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Advanced Trademark Law 2018: Current Issues


Speaker(s): Ala'a Wafa, Brian B. Darville, Craig B. Whitney, Eric J. Shimanoff, James H.. Johnson, Jr., Kathryn E. Smith, Peter M. Routhier, Tara M. Vold
Recorded on: Mar. 14, 2018
PLI Program #: 219949

Ala’a Wafa is Associate Counsel in the Legal Department at Cummins Inc., a global leader in the design, manufacture, distribution and servicing of engines, power generation products, and related components and technology.  She focuses her practice in two areas, Intellectual Property and Labor & Employment.  Within the realm of IP, her responsibilities include trademark prosecution, licensing, counseling, and providing internal IP training. Ala’a also supports the company’s anti-counterfeiting strategy by managing domestic and international anti-counterfeiting efforts and enforcement.  This includes the investigation of and legal action against infringers in markets across the world, including complex, multi-jurisdictional matters involving the manufacture, distribution or sale of counterfeit products. 

Ala’a joined Cummins in 2011 as a Corporate Six Sigma Black Belt, shortly after completing her law school education and joined the Legal Department in 2013.  Prior to attending law school, Ala'a worked as a Staff Assistant, and later Legislative Correspondent, for U.S. Senator Russ Feingold in Washington, D.C.

Education

Ala’a received her law degree from Michigan State University – College of Law (J.D., 2010) with a concentration in International and Comparative Law. During law school, she was a member of the International Law Review.  Ala’a received her bachelor’s degree from the University of Wisconsin – Madison (B.S. in Political Science and International Studies, 2005). 

Bar Admissions

Indiana
Illinois

Professional Associations

Indianapolis Bar Association

Honors

William R. Laws Human Rights Award, Human Rights Commission, Columbus, Indiana, 2017
Cummins Chairman’s Award, 2013

Community Engagement

Center for Interfaith Cooperation, Board Member
Indiana State Bar Association Leadership Development Academy, class of 201

 


Brian Darville chairs the Trademark and Copyright Practice Group at Oblon.  He has over two decades of litigation experience in federal courts throughout the U.S. focused primarily on trademark and copyright litigation.  He counsels clients regularly on trademark, unfair competition, copyright, and ecommerce legal issues and has experience in all aspects of trademark and copyright prosecution, including clearance opinions, trademark portfolio management, licensing and enforcement.  He frequently handles administrative proceedings before the Trademark Trial and Appeal Board. 

Mr. Darville received a B.A. in Economics from the University of Virginia, his law degree (Juris Doctor) from the University of Virginia School of Law, and an LL.M. in Patent and Intellectual Property Law, with Highest Honors, from the George Washington University Law School.

He is admitted to practice before the Virginia and District of Columbia Bars.  He is also admitted to several United States District Courts and United States Circuit Courts of Appeals. 

Mr. Darville is a member of the International Trademark Association, the American Intellectual Property Law Association, the Copyright Society of the U.S.A., and other professional associations.

He speaks and writes frequently on trademark, copyright and ecommerce legal issues.

 He speaks annually on an Introduction to Trademark Litigation in Federal Court, for the AIPLA Trademark Boot Camp (June 2014, June 2015, June 2016, June 2017).


Craig Whitney is a partner at Frankfurt, Kurnit, Klein & Selz P.C., with a focus on copyright, trademark, false advertising, and trade secret litigation. Mr. Whitney represents corporate and individual clients in the media, technology, publishing, apparel, pharmaceutical, cosmetic, financial, art, entertainment and design industries.

Mr. Whitney handles copyright, trademark, trade secret, right of publicity, false advertising and patent disputes, protecting valuable intellectual property rights from would-be infringers and defending clients against wrongful accusations of infringement. He also advises clients on brand management and licensing. He oversees internal and administrative intellectual property investigations and class action litigation defense. Mr. Whitney prosecutes domestic and foreign trademark applications as well. He actively assists clients in navigating the rapidly evolving landscape of intellectual property law.

Mr. Whitney’s representative work includes a series of successful outcomes pursuing false advertising claims against product review websites; a landmark victory clarifying copyright fair use and parody on behalf of several well-known musicians; a defense win dismissing copyright infringement claims brought by a putative class of attorneys against the leading legal research; a favorable outcome for a high-end beauty products company in a trademark and trade dress action against a manufacturer of knock-off products; a district and appellate court decision dismissing all claims by a proposed class against an international bank for alleged violations of, among other things, the Federal False Marking Act, RICO and the CAN-SPAM Act; and counseling prominent art museums and galleries on domestic and international copyright issues.

Mr. Whitney is a graduate of Cornell University (BS) and Harvard Law School (JD, cum laude). Following law school, he clerked for the Honorable Stephen V. Wilson in the United States District Court of the Central District of California. He is admitted to practice in New York and California.


Eric J. Shimanoff is a partner with the law firm of Cowan, Liebowitz & Latman, P.C. Eric is a litigator with a broad range of experience, focusing primarily on intellectual property matters, including copyright, trademark, unfair competition, patent, right of publicity and Internet-related issues. Eric has counseled and litigated on behalf of clients in a wide range of industries, including music, fashion, sports, pharmaceutical, finance, healthcare, software, retail, video game, publishing, entertainment, candy and confections, apparel, automotive, scientific research, art and various consumer products. Eric has extensive experience in both state and federal courts, in contested proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office and in UDRP domain name dispute proceedings before the World Intellectual Property Organization and the National Arbitration Forum. Eric also conducts clearances and prosecutes applications for trademarks and copyrights worldwide.

Eric graduated summa cum laude from New York Law School in 2002, where he was the recipient of the Victor Herbert Copyright Scholarship, was a Notes and Comments Editor on the New York Law School Law Review and won first place in the ASCAP Nathan Burkan Memorial Copyright Writing Competition. Eric holds a Masters degree in Music from the New England Conservatory of Music (1997) and a Bachelor's degree in Music from the State University of New York at Binghamton (1994). Prior to becoming an attorney, Eric taught music and musical theatre at a performing arts high school in Manhattan and directed and musical directed several musicals in New York and Boston.

 


Jim Johnson cut his teeth as a trademark lawyer by serving as in-house counsel for The Coca-Cola and Kellogg companies and as an Examining Attorney in the U.S. Patent and Trademark Office. Now a member of Eversheds Sutherland (US)'s Intellectual Property Practice Group, Jim continues to enforce the trademarks and copyrights of some of the world’s most famous and valuable brands, as well as smaller companies and start-ups. His practice includes filing oppositions and lawsuits to protect high- value intellectual property rights, counseling clients on how to best protect those rights, including licensing matters, and managing international IP portfolios. He also advises on unfair competition and domain-name disputes.

Jim regularly works with clients and investigators to identify infringing marks around the world, including those found online. He challenges infringement and counterfeit trademark use through litigation and administrative procedures, and protects trademarks by developing enforcement strategies with global customs departments and IP rights agencies. Jim’s extensive background in managing international portfolios includes negotiating and drafting settlement agreements and preparing clearance opinion memos and strategies. Jim represents clients in proceedings before the Trademark Trial and Appeal Board and in litigation before the U.S. District Courts.

Jim is a registered mediator of the Georgia Office of Dispute Resolution.

Awards

  • Received the "Mentor of the Year" award by Atlanta IP Inn Court(2016)
  • Named among “The World’s Leading Trademark Professionals” in Georgia by World Trademark Review (2016)
  • Recognized by Chambers USA: Guide to Leading Business Lawyers in the area of intellectual property (2010-2017)
  • Named one of the best minority intellectual property attorneys in America by The Minority Corporate Counsel Association, Diversity and the Bar (May/June2003)

Professional Activities

  • Former Member, Pro Bono Committee, International TrademarkAssociation
  • Former Member, Trademark Public Advisory Committee, U.S. Patent and TrademarkOffice
  • Former Member, Board of Directors, International TrademarkAssociation
  • Member, Intellectual Property Owners Association
  • Member, American Bar Association
  • Vice President, Atlanta IP Inn of Court
  • Chairman, IP Section of the State Bar ofGeorgia
  • Member, State Bar of Georgia Diversity Committee

Education

J.D., University of Virginia School of Law
B.A., Princeton University


Kathryn E. Smith (Kate) is a Partner with Wood Herron & Evans in the firm’s Branding & Content Practice Group.  Kate joined Wood Herron & Evans in 1996, and recently celebrated her twentieth (20th) year anniversary with the firm.  Kate handles all areas of trademark prosecution and litigation, copyright prosecution and litigation, and matters of unfair competition. She is admitted to the Ohio bar and the U.S. District Court, Southern District of Ohio.

Kate is an active member of the American Intellectual Property Law Association (AIPLA), where she currently serves as Chair of the Trademark Relations with the USPTO Committee.  She is also active in the International Trademark Association (INTA), and the American, Ohio, and Cincinnati Bar Associations.  In 2017, Kate was named the Trademark Lawyer of the Year in the Cincinnati, OH market by Best Lawyers®. She resides in Northern Kentucky with her husband and two children.

Education

University of Toledo College of Law, Toledo, Ohio, J.D. - 1996
Kenyon College, B.A., Bachelor of Arts magna cum laude – 1992; Honors: Elected to Phi Beta Kappa; Major: History

Classes/Seminars

  • Coordinator, Panel Discussion on Injunctions and Other Non-Monetary Relief for Trademark Infringement, AIPLA Spring Meeting (May 2017)
  • Presenter, Cincinnati Business Courier and Salmon P. Chase College of Law, Northern Kentucky University Program: Business and Legal Strategies (August 2014)
  • Contributor and Committee Vice Chair, Legal Standards and Quarterly Case Summaries Projects, AIPLA Trademark Litigation Committee (2011)
  • Speaker, Cincinnati Bar Association Program “The Landscape is Changing – Advising Clients Regarding Domain Names and Dispute Resolution” (June 2010)

Honors and Awards

  • Best Lawyers® in Trademark Law, 2012 - 2017
  • Recognized in Best Lawyers® as the “Lawyer of the Year” in the practice area of Trademark Law in Cincinnati, Ohio, 2017
  • Best Attorneys in Ohio by Best Lawyers® – Trademark Law, 2014
  • Chambers, USA, Named a “Notable Practitioner”, 2014
  • Chambers, USA, “Key Individual” in the area of Intellectual Property Law, 2010 - 2013
  • Ohio Super Lawyers Rising Stars by Law and Politics Media, 2007 - 2008
  • Cincinnati Academy of Leadership for Lawyers (CALL), Class IX, 2005

Pro Bono Activities

Vice President, Board of Directors of Children, Inc.


Peter Routhier is an attorney in FaegreBD's trademark, copyright, advertising and media group, where he focuses his practice on the enforcement and defense of copyright and trademark claims. In addition to handling disputed matters in the federal courts and elsewhere, Peter regularly provides strategic counsel on the maintenance and preservation of trademark and copyright rights.

Cases in which Peter’s taken a lead role include:

  • Obtained summary judgment for the defendant in a right of publicity action venued in the Middle District of Alabama, and successfully defended the judgment in the 11th Circuit Court of Appeals. 
  • Obtained the dismissal of a copyright infringement action venued in the District of Minnesota based on plaintiff’s failure to comply with certain copyright formalities. 
  • Obtained the dismissal of state tort claims on the basis of copyright preemption. The case was venued in the Western District of Tennessee.
  • Successfully resolved, by settlement or summary judgment, a number of copyright and trademark infringement actions venued in the District of Minnesota, the Northern District of Illinois, the Central District of California, and elsewhere.

Prior to joining FaegreBD, Peter was an intern in the Enforcement Division of the World Intellectual Property Organization, a United Nations agency in Geneva, Switzerland.

Pro Bono

Peter also has a substantial pro bono practice, primarily addressing Fourth Amendment issues in Minnesota's appellate courts. He has represented the ACLU of Minnesota as amicus curiae and served as Special Assistant State Public Defender.

Honors

Faegre Baker Daniels — Pro Bono Honor Roll, 2014-16

Professional Associations

  • Copyright Society of the U.S.A.
  • International Trademark Association
  • Federal Bar Association
  • Minnesota State Bar Association


Tara focuses her practice on US and international trademark clearance, portfolio management and protection, and also on advertising, unfair competition, and online brand counseling. She represents companies in trademark, domain name and copyright dispute proceedings, including Trademark Trial and Appeal Board and domain name arbitration proceedings, and in negotiating settlement agreements in these areas.

Tara handles a wide range of matters relating to various aspects of intellectual property law, including prosecution before the US Patent and Trademark Office, international intellectual property prosecution, the drafting and negotiation of license agreements, managing the intellectual property aspects of corporate transactions and resolving domain name and other internet-related conflicts. She also has substantial intellectual property litigation experience, having worked on numerous trademark and copyright litigation matters in several Federal District Courts.

Honors

WTR 1000 The World’s Leading Trademark Professionals, World Trademark Review (2015 – 2017)
Who’s Who Legal: The International Who’s Who of Trademark Lawyers, Law Business Research Ltd. (2015-2016)

Professional Activities and Memberships

  • International Trademark Association
    • Advertising and Related Rights SubCommittee, Public Resources Committee (2012-2013)
    • Public Resources Committee, Advertising and Related Rights SubCommittee, Co-Chair (2014-2015)
    • Public Information Committee, Journalists and General Public SubCommittee, Chair (2016-2017)
  • American Intellectual Property  Law Association (AIPLA)
  • State Bar of Virginia
  • State Bar of Illinois
  • Bar of the District of Columbia