Trade Dress Rights Enforcement: Prosecuting Infringement Claims
Proving Protectable Trade Dress and Likelihood of Confusion, Defeating Defenses
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide guidance to IP counsel on the enforcement of protectable trade dress. The panel will examine the requirements for trade dress infringement and will review recent cases. The panel will offer best practices for enforcing trade dress rights.
Outline
- Pre-filing considerations and issues that the trade dress owner should consider
- Potential defenses to overcome
- Remedies
- Best practices for enforcing trade dress rights
Benefits
The panel will review these and other key issues:
- How are the courts addressing trade dress infringement claims?
- What must counsel demonstrate to enforce trade dress rights to protect the look and feel of a product design, product packaging, or website in an infringement action?
- What are the key tactics for counsel in protecting product and packaging designs against infringement?
Faculty
Rod S. Berman
Partner, Chair of Intellectual Property Group
Jeffer Mangels Butler & Mitchell
Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His... | Read More
Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His practice includes counseling, litigation, opinions, licensing, acquisition and prosecution. Mr. Berman represents many nationally and internationally known clients, and has been involved in a number of published patent, trademark and copyright cases in a wide variety of industries. He has worked on a broad range of matters including those involving aircraft, apparel, automotive, beauty care, bicycles, biotechnology, cannabis products including CBDs, hemp and extraction techniques, celebrity endorsement, computer-related business methods, dietary and nutritional supplements, electrochemistry, food and restaurants, health care, inflatables, insecticides, jewelry, medical devices, packaging, pharmaceuticals, polymers, pressure sensors, retail, special effects, sports and entertainment, and toys.
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Michelle P. Ciotola
Partner; Chair of the Trademark & Copyright Practice; Co-Chair of the Consumer Products Practice
Cantor Colburn
Ms. Ciotola concentrates her practice on counseling, protecting and enforcing trademark, trade dress, copyright, and... | Read More
Ms. Ciotola concentrates her practice on counseling, protecting and enforcing trademark, trade dress, copyright, and related IP rights, as well as counseling clients in unfair competition, internet, advertising, and promotions law. She assists clients in the development and exploitation of their trademark portfolios, including clearance of marks; prosecution of trademark applications before the USPTO; and identifying important overseas jurisdiction and filing or coordinating with local counsel for protection and enforcement of marks in those jurisdictions. Ms. Ciotola develops strategies for the enforcement of her clients’ IP rights, including preparing demand letters, negotiating settlement agreements, handling opposition and cancellation actions before the TTAB, and coordinating and overseeing litigation with local counsel around the world. She also develops strategies for enforcement of her clients’ IP rights online, including handling Uniform Domain Name Dispute Resolution Policy proceedings. Ms. Ciotola attends and speaks at the world’s leading trademark industry association gatherings, including the INTA, MARQUES, the European brand owner association, European Communities Trade Mark Association and the Asociancion InterAmericana de la Propriedad Intelectual (ASIPI). She also talks about trademarks on her podcast, IP Obsessed.
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Matthew L. Frisbee
Partner
Leason Ellis
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and... | Read More
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog.
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Jessica B. Sparkman
Partner
Jeffer Mangels Butler & Mitchell
Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law,... | Read More
Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law, including selection and acquisition, protection, federal trademark application and registration, opinions, portfolio management, enforcement, co-existence and settlement agreements, domain names, and litigation. She has experience managing portfolios of more than 2000 trademark registrations, has applied for or maintained trademark registrations in more than 150 countries, and has managed a global trademark monitoring and enforcement program involving hundreds of proceedings and negotiations in more than 50 countries. Ms. Sparkman counsels clients about agreements to acquire, sell, and protect intellectual property, including assignments, acquisitions, licenses, and non-disclosure and confidentiality agreements, and has performed due diligence for clients in numerous large transactions. She also litigates trademark, unfair competition, copyright, patent, trade secret, and privacy rights cases in state and federal court, and has extensive experience practicing before the TTAB.
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