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Fundamentals of Trademark Law in the Global Marketplace 2019


Speaker(s): Andrew S. MacKay, Anne Hiaring Hocking, Beth M. Goldman, Eric Gelwicks, Frank Goldberg, Herb Williams, Robert B. Burlingame, Vijay Toke
Recorded on: Jul. 9, 2019
PLI Program #: 253054

Anne Hiaring Hocking has specialized in trademark and copyright law since 1981.  She  was  Adjunct Professor of Trademark, Copyright, and International Intellectual Property Law at Golden Gate University in San Francisco, California and Bangkok, Thailand.  She has chaired numerous programs on Intellectual Property law topics, and has served as President of the San Francisco Intellectual Property Law Association and Chair of the State Bar of California Intellectual Property Law Section. She has spoken and moderated numerous International Trademark Law Association and Practicing Law Institute programs.  She has written for AmJur on copyright and trademark law topics, as well as presented numerous papers.

After working at two large firms, she was the IP rights attorney for Pacific Telesis for five years, where she was responsible for all aspects of domestic and international trademark filing and enforcement, and all copyright and trade secret procedures. In 1990 she founded her own firm, then in 2010, Hiaring + Smith LLP, which merged with Donahue Fitzgerald LLP in 2015.

Selected Publications

  • “Selected Liability Issues: Social Networks and Blogs” The computer & Internet Lawyer, (Vol. 26, January 2009)
  • “Does Information Really Want to be Free?” Gothenburg Film Festival, 2006
  • “What’s New in the Neighborhood – The Export of the DMCA in PostTRIPS FTA’s” Golden Gate University International & Comparative Law Journal (2005)
  • Fair Use And TRIPS: Too Much of a Good Thing?”, Copyright Law Society of the U.S. January Midwinter Meeting 2004

Selected Speaking Engagements

  • PLI, Intellectual Property Law Institute, various years
  • Selected Liability Issues, Social Networks and Blogs (2008)
  • Navigating Trademark Trial and Appeal Board Practice (2000)
  • INTA TTAB Practice for Novices Forum (2000)
  • Insight Information, “Sixth Complete Course on Negotiating and Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets” (2000)
  • PLI, Program Chair, “Trademarks in the Global Marketplace” (1994-2017)


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                                                 


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


Eric is Senior Counsel and Director of Business & Legal Affairs at Live Nation Merchandise, Inc. (the merchandise division of Live Nation Entertainment), where he oversees the intellectual property and merchandise-related transactions and anticounterfeiting program for Live Nation’s artists, bands, and music brands along with handling other business and legal matters. Prior to joining Live Nation, Eric was an Associate at Owen, Wickersham & Erickson, P.C., a specialized trademark and copyright law firm, and worked in the legal department of an entertainment-media startup company. Eric currently serves as President of the San Francisco Intellectual Property Law Association and is on the Advisory Board for Golden Gate University School of Law’s IP Law Center. He earned his law degree from Golden Gate University School of Law with a specialization certificate in intellectual property law and has an undergraduate degree in political science from the University of California, Santa Barbara.


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).


Vijay’s practice centers on intellectual property, with a particular focus on trademark and copyright matters. Vijay has represented clients in both federal district and appellate courts in intellectual property, trade secret, and other commercial disputes. He also represents clients in ex parte and inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). Vijay has co-authored amicus appellate briefs for The International Trademark Association (INTA) in influential trademark and false advertising cases, including cases before the Supreme Court of the United States and the Third Circuit Court of Appeals. Vijay also assists clients with US and international trademark registration, counseling, licensing, portfolio management, and enforcement. Vijay's clients include acclaimed restaurants, award-winning international wineries, retailers, clothing and jewelry designers, and biomedical and tech companies.

Vijay is a frequent writer on topics in trademark and copyright law. He has published articles, or has been quoted or referenced, in various publications, such as The Financial Times, Managing IP online magazine, The Recorder, the ABA Journal, BusinessWeek, and the San Francisco Chronicle. Vijay has taught for Practising Law Institute (PLI) on trademark litigation and other topics in trademark law since 2010. He has also taught intellectual property for the Bordeaux School of Management and has served on the faculty of the Mind The Bridge startup school in San Francisco.

Vijay is a member of the State Bar of California, and the International Trademark Association, for whom he serves on the Leadership Development Committee. He served on the Board of Governors of UC Hastings College of the Law from 2012 to 2018. He is admitted to practice before the United States District Court for the Northern, Eastern, Central, and Southern Districts of California, the Second Circuit Court of Appeals, the Ninth Circuit Court of Appeals, and the United States Supreme Court.  Vijay has been named to the prestigious WTR 1000 ranking of the world’s top trademark attorneys since 2015.  He has also been named to the Super Lawyers list in IP litigation since 2015 and was a Super Lawyers Rising star from 2010 to 2014.

Vijay is an avid amateur chef, and loves to try new and interesting recipes. He is also nearly fluent in Italian, which aids him immensely when ordering dinner at Italian restaurants, watching Fellini films, or working with Italian companies.

Special Expertise:

  • Intellectual Property, trade secret, and commercial litigation
  • Trademark clearance, counseling, prosecution, portfolio management, and enforcement

Education:

  • Swarthmore College: Bachelor of Arts, Biology
  • University of California, Hastings College of Law: Juris Doctor