Skip to main content

Understanding Trademark Law in the Global Marketplace 2011


Speaker(s): Anne Hiaring Hocking, Beth M. Goldman, J. Scott Evans, Richard L. Kirkpatrick, Ruby A. Zefo
Recorded on: Jul. 12, 2011
PLI Program #: 28486

Ruby A. Zefo

Primary Areas of Practice: Trademark Law

Law School / Graduate School: Stanford University Law School

Work History:
1986-1990: various marketing management roles at GTE
1993-1996: IP and general commercial litigator at Fenwick & West
1996-2003: marketing, licensing, and brands attorney at Sun Microsystems
2003-present: managing counsel and director of trademarks at Intel Corporation

Professional Memberships: INTA (on Board of Directors and Chair of Board Audit Committee through Dec. 2010, Chair of Enforcement Committee through 2011, and on PDA Council).

Ruby Zefo is Director of Trademarks & Brands at Intel Corporation.  Ruby manages the team responsible for all legal aspects of Intel's trademark practice, including clearance, licensing, prosecution and enforcement worldwide. Ruby began her law career at Fenwick & West, specializing in intellectual property and general commercial litigation. In 1996 she joined Sun Microsystems, Inc., specializing in licensing, marketing, and trademark law. She joined Intel in 2003. Ruby is a frequent speaker on trademark clearance, prosecution, licensing and enforcement practices. 

Ruby is a member of the INTA Board of Directors for the 2008-2010 term and the Chair of the Board Audit Committee; Chair of the Enforcement Committee for the 2010-2011 term; and a member of the Policy Development & Advocacy Executive Council. 

Ruby has a B.S. in Business Administration from the University of California at Berkeley, and a J.D. from Stanford Law School.


Anne Hiaring Hocking has specialized in trademark and copyright law since 1981.  She  was  Adjunct Professor of Trademark, Copyright, and International Intellectual Property Law at Golden Gate University in San Francisco, California and Bangkok, Thailand.  She has chaired numerous programs on Intellectual Property law topics, and has served as President of the San Francisco Intellectual Property Law Association and Chair of the State Bar of California Intellectual Property Law Section. She has spoken and moderated numerous International Trademark Law Association and Practicing Law Institute programs.  She has written for AmJur on copyright and trademark law topics, as well as presented numerous papers.

After working at two large firms, she was the IP rights attorney for Pacific Telesis for five years, where she was responsible for all aspects of domestic and international trademark filing and enforcement, and all copyright and trade secret procedures. In 1990 she founded her own firm, then in 2010, Hiaring + Smith LLP, which merged with Donahue Fitzgerald LLP in 2015.

Selected Publications

  • “Selected Liability Issues: Social Networks and Blogs” The computer & Internet Lawyer, (Vol. 26, January 2009)
  • “Does Information Really Want to be Free?” Gothenburg Film Festival, 2006
  • “What’s New in the Neighborhood – The Export of the DMCA in PostTRIPS FTA’s” Golden Gate University International & Comparative Law Journal (2005)
  • Fair Use And TRIPS: Too Much of a Good Thing?”, Copyright Law Society of the U.S. January Midwinter Meeting 2004

Selected Speaking Engagements

  • PLI, Intellectual Property Law Institute, various years
  • Selected Liability Issues, Social Networks and Blogs (2008)
  • Navigating Trademark Trial and Appeal Board Practice (2000)
  • INTA TTAB Practice for Novices Forum (2000)
  • Insight Information, “Sixth Complete Course on Negotiating and Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets” (2000)
  • PLI, Program Chair, “Trademarks in the Global Marketplace” (1994-2017)


Beth M. Goldman is a partner in the Intellectual Property group at Orrick, Herrington & Sutcliffe.  Her practice focuses on trademark and copyright law, licensing and Internet law. She has been assisting clients in the selection and creation of brands, as well as their protection, for more than 20 years. Her experience includes worldwide prosecution and policing of trademarks, dispute resolution, UDRP proceedings and litigation before the Trademark Trial and Appeal Board.  Her clients cover a broad variety of industries, including alternative energy, apparel, biotechnology, cloud computing, computer services, consumer products, credit card services, food and beverages, medical equipment, pharmaceuticals, software, telecommunications and travel.  She has spoken on a wide variety of topics including TTAB practice, trade dress, injunctive remedies for trademark infringement and keynote advertising, for the Practicing Law Institute, the California State Bar, the International Trademark Association and other organizations.


J. Scott received his undergraduate degree from Baylor University and his Juris Doctor cum laude in 1992 from the Louis D. Brandeis School of Law at The University of Louisville. He first served as Corporate Counsel for Fruit of the Loom where he was responsible for managing the international intellectual property portfolios for Fruit of the Loom and its associate companies The B.V.D. Licensing Corporation, Gitano, Pro Player and Salem Sportswear, Inc. In November 1996, Mr. Evans joined Adams Evans P.A. where he continued to concentrate his practice in the areas of trademark, copyright, unfair competition and Internet law. In November 2007, he joined the legal team at Yahoo! Inc., where he served as a Senior Legal Director – Global Brands, Domains & Copyright.  In October 2013, J.Scott joined Adobe Systems as Associate General Counsel responsible for global trademarks, copyright, domains and marketing.

On three separate occasions, Managing Intellectual Property magazine voted J. Scott one of the 50 Most Influential People in IP (2009, 2011, 2013).  J. Scott is also President-Elect of the International Trademark Association, where he serves on the Executive Committee and chairs the Planning Committee.


Mr. Kirkpatrick has focused on trademark and unfair competition law since 1980. His practice covers the full range of trademark protection and practice, including counseling; licensing; due diligence and other opinions on trademark aspects of initial public offerings, asset purchases, secured transactions, taxation and intellectual property holding companies; trademark enforcement and defense; litigations before the U.S.
Trademark Trial and Appeal Board and courts; trademark clearance and registration worldwide; and trademark portfolio management. He is the leader of Pillsbury's International Trademark Team.

Mr. Kirkpatrick is the author of the leading treatise: "Likelihood of Confusion in Trademark Law," published by Practicing Law Institute with semi-annual supplements, also available from Lexis and Kindle. He has also published numerous articles on trademark topics, detailed below. This is the 28th supplement to the treatise, which was first published in 1996.

He is also a frequent lecturer at seminars, detailed below, of the Practising Law Institute (PLI), CEB, Intellectual Property Owners' Association (IPO), Thomson & Thomson (T&T), the International Trademark Association (INTA), Insight, San Francisco Intellectual Property Law Association (SFIPLA), Intellectual Property Law Sections of the California, Nevada and Utah State Bars, Bar Association of San Francisco, Golden Gate School of Law IP Institutes, and others.

The World Trademark Review 1000 described Mr. Kirkpatrick as an “outstanding prosecution and strategy authority who serves an eminent clientele, including household names in retail, food and drink and sporting goods.”

Honors & Awards

  • 2013 WTR 1000, Prosecution and Strategy (2012-2013)
  • 2013 Super Lawyers – Northern California
  • 2012 WTR 1000, Intellectual Property: Trademarks—California (2011-2012)
  • 2010 Who's Who Legal, Intellectual Property: Trademarks—San Francisco
  • California's Top IP Lawyers, Daily Journal Intellectual Property Extra

Presentations

Co-chair, Practising Law Institute program “Global Trademark Clearance and
Registration Workshop 2013,” May 2013
Trademark Trial and Appeal Board Update, PLI, October 2012
Trademark: Searching, Clearance, and the Application Process PLI, July 2012
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 1
Trademark Preliminary Injunction and Summary Judgment Motions, Golden Gate IP
Law Institute, November 2010
Foreign Trademark Conflicts, Cal Bar IP Institute, October 2010
Counterfeiting & Cybersquatting Damages, Rocky Mountain IP Law Institute, June 2010
Trademark Damages, PLI, October 2009
Trademark Licenses, PLI, 2007-2009
Navigating USPTO/TTAB, PLI, 2001-2009
Basic Trademark Law, PLI, July 1999-2012
Priority and Tacking, Golden Gate Law, April 2009
New TTAB Rules, PLI, 2008
Trademark Searches, CEB, 2006
New Dilution Law, PLI, October 2006
Trademark Prosecution & Fraud, California IP, April 2006
Advanced Trademarks, PLI, June 2005
Trademark Clearance Utah IP, October 2003
Trademark Clearance Nevada IP, September 2003
Trademark Searching, BASF, July 2003
Priority & Third Party Marks, California IP, April 2003
Trade Dress and Patent Law, SFIPLA, April 2001
Trademark Law Developments, PLI, November 2000
Product Configuration Trade Dress, SFIPLA, March 2000
Trademark Licenses, Insight, March 2000
Trademark Dilution Developments, IPO, November 1999
Foreign Trademark Litigation, PLI, October 1999
Trademark Searches and Opinions, T & T, September 1999
Litigating Trademark Cases, PLI, December 1998
TTAB Best Practices, INTA, September 1997
Pillsbury Winthrop Shaw Pittman LLP | www.pillsburylaw.com 2
TTAB Best Practices, INTA, September 1997
Proving Likelihood of Confusion, PLI, June 1996

External Publications

Likelihood of Confusion in Trademark Law, Practising Law Institute, 2012 (28th supplement to the treatise, first published in 1996)
Wine Trademarks, co-author, Trademark World, September 1997 Learned Hand's Trademark Cases, 82 TMR 426
Likelihood of Confusion Issues: The Federal Circuit's Standard of Review, 40 Am. U.L. Rev. 1221
Industrial Protection Design, 2 Intellectual Property in Business 17
Treading with Caution: A View of U.S. Trademark Applications, Trademark World
The Supplemental Register Under the Trademark Law Revision Act, 79 TMR 248
Impact of the Trademark Law Revision Act, 44 Food Drug Cosmetic Law Journal 593
The Supplemental Register, AIPPI (Japanese)
How New Trademark Law Affects Non-U.S. Owners, Trademark World
U.S. Trademark Application Based on Japanese Trademark Applications, AIPPI Japanese
Trademark Law: A Banker’s Primer, Banking Law Journal
Off the Mark: Proper Use of Trademark Symbols, Madison Avenue
Trademark Infringement: How to Avoid It, Restaurant Hospitality
Trademark Law: How It Can Affect Banks and Thrifts, American Banker

Practices / Industries
Intellectual Property
Trademarks
Health Care & Life Sciences

Admissions

State of California
District of Columbia

Education

J.D., University of Maryland School of Law, 1980
B.A., Connecticut College, 1975 I, summa cum laude, Phi Beta Kappa
The Johns Hopkins University