Litigating Trademark, Domain Name, and Unfair Competition Cases
What You Will Learn
This annual advanced course of study, comprising more than 14 hours of instruction, gives intellectual property practitioners and litigators a grasp of the issues they face as trademark, domain name, and unfair competition claims become the subject of litigation and go to trial. The course examines pre-filing considerations, including the duty to investigate; alternatives to litigation; developing and executing a sound litigation strategy; and special considerations in dealing with expert witnesses and juries. It also includes a full hour on ethical issues.
A faculty of experienced practitioners addresses current issues in the field, including interaction among domain names, trademarks, and the fair use doctrine, and provides practical guidance.
The course emphasizes the protection of trademarks, domain names, and unfair competition issues in the United States, but, because of the multinational nature of business, it also looks abroad.
By the end of the course, registrants will have enhanced their skills for dealing with this kind of litigation and will have increased their knowledge of current developments in the field.
Time is reserved throughout the program to address registrants’ written questions.
Planning Chairs
Lester L. Hewitt, Akin Gump Strauss Hauer & Feld LLP, Houston
Roberta Jacobs-Meadway, Ballard Spahr Andrews & Ingersoll, LLP, Philadelphia
Faculty
Tsan Abrahamson, Cobalt LLP, Berkeley, California; former Intellectual Property and Licensing Counsel, LeapFrog Enterprises, Inc.
Roberta S. Bren, Oblon, Spivak, McClelland, Maier & Neustadt, PC, Alexandria, Virginia
Rod P. Burkert, Burkert Valuation Advisors, LLC, Philadelphia
Alan S. Cooper, Howrey LLP, Washington, D.C.
Michael H. Diamant, Kahn Kleinman, LPA, Cleveland
Susan E. Farley, Heslin Rothenberg Farley & Mesiti P.C., Albany, New York
Philip Furgang, Furgang & Adwar, L.L.P., New York
Kenneth B. Germain, Thompson Hine LLP, Cincinnati
Jeffery A. Handelman, Brinks Hofer Gilson & Lione, Chicago
Leslie J. Lott, Lott & Friedland, P.A., Coral Gables, Florida
Michael L. Lovitz, Connolly Bove Lodge & Hutz LLP, Wilmington, Delaware
R. Scott MacKendrick, Ogilvy Renault LLP, Toronto, Ontario, Canada
H. Jonathan Redway, Dickinson Wright PLLC, Washington, D.C.
Joseph P. Sullivan, Intellectual Property Counsel, Saint-Gobain Corporation, Worcester, Massachusetts
M. Kelly Tillery, Pepper Hamilton LLP, Philadelphia
Stephen M. Trattner, Law Offices of Stephen M. Trattner, Washington, D.C.
Brian J. Winterfeldt, Ballard Spahr Andrews & Ingersoll, LLP, Washington, D.C.
William G. Young, Judge, United States District Court, Boston
Program Schedule
Thursday, October 19, 2006
- 7:15 a.m. Registration and Continental Breakfast
- 8:10 a.m. Introductory Remarks — Mr. Hewitt
- 8:15 a.m. Filing Considerations: Shoot First, Ask Questions Later? — Mr. Trattner
- 9:00 a.m. Devising and Executing Discovery Plans in the Age of E-mail — Mr. Redway
- 9:45 a.m. Networking Break
- 10:00 a.m. Non-Traditional Trademark Claims: Can the Same Rules Apply? — Mr. Handelman
- 11:00 a.m. Expedited Relief: Temporary Restraining Orders, Injunctions, and Seizure Orders — Mr. Tillery
- 11:45 a.m. False Advertising: What Is Literally True and What Is Likely To Mislead? — Ms. Abrahamson
- 12:30 p.m. Lunch Break
- 2:00 p.m. Famous Marks: What Are They and Does It Matter? The State of Dilution and Actual Dilution: What Is It and How Do You Prove It? — Messrs. Cooper and Germain
- 3:30 p.m. Networking Break
- 3:45 p.m. Expert Witnesses: When Are They Necessary and Does Daubert/Kumho Make a Difference? — Ms. Lott
- 4:45 p.m. A View from the Bench – Judge Young
- 5:30 p.m. Adjournment for the Day
Friday, October 20, 2006
- 7:30 a.m. Continental Breakfast
- 8:15 a.m. Trademark Use, Non-Use, and Mis-Use on the Internet: Old Whine in a New-ish Bottle? — Mr. Winterfeldt
- 9:00 a.m. Presenting the Trademark, Unfair Competition Case to a Jury: Special Considerations and Concerns — Ms. Farley
- 9:45 a.m. Networking Break
- 10:00 a.m. Using Mediation, Arbitration, or Other ADR Techniques To Assist in Settlement — Mr. Diamant
- 10:45 a.m. Using Another’s Mark: Fair Use or Foul? — Ms. Bren
- 11:30 a.m. What Is It Worth?: Valuation and Evaluation of Damages and Profits— Mr. Burkert
- 12:15 p.m. Lunch Break
- 1:45 p.m. Dealing With the Ethically Challenged: Lawyers, Clients, and Witnesses — Mr. Furgang
- 2:45 p.m. Networking Break
- 3:00 p.m. Crossing Borders: Issues and Concerns Beyond the U.S.A. — Mr. MacKendrick
- 3:45 p.m. Strategies for Funding IP Litigation – and the Client’s Perspective — Messrs. Lovitz and Sullivan
- 4:30 p.m. Actual Confusion: How Relevant Is It? What Kinds of Confusion Matter? — Ms. Jacobs-Meadway
- 5:15 p.m. Adjournment
Total 60-minute hours of instruction: 14.25, including one hour of ethics and professional responsibility
Suggested Prerequisite: Limited experience in legal practice in subject matter, including exposure to inter partes proceedings involving intellectual property
Educational Objective: Acquisition of knowledge and skills to develop proficiency as a practitioner; provision of information on recent legal developments
Level of Instruction: Advanced
Here's what registrants have said about this course:
This course was excellent. Truly the best CLE I have attended in the past six years. All of the presenters were engaging, clearly authorities in their fields, and a pleasure to learn from. I would recommend this course to all my colleagues. Thank you ALI-ABA!
The best 2 day course I have attended in 30+ years.
Excellent program. High quality/knowledgeable speakers. Practical/experience-based discussions.
Excellent line-up and presentations. I am in the litigation support business (market research) and attended to get a concentrated overview of these IP issues. Practically all of the material was helpful to me.
As someone who deals with IP subject matter only sporadically, I found this seminar to be extremely helpful and well done. Materials were exceptional and insights from practitioners understandable and useful.
There was a very good balance of basics and more advanced issues presented so the seminar seemed useful for both the experienced trademark litigator and for those less experienced.
I thought this was a wonderful seminar. The faculty was very impressive and effective. I learned a great deal.
