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Trademark Cases: Update on Preliminary Injunctions


Speaker(s): Richard L. Kirkpatrick, Robert B. Burlingame
Recorded on: Apr. 21, 2016
PLI Program #: 176870

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


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