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Fundamentals of Trademark Law in the Global Marketplace 2016


Speaker(s): Andrew S. MacKay, Beth M. Goldman, Christopher E. George, Frank Goldberg, Robert B. Burlingame, Vineeta Gajwani
Recorded on: Jun. 24, 2016
PLI Program #: 149073

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.


Frank Goldberg is Associate General Counsel of Intellectual Property at ContextLogic Inc. (d/b/a Wish), where he leads the company’s IP practice.  He specializes in trademark and copyright prosecution and enforcement, counseling, and litigation.  He also advises on marketing, IP licenses, patent issues, open source, and general intellectual-property matters. 

Before joining Wish, Frank was Associate General Counsel of Intellectual Property at Zynga Inc., where he focused on intellectual property clearance, prosecution and litigation, marketing, product, and video-game specific legal issues.  Prior to Zynga, Frank was Corporate Counsel at Gap Inc., focusing on trademarks, copyrights, publicity issues, and entertainment matters.  Frank began his career as a Litigation and Trademark Associate at Cooley LLP in San Francisco, where he represented various technology, game, and start-up clients. 

Frank is a frequent speaker and guest lecturer on trademarks, copyrights, publicity rights, and various industry-specific legal matters.  He is a graduate of the University of California, Berkeley School of Law and he received his undergraduate degree from Cornell University.


Position/Title:             Managing Counsel – Trademarks and Brands

 

Place of Business:      Intel Corporation

 

Primary Areas of Practice:      Trade mark counseling, clearance, filing, prosecution and enforcement.

 

Law School:               Emory School of Law


Robert Burlingame is a senior intellectual property attorney whose practice has focused on the intricacies of trademark and copyright matters for more than 20 years.

Mr. Burlingame handles all facets of national and multi-national trademark protection and practice (including policing, litigation, counseling, clearance, prosecution and registration, licensing and due diligence), as well as Internet, copyright and complex transactional matters. He handles U.S. and foreign trademark protection and registration strategies, oppositions, litigation, cease-and-desist letters and negotiations on a daily basis.

Mr. Burlingame is also a frequent speaker and author on intellectual property issues and has led numerous workshops and presentations for a wide array of organizations, including Thomson Reuters, Practising Law Institute (PLI), the California State Bar, Continuing Education of the Bar (CEB), CLE International, and the International Trademark Association (INTA). Mr. Burlingame also brings to his intellectual property and transactional practice a background in corporate law and civil litigation.

I am not a patent attorney pretending to be a trademark attorney.  I am proud that, for more than 20 years, I have focused on mastering the intricacies of trademark law and helping clients worldwide.” – Robert B. Burlingame


Vineeta Gajwani is Managing Counsel of IP at Electronic Arts Inc. (EA). EA is a leading developer and publisher of interactive entertainment software for personal computers, mobile devices, handheld game players, and advanced entertainment systems. Vineeta oversees the company’s trademark, copyright and domain portfolios, handles IP disputes and manages the company’s worldwide IP enforcement program. She also provides legal counsel on various IP matters, including content clearance and licensing.  Prior to joining EA, Vineeta worked at Foley & Lardner LLP, where her practice focused on IP, antitrust and commercial litigation. Vineeta received a Bachelor of Arts degree from Duke University and a Juris Doctorate degree from Washington University School of Law.

Primary Areas of Practice:          

Trademarks, Copyrights, Right of Publicity, IP Litigation

Law School:           

Washington University School of Law   

Work History:

-Attorney at Foley& Lardner LLP from 2001-2008

-IP Counsel at Electronic Arts Inc. from 2008 to present

Professional Memberships: 

-INTA

-NASABA


Litigation attorney Andrew S. MacKay focuses his practice in trademark, copyright, and patent enforcement.  He is a partner at Donahue Fitzgerald LLP and serves as co-chair of the firm’s Litigation Practice Group. He has experience representing clients at all stages of litigation, including at trials, appeals, arbitration, and mediation. 

In his trademark enforcement practice, Andrew polices and enforces his clients’ trademark rights in federal and state courts, as well as proceedings before the Trademark Trial and Appeal Board.  He has extensive experience enforcing his clients’ trademark rights in domain names, especially proceedings under the Uniform Domain Name Resolution Policy (UDRP). As one of the worldwide IP enforcement counsel for Autodesk, Inc., he represents it in litigation and UDRPs. 

In addition, Andrew enforces copyrights in software, music, architectural drawings, videogames, books, and artwork.  His patent practice involves enforcement of both design and utility patents. He is one of UK-based Dyson Technology Limited’s U.S. enforcement counsel for trademarks, patents and copyrights, and trademark counsel for Monster Inc.

Andrew received his B.A. from Yale University and his J.D. from the UC Berkeley School of Law (Boalt Hall).