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Fundamentals of Trademark Law in the Global Marketplace 2017


Speaker(s): Andrew S. MacKay, Beth M. Goldman, Frank Goldberg, Herb Williams, Robert B. Burlingame, Vineeta Gajwani
Recorded on: Jul. 18, 2017
PLI Program #: 186195

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.


Primary Areas of Practice: Trademark counseling, clearance, filing, prosecution, enforcement, licensing and M&A support.

Law School: University of California – Hastings College of the Law 

Work History: Herb Williams is a Senior Attorney with the Trademarks & Brands (TM&B) legal group at Intel Corporation.  Herb manages the team responsible for trademark enforcement for the INTEL mark in the Asia-Pacific region and is responsible for worldwide trademark enforcement for several other company trademarks.  Herb also manages worldwide clearance projects, filing/registration programs, trademark licensing, trademark due diligence, M&A project support and other duties. Herb began his career as Law Clerk to Hon. Susan Illston of the U.S. District Court for the Northern District of California, and practiced as an IP attorney at Foley & Lardner LLP and at Heller Ehrman White & McAuliffe before joining Intel in 2010.

Professional Memberships: San Francisco Bar Association; Beverly Hills Bar Association                                                 


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).


  • Intellectual Property
  • Intellectual Property Litigation
  • Trademark Counseling, Prosecution & Litigation
  • Internet & Interactive Entertainment
  • Internet & Social Media
  • IP Audits & Strategic Planning
  • Aviation, Aerospace & Transportation
  • Communications
  • Consumer & Retail
  • Energy
  • Financial Services Litigation
  • Health Care
  • Restaurant, Food & Beverage
  • Technology
  • Travel, Leisure & Hospitality
  • Wine, Beer & Spirits Law

“I am not a patent attorney pretending to be a trademark attorney.  I am proud to have been part of Pillsbury’s Trademark Team for more than 15 years, mastering the intricacies of trademark law and helping clients worldwide.”

– Robert B. Burlingame

Robert (Bob) Burlingame helps companies of all sizes and industries protect their brands in the U.S. and abroad.

Bob handles all facets of trademarks, including clearance, proper use, registration, oppositions and cancellations, litigation, licensing, and transfers.

Bob regularly counsels and assists clients in regard to protecting their intellectual property rights, particularly trademarks and copyrights, in the U.S. and abroad. He handles IP oppositions, litigation, cease-and-desist letters, trademark searches, and Trademark Office filings on a daily basis. He also has substantial experience with domain names, other Internet issues, and complex transactions.

Representative Experience

Extensive and internationally recognized work in areas such as alcoholic beverages, hedge funds and investment managers, software and mobile apps, 3D printing, mass media, cybersecurity, aerospace and defense, real estate and retail services.

Professional Highlights

Frequent speaker and author on IP issues. Has given presentations for many organizations, including:

  • California State Bar
  • UC Berkeley
  • UC Davis
  • Thomson Reuters
  • Practising Law Institute (PLI)
  • Continuing Education of the Bar (CEB)
  • CLE International
  • International Trademark Association (INTA)
  • International Wine Law Association (AIDV)

Representative Honors & Awards

World Trademark Review 1000, Prosecution & Strategy (2017)

Middle-Market M&A Award, Consumer and Retail Products—Finalist, M&A Advisor (2008)

Education

J.D., University of California, Hastings College of the Law, 1998
Articles Editor, The Hastings Law Journal; Externship with Hon. John E. Munter, San Francisco Superior Court, 1997

B.A., Communications, University of California, Los Angeles, 1995
Cum laude

Admissions

California

Courts

U.S. District Court, Northern and Central Districts of California