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Advanced Trademark Law Annual Review 2015

 
Author(s): Kieran G. Doyle, Sheldon H. Klein
Practice Area: Intellectual Property
Published: Mar 2015
PLI Item #: 59429
CHB Spine #: G1221

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


Sheldon Klein is a member of the firm’s Intellectual Property, Technology & Privacy team and the Litigation and Franchise & Distribution practice groups. He has over 30 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 and enforces IP rights via federal district court litigation, appellate 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, advertising, telecommunications, broadcast, entertainment, manufacturing, building, food, pharmaceutical, medical device, banking, insurance, and hospitality.

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 start-up 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
  • Publications
  • “U.S. Department of Commerce Announces Intent to Transition Key Internet Domain Name Functions,” coauthor, INTABulletin, May 1, 2014
  • “Trademark Clearinghouse Registrations,” Gray Plant Mooty IP Alert, April 2013
  • “What You Need to Know About the New Internet Generic Top-Level Domains (gTLDs),” Gray Plant Mooty IP Alert, June 2012
  • “Case Study: Rosetta Stone v. Google,” coauthor, Law360, May 22, 2012
  • “Protect Your Brand From Potential Harm In The ‘.XXX’ Domain Name Space,” Gray Plant Mooty IP Alert, September 2011
  • “A Key Victory for Keyword Advertising Programs: The Ninth Circuit’s Decision in Network Automation, Inc. v. Advanced Systems Concepts, Inc.” coauthor, IPLaw360, March 17, 2011
  • “U.S. Courts Continue to Differ on the ‘Issue of Use’ in the Context of Search Engine Keyword-Triggered Advertising,” coauthor, Trademark World, December/January 2007
  • “Use of Trade Marks in Hyphen-triggered Search Engine Advertising: A Hot Topic in Internet Law,” coauthor, Metropolitan Corporate Counsel, May 2005, June 2005
  • “The Role of Trade Mark Use in U.S. Infringement, Unfair Competition, and Dilution Proceedings,” chapter coauthor, Trade Mark Use, Oxford University Press, 2005
  • “Practice Pointers Protecting Company and Trademark Nicknames,” coauthor, The Intellectual Property Strategist, June 2002

Presentations

  • “Advanced Seminar on Trademark Law,” Practising Law Institute, Moderator and Speaker, 2007-2014
  • “Trademark Boot Camp,” AIPLA, 2009, 2010, 2012, 2013
  • “Hot IP Topics for High Tech Companies and their Investors,” Moderator, AIPLA Mid-Winter Institute, January 2013
  • “Proposed Changes in Section 8 Timing,” 23rd Annual Intellectual Property Owners Conference on USPTO Law and Practice, December 2012
  • “Rosetta Stone: Unlocking the Fourth Circuit’s Keywords Advertising Decision and Previewing Its Consequences,” ABA Webinar, June 14, 2012
  • Rosetta Stone, Inc. v. Google, Inc.” Law Seminars International Telebriefing, 2011
  • “Is the N.A.D. the Right Forum for You?” AIPLA Webinar, 2010
  • “Legal Considerations in Selecting, Protecting, & Using Brand Names,” BrightTALK Live and On Demand Webinar, www.brighttalk.com, 2010
  • “Trademark Declaratory Judgment Actions—Using the Bazooka While Avoiding the Landmines,” Practising Law Institute, Moderator and Speaker, 2010
  • “Understanding Trademark Law,” Practising Law Institute, Moderator and Speaker, 1995-2009
  • “Arguing Advertising Disputes Before the N.A.D.,” AIPLA Spring Meeting, 2009
  • “Hot ICANN/Domain Name/Trademark Topics,” Intellectual Property Law Association of Florida, 2008
  • Viacom Intl., Inc. v. YouTube, Inc.,” C-SPAN interview on The Communicators, 2007
  • “Keyword Triggered Advertising/Sponsored Links,” INTA Annual Meeting, 2007
  • “Hot Internet Trademark Topics,” INTA Annual Meeting, 2006
  • “Potential Trademark Conflicts Arising from Aggressive Internet Marketing,” AIPLA Mid-Winter Institute, 2005
  • “Trademarks and Keywords, and Other Hot Internet/Trademark Topics,” AIPPI Israel Chapter, 2004
  • “Opposition and Cancellation Actions/TTAB Practice,” INTA Trademark Administrator’s Conference, 2003
  • “U.S. Discovery Tools,” INTA Annual Meeting, 2002
  • “Trademarks and the Internet: Recent Developments,” Michigan State Bar IP Law Section Annual Meeting, 2001
  • “Music on the Internet,” Practising Law Institute, Moderator and Speaker, 2001
  • “The Digital Millennium Copyright Act,” Intellectual Property Institute of Canada Annual Meeting, 2000
  • “Advanced Practice Before the Trademark Trial and Appeal Board,” INTA, 1995, 1997, 1999
  • “Trade Dress Protection,” AIPLA Spring Meeting, 1995

Bar Admissions

  • District of Columbia
  • Maryland
  • U.S. Court of Appeals for District of Columbia, Fourth, Sixth, and Ninth Circuits
  • U.S. District Court, District of Columbia
  • U.S. District Court, Eastern District of Michigan
  • U.S. District Court, Maryland
  • U.S. Supreme Court

Honors and Distinctions

  • “Washington, DC Super Lawyer,” Super Lawyers, 2014
  • Leading Trademark Lawyer, The International Who’s Who of Business Lawyers, 2007-2014
  • “Leading Trademark Lawyer,” World Trademark Review 1000, 2011-2013
  • “Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013
  • AV® Preeminent™ Peer Review Rated from Martindale-Hubbell

Community Involvement

  • DC Law Students in Court Alumni Association Steering Committee
  • Jewish Federation of Greater Washington, Board of Directors
  • Jewish Community Relations Council of Greater Washington, Board of Directors
  • American Association of Jewish Lawyers & Jurists, Board of Governors; past president of DC Chapter
  • Melvin J. Berman Hebrew Academy of Greater Washington, Board of Trustees

Practice Areas

Intellectual Property
Advertising
Social Media
Litigation
Franchise & Distribution

Professional Activities

American Intellectual Property Law Association, former officer and board member; AIPLA Fellows, past chair; Trademark Leadership Group, member; Trademark Law Committee, past chair; Trademark/Internet Committee, past chair; Trademark Relations with the U.S. Patent and Trademark Office, past chair; Franchise Law Committee, past chair

Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN)

International Trademark Association, Internet Committee

U.S. Patent and Trademark Office, Trademark Public Advisory Committee, past member

Bar Assn. of DC, Patent, Trademark & Copyright Section, past chair

Education

George Washington University National Law Center, J.D., with honors, 1980
University of Michigan, B.A., with high distinction, 1977