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Trademark Modernization Act: Understanding the USPTO's Final Rulemaking

SKU: IP9300
General Credits
1
Price$50
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Description

Beginning in December 2021, the Director of the USPTO and brand owners alike will be able to initiate the new ex parte reexamination and expungement proceedings authorized by the Trademark Modernization Act of 2020. Join us for a conversation about those proceedings, the final rulemaking recently released by the USPTO, and the impact on brand owners.

In this webinar, we will cover:

  • Trademark Office procedures for reexamination and expungement proceedings, as set forth in the November 2021 final rulemaking;
  • Best practices for brands responding to reexamination and expungement proceedings;
  • Considerations for brands and others bringing reexamination and expungement proceedings;
  • New rules for Letters of Protest and;
  • Changes in attorney recognition before the Trademark Office

Lecturer Bios

Catherine Farrelly, Esq.

Catherine M.C. Farrelly, formerly Catherine M. Clayton, is a partner and Chair of the Trademark & Brand Management Group and is also a member of the firm’s Litigation Group.

Ms. Farrelly is an internationally recognized leader in the field of trademark law who advises some of the world’s leading brands on intellectual property matters. She helps her clients plan strategies, manage trademark portfolios, and protect trademarks and other IP in the US and world markets. She represents well-known companies in a variety of industries, including entertainment, finance, sports, cosmetics, toys, beverages, publishing and real estate.

Ms. Farrelly has focused on trademark and copyright law for 20 years, and regularly provides clients with strategic advice regarding the availability, validity and enforceability of trademarks. She also has significant experience preventing the unauthorized use of trademarks and copyrights through litigation, arbitration and negotiation.

In addition to representing clients in federal court and before the Trademark Trial and Appeal Board, Ms. Farrelly helps clients establish, maintain and grow domestic and international trademark portfolios. She negotiates and structures trademark and copyright licenses and assignments; regularly shuts down on-line auctions of infringing goods and false advertising on social media platforms; and resolves domain name disputes through negotiation, federal court litigation, and arbitration under the Uniform Domain Name Dispute Resolution Policy.

Ms. Farrelly is an Advisory Board Member for the University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic, the Vice Chair of the Trademark Litigation Committee of the American Bar Association Section of Intellectual Property Law (2018-2019), Chair of the ABA’s USPTO Operations Relating to Trademarks Subcommittee, and a member of the International Trademark Association (“INTA”), MARQUES, the Copyright Society, the New York Intellectual Property Law Association, and the New York State Bar Association. She writes and speaks frequently on hot topics in intellectual property law, and has been published in the New York Law Journal, among other publications. Ms. Farrelly is admitted to practice in New York, the United States District Court for the Southern District of New York, the United States District Court for the Eastern District of New York, and the United States Supreme Court.

Prior to joining Frankfurt Kurnit, Ms. Farrelly was a partner with Gibbons P.C. and was associated with Paul, Hastings, Janofsky & Walker LLP and Pennie & Edmonds LLP. She has lived in the U.S., England, France, the Netherlands, the Bahamas and Saudi Arabia.

Kimberly Maynard, Esq.

Kimberly M. Maynard is a partner in the Trademark & Brand Management, and Litigation Groups. She represents emerging and established companies on intellectual property matters across a variety of industries, including technology, fashion, jewelry, finance, food, automotive, television and dance. World Intellectual Property Review recently included Ms. Maynard as a “Trailblazer” in its “Influential Women in IP” list.

Ms. Maynard guides her clients through all aspects of domestic and international brand-building and brand management. She works hard to understand client business goals and to craft practical, cost-effective legal strategies that meet those goals. Ms. Maynard analyzes and assesses the benefits and risks associated with adopting new brands, prepares and implements strategies for the development of new brands, and protects and expands established brands. Ms. Maynard represents clients before the Trademark Trial and Appeal Board and litigates cases involving complex trademark, trade dress, advertising, copyright and design patent issues in federal court. She also negotiates complex license and settlement agreements, advises on domain names and social media, and counsels on the proper use of trademarks and trade dress. Recently, she was part of the Frankfurt Kurnit team that represented Sprint in a high-profile false advertising case.

Prior to joining Frankfurt Kurnit, Ms. Maynard was an associate at BakerHostetler, where, among other things, she led a team of lawyers in an appeal of a Trademark Trial and Appeal Board decision before the Southern District of New York — ultimately securing ownership of trademarks for a major New York City dance theater. Prior to law school, Ms. Maynard was affiliated with Trisha Brown Dance Company.

Ms. Maynard is a member of the New York State Bar Association (Intellectual Property Group) and a member of the U.S. Trademark Law Committee (Intellectual Property Owners Association). She serves on INTA’s Young Practitioner’s Committee and was an Adjunct Professor at New York Law School, where she helped start the PTO Trademark Clinic. She is admitted to practice in the New York and New Jersey state courts, as well as in the Southern and Eastern Districts of New York, the District of New Jersey, and the Court of Appeals for the Second Circuit.

Julie Amadeo, Esq.

Julie Amadeo is an associate in the Trademark & Brand Management Group at Frankfurt Kurnit.

Ms. Amadeo is experienced in all aspects of domestic and international brand building and brand protection. She handles preliminary and full trademark clearance, drafting and negotiating license, settlement, and coexistence agreements, and enforcing and protecting trademark rights. Ms. Amadeo also represents clients before the Trademark Trial and Appeal Board. She has counseled clients in the financial services, entertainment, fashion, and food and beverages industries.

Prior to joining Frankfurt Kurnit, Ms. Amadeo was an associate at Steptoe & Johnson LLP. and at Hughes Hubbard & Reed LLP. During her time at Steptoe & Johnson LLP, she assisted an NGO that educates youth interested in media in licensing their IP in furtherance of seeding other nonprofits. She was also on a team that represented a band in a dispute over ownership of their name before the Trademark Trial and Appeal Board. Ms. Amadeo’s trademark and brand management clients also benefit from her substantial commercial litigation and international arbitration experience.

Ms. Amadeo is a member of the New York City Bar Association (City Bar Chorus Committee). She is admitted to practice in New York State Courts, and in the federal courts for the Eastern and Southern District of New York.

Diego Gomez, Esq.

Diego Gomez is an associate in the Trademark & Brand Management Group.

Mr. Gomez focuses on all aspects of domestic and international brand building and brand protection across a wide variety of industries, including fashion, art, food and beverage, pharmaceuticals, sports, travel and beauty. He counsels clients in selecting new brands, handles domain names and UDRP proceedings, and provides cost-effective brand protection strategies.

Prior to joining Frankfurt Kurnit, Mr. Gomez worked for a global apparel company handling a wide variety of transactional, compliance, trademark and brand protection matters including product design clearances, product collaboration agreements, national and international trademark prosecution, and investigations into high-profile counterfeiters.

While in law school, Mr. Gomez was an intern at LVMH, Inc. and The Estee Lauder Companies; and a judicial intern to the Honorable George B. Daniels at the Southern District of New York and the Honorable Wilma Guzman at the Bronx Supreme Court. He is admitted to practice in New York.

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