Intellectual Property Litigation

TTAB Updates: A Year of Critical Developments

Synopsis

The presenters of this courses take an in-depth look into numerous areas in the patent and trademark arena that have produced some significant developments.  After some back ground on what's new, the presenters provide a lively discussion about the constitutionality of the Lanham Act's prohibition on the registration of immoral, scandalous, and disparaging marks.



Outline

I. Significant Developments in the Patent/Trademark Realm
   A. The Statistics Speak for Themselves
   B. Expense Fees: Nobody Wants to Pay Them
   C. The Territoriality Principle
   D. Third-Party Registration Cases
   E. A False Association Grounds Case
   F. Parent vs. Subsidiary: Who Owns the Mark?
   G. Fraud Claims
   H. An Ornamentality Case
    I. A Few More Cases
    J. Q&A
       1. Likelihood of Confusion and Surnames
       2. Acquired Distinctiveness
II. Let's Do Battle
    A. Prohibition on the Registration of Immoral, Scandalous, and Disparaging Marks
    B. Tension Between § 2(a) of Lanham Act and First and Fifth Amendments
    C. Constitutionality of the 2(a) Prohibitions
    D. Common Sense Talking
    E. Government Speech
         1. The Walker Case
         2. Government Speech and Trademark Registrations: Analogies to be Drawn
         3. Government Speech and a Due Process Issue
         4. Government Subsidy
    F. Commercial Speech
         1. Why Does It Matter?
         2. The Exception, Not the Rule
    G. Function of Government Agency in Registration
III. Audience and Panel Discussion
    A. Part I
    B. Part II
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Content Provided
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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 16,000 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 45 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.
AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

 


Learning Objectives:





Speakers / Authors:

Photo of Bill Barber

Bill Barber

Bill Barber is with the law firm of Pirkey Barber PLCC where he specializes in trademark law, focusing primarily on litigation and policing, handling cases in federal courts across the U.S. and before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Experienced in all aspects of litigation, including jury and bench trials as well as appeals, Bill also handles domain name disputes through ICANN’s domain name dispute resolution policies. He also regularly assists clients with a wide range of trademark needs, including trademark policing strategies and programs, trademark clearance, and trademark prosecution.

Mr. Barber served as vice chair of the U.S. Patent and Trademark Office Trademark Public Advisory Committee, has testified before Congress regarding reforms to the federal trademark dilution statute, and is a frequent author and speaker on various trademark and unfair competition topics.  He is a past president of the American Intellectual Property Law Association and a past chair of the State Bar of Texas Intellectual Property Law Section.

Mr. Barber has received a number of professional awards in his career, including Best Lawyers’ Austin Lawyer of the Year for Trademark Law (2012, 2015) and Intellectual Property Litigation (2013, 2016).  Appearing in WTR 1000 since the inaugural edition, the publication awarded Mr. Barber Gold status nationally in both the “Prosecution and Strategy” and “Enforcement and Litigation” categories, and heralded him as a “legend in the field.” He has also been recognized in Chambers USA/Global, Expert Guides Trademark, Texas Super Lawyers, Trademark Law Experts, and Who’s Who Legal: Texas/Trademarks.

Mr. Barber received a a J.D., with high honors, from The University of Texas School of Law in 1987 and his
B.S. in Chemical Engineering with highest honors from The University of Texas at Austin in 1984.

Photo of Elizabeth Ann Morgan

Elizabeth Ann Morgan

Elizabeth Ann Morgan is an experienced trademark litigator and counselor who consults in U.S. intellectual property issues with the Quito law firm of Paz Horowitz. Her practice primarily involves alternative dispute resolution for U.S. disputes. Before joining Paz Horowitz, she practiced in Atlanta and Florida.

Ms. Morgan taught trial techniques at Emory for more than 10 years, and an IP survey course at University of Miami. She lectures extensively on IP litigation, business litigation, employment litigation, and is currently teaching U.S. Intellectual Property Law in Ecuador.

Ms. Morgan earned her J.D., Order of the Coif, from Emory University School of Law in 1990, and her B.A., with High Honors, Phi Beta Kappa, from the University of Florida in 1979.

Photo of John Welch

John Welch

John Welch, counsel at Wolf, Greenfield & Sacks, P.C., has represented clients in scores of patent, trademark, copyright, unfair competition, and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office.

Mr. Welch is responsible for the international trademark portfolios of a number of major companies in such diverse fields as restaurant services, food processing machinery, and computer hardware and software. He has obtained numerous utility and design patents for clients in a variety of industries, such as lighting fixtures, electrical instrumentation, ceramic candle holders, food processing machinery, and kitchen utensils.

Mr. Welch is the founder and publisher of The TTABlog; a member, Board of Editors, The Trademark Reporter; and a member of the Trademarks and Unfair Competition Committee of the Boston Patent Law Association. He has been named as one of New England’s “Super Lawyers” in the field of intellectual property from 2004-2016, and was named to World Trademark Review 1000 – The World’s Leading Trademark Professionals from 2012-2016.

Mr. Welch received his J.D. from Harvard Law School and his B.S., summa cum laude, from the University of Illinois.

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Price (USD)

Standard Rate: $149.00
Subscribers: FREE
Pillsbury U Online: $149.00
Metro State Univ: $149.00

Details

Course Code : 772543

Release Date: 12/29/2016


Length: 1hr 25min
Recorded Date: 10/27/2016


Format Type: eLearning
Mobile Compatible


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