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Advanced Trademark Law Annual Review 2012


Speaker(s): Don M. Obert, Hon. Karen Kuhlke, J. Allison Strickland, Joseph M. Drayton, Joseph N. Welch, II, Kieran G. Doyle, Michael R. Gray, Sheldon H. Klein, Stephanie M. Foster, Susan J. Hightower, Vanessa J. Soman
Recorded on: May. 1, 2012
PLI Program #: 34239

Don M. Obert
Senior Attorney


Work History
  
Don concentrates on Customs and International Trade law. Don represents and counsels numerous American, foreign and multinational importers, exporters, manufacturers, customs brokers and freight forwarders involved in the movement of goods and delivery of services throughout the world. 

Don has extensive experience in conducting both product and transaction reviews, obtaining binding ruling letters, contesting increased duty assessments, responding to government audits and investigations and defending clients involved in liquidated damages, penalty, seizure and forfeiture proceedings brought by U.S. Customs & Border Protection.

He also advises clients with respect to applicable regulatory requirements enforced by other federal agencies (i.e., Food & Drug Administration, U.S. Department of Agriculture, U.S. Fish & Wildlife Service, etc.), representing importers in related enforcement actions taken by said agencies.

Don further advises and represents domestic industries and importers with respect to the effects of various trade remedies (i.e., antidumping and countervailing duty proceedings) on their products.

In addition, he assists the export community with regard to export controls, sanctions, embargoes and anti-terrorism restrictions, reviewing proposed transactions to insure compliance with applicable law and regulations, obtaining necessary export licenses and addressing enforcement issues brought by the Bureau of Industry & Security, Department of Defense and Office of Foreign Assets Control.


Professional Memberships

Customs and International Trade Bar Association, Member New York State Bar Association, Member (Currently serving as member of Customs and International Trade Committee)


Law School / Graduate School: Brooklyn Law School (JD 1998)


Stephanie M. Foster is Senior Counsel and Vice President for Pearson Education, Inc., the global leader in educational publishing and technology. Stephanie oversees trademark prosecution, enforcement and litigation and advises businesses regarding brand management, trademark and content licensing and various issues pertaining to copyright, trade secrets, patents, unfair competition, Internet and e-commerce. Stephanie advises all of Pearson's educational divisions throughout North America, as provides trademark legal support for other affiliates and joint ventures, such as GED Testing Services, when needed.

For several years prior to joining Pearson Education, Ms. Foster was an associate in the Intellectual Property departments of Morgan Lewis and Bockius and Whitman Breed Abbott and Morgan where she concentrated in trademark and copyright counseling, litigation and licensing, as well as issues involving Internet, computer and technology law. She has represented clients in numerous litigations involving unfair competition, counterfeiting, domain-name disputes, and novel issues of trademark law relating to dilution, reverse confusion and descriptive marks.

Following law school, Ms. Foster clerked for Judge Con. G. Cholakis in the United States District Court for the Northern District of New York.  She also taught as an adjunct professor at Brooklyn Law School for several years.

Active in professional organizations, Ms. Foster is member of various bar and trade associations, and has served on committees for the International Trademark Association and Legal Aid Society.

Ms. Foster received her bachelor's degree, with high honors, in the Science in Society Program at Wesleyan University in 1988, where she received numerous awards and was inducted into the Phi Beta Kappa Society. Ms. Foster graduated from Brooklyn Law School in 1993, where she was a Richardson Merit Scholar and Sparer Public Interest Fellow, and also received the Oceana Publications Award. She served as editor-in-chief of the Brooklyn Journal of International Law and, during her term, she organized a symposium on international copyright law that was the topic of the Journal's semi-annual publication.

Ms. Foster is admitted to practice in New York, New Jersey, and the District of Columbia.


J. Allison Strickland
Partner


Primary Areas of Practice: 
  Trademarks

Law School / Graduate School: 
  Columbia

Work History: 
  Fross Zelnick, 1996 - Present

Professional Memberships:
  AIPLA, INTA


Michael R. Gray

Primary Areas of Practice

  • Business Litigation   
  • Intellectual Property Litigation 
  • Franchise & Distribution


Work History

Mike brings 26 years of experience representing companies and individuals in trial, arbitration and other civil proceedings throughout the United States. He is lead litigation counsel for several national franchise companies and has litigated cases in over 37 states. He also provides counsel on a wide range of other business issues including protection and exploitation of intellectual property and employment matters. Mike has written and presented materials for the International Franchise Association, the American Bar Association, The Franchise Law Journal, The University of St. Thomas, the Minnesota Institute of Legal Education, and the Business Law Institute. Mike has been named as one of the "Best Lawyers In America" by Woodward / White, a "Super Lawyer" by Minnesota Law & Politics, a "Legal Eagle" by Franchise Times and is listed in The International Who's Who of Franchise Lawyers. Mike is admitted to practice in Minnesota and Wisconsin as well as many Federal District and Appellate Courts throughout the United States.


Law School: Hamline University School of Law


Professional Memberships:
American Bar Association; Federal Bar Association; International Franchise Association


Susan J. Hightower
Partner

Primary Areas of Practice
  Trademark law

Law School / Graduate School
  J.D., Stanford Law School; M.A., Journalism, The University of Texas at Austin

Work History:

  • Pirkey Barber LLP, 2006-present
  • Fulbright & Jaworski L.L.P., 2001-06
  • 5th U.S. Circuit Court of Appeals, 2000-01

Susan also worked as a professional journalist prior to attending law school.

Professional Memberships:

  • American Intellectual Property Law Association
  • International Trademark Association, U.S. Legislation Subcommittee
  • State Bar of Texas Intellectual Property Law Section, Council Member
  • Austin Intellectual Property Law Association, Treasurer
  • Austin Intellectual Property American Inn of Court
  • Bar Association of the Fifth Federal Circuit
     


Vanessa J. Soman is Vice-President and Associate General Counsel at Martha Stewart Living Omnimedia, Inc.  In her current role her and her team are responsible for SEC/Corporate Governance, Intellectual Property, Licensing, Privacy, and Employment matters. She is a seasoned attorney whose most recent roles have provided her with the opportunity to advise senior executives at two Fortune 500 companies on a variety of issues including risk-management and policy development that have mitigated counterfeits, increased compliance with regulations, and monetized intangible assets. Vanessa began her career as a trademark examining attorney at the U.S.P.T.O.

 


Joseph M. Drayton is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. He joined the Firm in 2012 and is resident in the New York office.

Mr. Drayton's practice background includes a broad range of intellectual property and complex commercial matters. He is experienced in patent litigation, trademark and copyright usage, trade dress, design patents and false advertising. Mr. Drayton also counsels clients in all aspects of intellectual property acquisition, transfer, protection and enforcement. He has represented leading companies in the media, telecommunications, banking, private equity, pharmaceutical, electronics and retail industries.

Mr. Drayton practices before both state and federal courts, as well as the International Trade Commission. He has been a lead member of numerous patent trial teams, including four over the past few years. Mr. Drayton has handled temporary restraining orders, preliminary injunctions, all facets of motion practice and complex discovery. 

Education

  • University of Pennsylvania Law School
    JD, 1997
  • University of Maryland, College Park
    BS, 1993

Court Admissions

  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York

Bar Admissions

  • District of Columbia
  • Maryland
  • New York

Memberships

  • American Bar Association
  • Federal Bar Council
  • Maryland State Bar Association
  • Metropolitan Black Bar Association
  • National Bar Association
  • New York City Bar Association
  • New York State Bar Association


Karen Kuhlke is an Administrative Trademark Judge with the Trademark Trial and Appeal Board (TTAB).  Ms. Kuhlke began her career with the United States Patent and Trademark Office (USPTO) in 1994 as a Trademark Examining Attorney.  In 1999, she became an Interlocutory Attorney at the TTAB.  She has been in her current position since 2005.  Prior to joining the USPTO, she was an attorney with the law firm of Steptoe & Johnson in the Washington D.C. office.  She received her undergraduate degree from the University of Kansas, her M.A. in geography from Columbia University and her J.D. from Georgetown University Law Center.


Sheldon Klein represents clients in the areas of trademark, copyright, unfair competition, advertising and social media, handling matters involving IP availability and infringement opinions, portfolio management, litigation, licensing and transactions.

Sheldon handles a wide range of IP issues. He conducts IP audits and due diligence investigations and drafts IP licenses and other agreements. He also enforces IP rights via negotiation, litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and foreign trademark offices.

Clients highly value the depth and breadth of Sheldon’s intellectual property experience and knowledge. Sheldon has taught IP law at George Washington University and chairs an annual seminar/webinar on advanced trademark law for the Practising Law Institute. He regularly writes about current issues and presents on IP law topics nationally and internationally.

In October 2017, Sheldon became President-Elect of the American Intellectual Property Law Association (AIPLA). Since his election to the executive committee of AIPLA in 2015, Sheldon has played a key role in the governance of one of the world’s largest and most influential intellectual property bar associations.

Professional Activities

American Intellectual Property Law Association, President-Elect
International Trademark Association, Trademark Office Practices Committee, Member
Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), Member
U.S. Patent and Trademark Office, Trademark Public Advisory Committee, Past Member
Bar Assn. of D.C., Patent, Trademark & Copyright Section, Past Chair

Honors and Distinctions

"Leading Trademark Lawyer," The International Who’s Who of Business Lawyers, 2007- 2017
“Leading Trademark Lawyer,” World Trademark Review, 2011-2013, 2015-2017
“Washington, DC Super Lawyer,” Super Lawyers, 2014-2017
“Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013


Kieran litigates trademark, copyright and product labeling matters in federal and state courts and counsels clients regarding trademark clearance, registration, prosecution, licensing and protection.  He also represents brandowners before the Trademark Trial and Appeal Board.  Kieran's clients include fashion, footwear, hair care and skin care companies, publishers, professional sports marketing and merchandising companies, restaurants, food and beverage manufacturers as well as businesses in the burgeoning medical marijuana industry.  Among others he has represented Major League Baseball Properties, Inc., QVC, Inc., HIGH TIMES Magazine, Edible Arrangements, Vogue International, and Iconix Brand Group, Inc.

HONORS & RECOGNITIONS

Kieran Doyle is known to be "knowledgeable and easy to deal with, he adopts a pensive and nuanced approach."  2018 WTR 1000 - The World's Leading Trademark Professionals

"[Cowan, Liebowitz & Latman’s] contentious and noncontentious practices dovetail seamlessly, with Kieran Doyle epitomizing this approach: 'He is a great all-rounder.' 'While skilled in prosecution and licensing, it is Doyle's talent as a litigator that makes him stand out.' He has long been considered an expert on trademarks for marijuana-related products, which is now paying real dividends as states begin to legalize the drug."  2017 WTR 1000 - The World's Leading Trademark Professionals 

WTR 1000 World Leading Trademark Professionals (2016, 2017, 2018)

New York "Super Lawyers" in Intellectual Property Law (2014 to present)

Prior Experience

  • Patterson Belknap Webb & Tyler LLP, Associate (1995 - 98)
  • Legal Aid Society, Federal Defenders Division, Paralegal (1990 - 95)

    Affiliations

  • Adjunct Professor, Trademark Law, New York University School of Continuing and Professional Studies.  (2007- Present)
  • Co-chair; Practicing Law Institute Advanced Seminar in Trademark Law (2008-Present)
  • Vice-chair, American Intellectual Property Law Association Trademark Law Committee (2010 -2012)
  • Chair, AIPLA Anti-Counterfeiting and Anti-Piracy Committee (2006-2010)
  • Contributor to Copyright Annual Review (1998-2006)

Education

Fordham University School of Law (JD 1995; Law Review: Associate Editor 1993 - 95)

Fordham University (BA 1990)

Bar Admissions

New York

United States District Courts - Southern and Eastern Districts of New York

 



Joe has more than thirty years' experience in intellectual property litigation, and taught at Northwestern Law School for more than 20 years.  His publications include a practitioner's Deskbook, now in its seventh edition, and a law school coursebook in its tenth edition, as well as a chapter on the "Use of Experts" in an ABA book on TTAB practice.  He has repeatedly been recognized as a "Leading Lawyer" and "Super Lawyer" in intellectual property litigation.  World Trademark Reporter identified him as "A true expert in the field," and Intellectual Property Today described him as "incredibly well versed in all aspects of trademark law, [with] a string of successes to his name."  He is a Fellow of the American Intellectual Property Law Association and the American Bar Foundation.  Joe regularly speaks on intellectual property topics.