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Licensing a Brand Abroad – What Clients and Their Counsel Need to Know

Speaker(s): Donna A. Tobin, Kimberly M. Maynard
Recorded on: Feb. 2, 2017
PLI Program #: 206140

Donna A. Tobin is co-chair of the Trademark & Brand Management Group and a member of the Litigation Group.

Ms. Tobin represents established and emerging companies worldwide in a variety of consumer products and services industries -- including fashion, jewelry, specialty foods, beverages, and home furnishings. She also represents well-known media, entertainment and sports entities.

A trusted advisor for more than 30 years, Ms. Tobin regularly counsels clients of all sizes on business strategy, and on how best to obtain, protect, enforce and monetize their trademarks, copyrights, trade secrets and patents. Ms. Tobin advises on complex areas of trademark and related laws, including in the areas of geographical indications, trade dress and designs. She promptly renders trademark search and clearance opinions, effectively counsels on trademark portfolio management and monetization, and successfully handles oppositions and cancellations before the Trademark Trial and Appeal Board. She has an extensive intellectual property licensing practice, and advises clients on international as well as domestic filing strategies. Ms. Tobin is an experienced IP litigator, helping her clients enforce their rights and defend against unfounded infringement allegations. All of her clients benefit from her deep knowledge of their industries and responsiveness to their concerns.

Ms. Tobin is a member of the International Trademark Association (INTA) and a contributing member of the INTA Bulletin. She is also a member of the Federal Bar Council, Intellectual Property Section, and the New York State Bar Association, Section on Women in IP.

Ms. Tobin is a member of Be Original Americas, a non-profit organization committed to preserving authentic design, a board member of Nomi Network, a group providing support for survivors of human trafficking, and a legal advisor to Women Across Frontiers, a magazine focusing on gender equality.

Prior to joining Frankfurt Kurnit, Ms. Tobin was a partner with BakerHostetler.

She is admitted to practice in New York State Courts; in the United States Courts of Appeals for the Second, Ninth and Federal Circuits; and in the United States District Courts for the Southern and Eastern Districts of New York.

Kimberly Maynard is an associate in the Trademark & Brand Management, and Intellectual Property Groups. She represents emerging and established companies on intellectual property matters across a variety of industries, including technology, fashion, jewelry, finance, food, automotive, television and dance.

Ms. Maynard guides her clients through all aspects of domestic and international brand-building and brand management. She works hard to understand client business goals and to craft practical, cost-effective legal strategies that meet those goals. Ms. Maynard analyzes and assesses the benefits and risks associated with adopting new brands, prepares and implements strategies for the development of new brands, and protects and expands established brands. Ms. Maynard represents clients before the Trademark Trial and Appeal Board and litigates cases involving complex trademark, trade dress, copyright and design patent issues in federal court. She also negotiates complex license and settlement agreements , advises on domain names and social media, and counsels on the proper use of trademarks and trade dress.

Prior to joining Frankfurt Kurnit, Ms. Maynard was an associate at BakerHostetler, where, among other things, she led a team of lawyers in an appeal of a Trademark Trial and Appeal Board decision before the Southern District of New York — ultimately securing ownership of trademarks for a major New York City dance theater. Prior to law school, Ms. Maynard was affiliated with Trisha Brown Dance Company.

Ms. Maynard is a member of the New York State Bar Association (Intellectual Property Group) and serves on INTA’s Young Practitioner’s Committee. She is admitted to practice in the New York and New Jersey state courts, as well as in the Southern and Eastern Districts of New York, the District of New Jersey, and the Court of Appeals for the Second Circuit.