2023 Trademark Boot Camp - Arlington, VA
June 15 to 16, 2023
Location
Arlington, VA
Contact
Credits
960 CLE Minutes Including up to 90 Minutes of Ethics (pending)
Registration
Learn the Basics of Trademark Practice at our comprehensive Boot Camp - now in it's 13th year!
The program is a two-day comprehensive CLE program designed for new practitioners and others interested in learning the basics of trademark practice. Day one includes instructional sessions on trademark clearance, pre-filing considerations, trademark prosecution, and international trademark filing strategies. Day two focuses on disputes, including trademark investigations, cease-and-desist campaigns, Trademark Trial and Appeal Board (TTAB) practice, and an introduction to trademark litigation.
Participants will participate in two hands-on workshops taught by experienced trademark practitioners: (1) ordering and analyzing search reports and preparing clearance opinions and (2) responding effectively to Office Actions. Representatives from the United States Patent and Trademark Office will serve as instructors for the Office Action response workshop, and the second day of the program will feature a panel of TTAB Judges and/or Interlocutory Attorneys.
Downloadable List of Nearby Lodging
Program Agenda:
Thursday, June 15, 2023
8:00 am | Trademarks 101 Anita Polott, Morgan Lewis |
9:15 am | Developing a Filing Strategy Monica Riva Talley, Sterne Kessler Goldstein & Fox |
10:15 am | The Application Process Jennifer Fraser, Dykema Gossett, PLLC |
11:15 am | International Filing Basics Kate Dayton, Fross Zelnick, PC Kasey Boucher Pierter, Pierce Atwood, LLP |
12:15 pm | Lunch |
1:15 pm | Breakout Session 1: Hands-on Training: Ordering Trademark Clearance Search Reports; Analyzing Search Reports; Preparing Opinions Richard C. Gilmore, Maschoff Brennan Lynn Jordan, Kelly IP, LLP |
3:00 pm | Breakout Session 2: Hands-on Training: Responding Effectively to Office Actions |
5:00 pm | Day 1 Concludes |
Friday, June 16, 2023
8:00 am | Cease & Desist Campaigns Danae Robinson and Kim Arriola, Pirkey Barber, PLLC |
9:00 am | Consent & Co-Existence Agreements |
10:00 am | Oppositions & Cancellations/Ethics Clint Taylor and Jason Joyal, Kelly IP, LLP |
11:30 am | Dispute Investigations Joel T. Beres, Stites & Harbison, PLLC |
12:15 pm | Lunch |
1:15 pm | Board Practice Tips & Pitfalls Heather Kliebenstein, Merchant & Gould Wendy Cohen, Administrative Trademark Judge, TTAB, US Patent & Trademark Office Michael Adlin, Administrative Trademark Judge, TTAB, US Patent & Trademark Office |
3:00 pm | Ex Parte Appeals Anna King, Banner & Witcoff, Ltd |
4:00 pm | US District Court Litigation Brian Darville, Oblon McClelland Maier & Neustadt, LLP |
5:00 pm | Day 2 Concludes |
Speakers
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Arriola, Kimberly
Pirkey Barber | Associate
Kimberly Arriola focuses her area of practice on trademark law. Kimberly regularly advises clients on prosecution matters, including trademark selection, clearance, and prosecution of trademark applications in the United States and abroad. Kimberly also has experience assisting clients with domestic and international enforcement matters. -
Beres, Joel T.
Stites & Harbison, PLLC | Member
With more than 25 years of Intellectual Property experience, Joel actively tries cases in both state and federal courts. A founding member and former co-chair of the firm's Intellectual Property and Technology Service Group, he manages all aspects of infringement litigation for both federal and state courts, including trial and appellate practice. He has also prepared and prosecuted trademark and copyright applications, prosecuted and defended trademark opposition and cancellation proceedings, negotiated and prepared trademark and copyright assignment and license agreements, and negotiated and prepared software licensing and consulting agreements. -
Darville, Brian
Oblon, McClelland, Maier & Neustadt, L.L.P. | Senior Counsel
Brian Darville chairs the Trademark and Copyright Practice Group at Oblon. He has over two decades of litigation experience in federal courts throughout the U.S. focused primarily on trademark and copyright litigation. -
Dayton, Katherine Lyon
Fross Zelnick | Associate
Katherine Lyon Dayton excels at developing effective strategies to secure and enforce clients’ intellectual property rights in difficult and multijurisdictional situations. She advises on international trademark clearance, registration, opposition, and cancellation actions, as well as other enforcement matters. -
Fraser, Jennifer
Dykema Gossett | Member
Jennifer Fraser is a Member in Dykema Gossett's Washington, D.C. office and is Chair of the Trademark Practice Group. Ms. Fraser represents many Fortune 500 companies and well-known brands across a variety of industries, and her practice includes trademark prosecution, counseling and litigation. -
Gelchinsky, Jonathan M.
Pierce Atwood, LLP | Partner
Jon Gelchinsky specializes in the protection and enforcement of trademark rights for businesses of all sizes. His diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, enforcement, oppositions, and litigation. He also assists clients with the protection, enforcement, and licensing of copyrights. Over the past two decades, Jon has represented a wide range of clients in a variety of industries, including consumer products, musical instruments, medical devices, pharmaceuticals, computer software and hardware, online media, telecommunications, publishing, education, motorcycles, sporting goods, and heavy machinery. -
Gilmore, Richard C.
Maschoff Brennan | Shareholder
Rick is a partner in the Salt Lake office of Maschoff Brennan Gilmore Israelsen & Mauriel. He is involved in all aspects of intellectual property law, with a focus on patent and trademark application preparation and prosecution domestically and internationally. He represents large and small clients from a diverse range of industries and often works directly with in-house counsel to develop and maintain their worldwide patent and trademark portfolios. Rick is a frequent speaker on patent and trademark matters and has taught many law school classes on patent and trademark issues. -
Jordan, Lynn M.
Kelly IP | Founding Partner
For the past 30 years, Lynn Jordan has devoted herself to representing clients in all aspects of trademark law, from selection of marks through federal court appeals. She is particularly adept at helping clients understand the business and legal risks associated with the adoption, use, and registration of trademarks. Lynn has handled countless clearance, prosecution, and enforcement matters, and regularly speaks and writes on a variety of trademark topics. -
Joyal, Jason
Partner | Kelly IP
Jason Joyal specializes in trademark, trade dress, copyright, false advertising, and unfair competition litigation and counseling. He represents clients in diverse industries in federal courts throughout the country, and routinely before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). -
King, Anna
Banner & Witcoff, Ltd. | Senior Shareholder
Anna concentrates her practice on issues arising under trademark, unfair competition, domain name, and copyright law. Her experience in these fields of law includes counseling, prosecution and registration of applications before the U.S. Patent and Trademark Office and the U.S. Copyright Office, internet, licensing, enforcement, oppositions and cancellations. Anna also counsels clients in protecting their trademark portfolios worldwide. -
Kliebenstein, Heather
Merchant & Gould | Partner
Heather is a current member of Merchant & Gould's executive committee and former chair of Merchant’s litigation group. Heather specializes in intellectual property litigation. This work includes strategy development, discovery, depositions, expert selection and strategy, summary judgment motions, pre-trial submissions, and first chair trial experience. Intellectual property litigation has become even more complex in recent years, often involving more than just a single patent but other forms of intellectual property as well. Heather specializes in these types of cases that intertwine multiple intellectual properties, contracts and other federal or state law claims. -
Matheson, Julia Anne
Potomac Law Group | Partner
Julia Anne Matheson is a Partner in our Trademark Group whose practice covers all areas of trademark, trade dress, product configuration, and unfair competition law including worldwide clearance, portfolio management, and enforcement, due diligence, false advertising, licensing, social media, and internet disputes. She has been lead counsel in well over 100 inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), and has significant experience litigating in federal district courts. Ms. Matheson represents clients ranging from startups to Fortune 100 companies and multi-national organizations in numerous industries including communications/internet, consumer goods, personal care products, retail, food and beverage, fashion, entertainment, pharmaceutical, healthcare, technology, manufacturing, and financial services as well as numerous associations and charities. -
Pierter, Kasey Boucher
Pierce Atwood | Associate
Kasey Boucher Pierter focuses her practice on intellectual property, advertising and unfair competition laws, and technology transactions. Kasey’s work spans an array of industries, including sporting goods, footwear and apparel, cosmetics, food and beverage, automotive, technology, and software. She also works with clients of all sizes, ranging from startups and emerging companies to large organizations. -
Polott, Anita
Morgan Lewis | Co-Managing Partner
Anita B. Polott leads the firm’s global trademark and copyright practice, a team of more than 40 lawyers and professionals focused on brand-related intellectual property (IP) law, including litigation, transactions, counseling, and portfolio management services. Anita sets and implements brand protection strategies and manages US and international trademark portfolios across various industries. She also regularly handles the IP aspects of corporate transactions, trademark and copyright licenses, and related agreements; advises clients on enforcement and litigation strategy; and represents clients in federal court and before the Trademark Trial and Appeal Board and International Trade Commission. In addition, Anita serves as co-managing partner of the firm’s 300+-lawyer Washington, DC office. -
Ricketts, Allison Strickland
Fross Zenick | Partner
Allison Strickland Ricketts specializes in all aspects of trademark selection, registration, and maintenance. She has evaluated thousands of trademark clearance searches, prosecuted thousands of U.S. trademark applications, and maintained hundreds of trademark registrations in compliance with strict U.S. standards for use in commerce. She has deep experience in transactions, due diligence, agreements, and licenses involving trademark rights. Allison received her JD from Columbia Law School and has practiced Trademark law for more than 25 years. She is a frequent speaker on the practice of trademark law. -
Robinson, Danae
Pirkey Barber PLLC | Associate
Danae Robinson focuses her practice on trademark and copyright law. Danae regularly advises clients on contested proceedings, global trademark clearance, licensing, and the management and protection of domestic and international trademark portfolios. She assists clients with various enforcement and domain issues, including the protection of their marks through UDRP proceedings. -
Taylor, Clint
Kelly IP, LLP | Partner
Clint focuses his practice on trademark and copyright counseling, prosecution, enforcement, and litigation. He has spent his career helping clients of all sizes navigate the trademark registration process and successfully enforcing those rights. He provides practical advice to clients to assist them in selecting and enforcing their trademarks consistent with their goals. -
Talley, Monica Riva
Sterne Kessler | Director
For more than 25 years Monica Riva Talley has specialized in strategic trademark counseling and portfolio enhancement, developing anti-counterfeiting solutions and strategies, and resolving trademark disputes. She is particularly sought after for her expertise in enforcing brand rights against infringers and counterfeiters seeking to profit from her clients' well-known brands. In addition to managing her robust practice, Ms. Talley has worked as an adjunct professor teaching trademark law at The George Washington University Law School. She also frequently speaks and writes on trademark issues to a variety of public and private audiences and has been active for many years in leading IP organizations, including The International Trademark Association (INTA) and the Intellectual Property Owner's Association (IPO). She is the vice chair of IPO's Anti-Counterfeiting Committee and serves on INTA's Brands and Innovation Committee.
News
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AIPLA Comments to USPTO on AI Generated Prior Art
July 30, 2024
Arlington, VA. July 29, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO in response to their Request for Comments Regarding the Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing (“the RFC”). -
AIPLA Comments on Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting
July 12, 2024
Arlington, VA. July 9, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO in response to their Notice of Proposed Rule Making on terminal disclaimer practice to obviate nonstatutory double patenting. -
AIPLA Comments on the WIPO Diplomatic Conference on the Design Law Treaty
June 28, 2024
Arlington, VA. June 25, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO in response to the USPTO’s March 27, 2024 Notice on the WIPO Diplomatic on the Design Law Treaty (“DLT”). -
AIPLA Files Amicus Brief in Support of Certiorari with the US Supreme Court in Cellect v. Vidal
June 25, 2024
Arlington, VA. June 21, 2024 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief in support of certiorari with the United States Supreme Court in Cellect, LLC v. Vidal. -
AIPLA Comments on Briefing Discretionary Denial Issues
June 21, 2024
Arlington, VA. June 17, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO on Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement.