law," East Asian Executive Reports, 1994

Selected Lectures and Appearances

  • “Protecting Trade Secrets in China,” Practicing Law Institute, February 21, and March 24,2014
  • “Teaching Law in Asia”, at INTA Leadership Meeting, Miami, November 13, 2013
  • “Protecting Trade Secrets in China,” Practicing Law Institute, February 12, 2013
  • “Dilution and Squatting in China and Taiwan,” California State Bar, Standing Committee Continuing Legal Education Programs, March 2010
  • "Perspectives on Chinese Legal Education," Keynote Speech to Conference: Experiential Legal Education in China, Pacific/McGeorge School of Law, Sacramento, January 2008
  • "Trademark Dilution in China and Taiwan," International Trademark Association, Annual Meeting, Chicago, May 2007
  • "Practitioners' Perspectives on East Asian Corporate Governance," Berkeley Center for Law, Business and the Economy conference on Corporate Reforms in East Asian, UC Berkeley, May 2006
  • "IP Protection in China and Taiwan," Hastings Chinese Law and Culture Society, November 2005
  • "The Importance of Psychology to the Law" (in Chinese), Keynote Speech, Fifth Annual Chinese Psychology Scholars Conference, Suzhou, China, July 2005
  • "Licensing in China: Context and Practice," Licensing Executives Society, Annual Meeting: China Add-on Session, October 2005
  • "China's Legal Education at a Cross-roads: Confucius vs. Socrates," China Law Review, Berkeley, California, February 2005
  • "From Communism to Capital Markets: A Quarter Century of Chinese Economic and Legal Development," Berkeley Legal Studies Association, February 2005
  • "Cultural Foundation of Chinese Common Law" (in Chinese), Chinese National Dean's Symposium, Soochow University, July 2004
  • "Foundations of Chinese Law," lecture series at Pacific/McGeorge School of Law, September - October 2003
  • "("Exporting Chinese Trademarks") (in Chinese, International Trademark Association, Beijing and Shanghai, March 2003
  • "Trademark Licensing" (in Chinese), International Trademark Association's Shanghai Forum, April 2002
  • "Intellectual Property Law for Software Sales Teams" (in Chinese), Beijing Software Association, April 2001
  • "Chinese International Anti-Counterfeiting Programs," International AntiCounterfeiting Coalition Annual Conference, Fall 2001
  • "Practical Advice for China and Taiwan Anti-Counterfeiting Programs," International AntiCounterfeiting Coalition, Fall 2000
  • "The Asian Meltdown One Year Later," International AntiCounterfeiting Coalition Annual Conference, May 1999
  • "The Effect of the Asian Financial Crisis on Counterfeiting" (Moderator and Speaker), International AntiCounterfeiting Coalition Annual Meeting, May 1998
  • "Defending Software Patent Infringement Claims," Practising Law Institute, June 1997
  • "Coping with Software Patents" (Moderator), State Bar of California, November 1996
  • "Berkeley Roundtable on Law and Technology" (Moderator), March 1996
  • "Legal History of China and Taiwan and Protecting American IP," Harvard Asia Business Conference, January 1996
  • "Protection of American Rights in China and Taiwan," International AntiCounterfeiting Coalition Annual Conference, May 1995
  • "Protecting IP in China and Taiwan," State Bar of California, February 1995
  • "Protecting IP in China and Taiwan," Seminars for State Bar of New York and Bar Association of the District of Columbia, 1994
  • "Protection of Computer Software in Taiwan," AT&T's IP Seminar, May 1992
  • "Taiwan Copyright Law and Enforcement Procedures" (in Chinese and English), U.S. Copyright Office, August 1991
  • "Protecting American Electronics in Taiwan," American Electronics Association, June 1990
  • China, Taiwan, Hong Kong Law Seminar (Moderator), Bar Association of San Francisco, January 1990
  • Various Appearances on NPR Marketplace, etc. regarding legal issues in Taiwan and China

Academic Courses Taught

  • China Law and Society (Chinese Legal History), UC Berkeley, Boalt Hall's Jurisprudence and Social Policy Program (2003 - 2006)
  • Foundations of Law: Greece, Rome, China, UC Berkeley, Rhetoric Department (2004 - 2010)
  • International Intellectual Property, Cornell Univeristy Law School (2013), Pacific/McGeorge School of Law (2006 - 2013)
  • International Business Transactions, Soochow University, Kenneth Wang School of Law, China (ABA accredited course) (2004 - present)


Dr. Marcus von Welser is a partner of the IP law firm Vossius & Partner. He was admitted to the German Bar in 2002 and obtained a certification as an attorney specialized in intellectual property law in 2008. He advises and represents clients in all areas of intellectual property law, in particular copyright, trademark and competition law. He also has extensive experience in negotiating contacts and litigation, inter alia before the Court of Justice of the European Union in Luxembourg. Included among the longstanding clients he advises on a regular basis are leading companies from various sectors, such as software, electronics, fashion, furniture, food, automotive and pharmaceuticals.

Dr. Marcus von Welser He is a lecturer on international copyright law and anticounterfeiting at the Humboldt-University of Berlin. He studied at the universities of Berlin and Warwick (United Kingdom) where he graduated with a Master of Laws (LL.M.). He obtained a Doctorate Degree in copyright law from the Christian- Albrechts-University of Kiel.

Dr. Marcus von Welser is co-editor and co-author of several publications, inter alia a Manual on Anti-Counterfeiting and a Manual on Copyright Law.