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Advanced Trademark Law 2020: Current Issues


Speaker(s): Catherine Tarcu, Dahlia George, David Donahue, Jeffrey Chery, Jonathan Hudis, Kieran G. Doyle, Neda Lajevardi, Phillip Bohl, Sheldon H. Klein, Stephanie H. Bald, Travis Wimberly
Recorded on: Mar. 11, 2020
PLI Program #: 278335

Catherine Tarcu graduated from Franklin Pierce Law Center (now known as the University of New Hampshire School of Law) with a concentration in Intellectual Property.  She attended George Mason University for undergrad and has a degree in Government and International Affairs and a minor in Latin American Studies. 

After graduating from law school, Mrs. Tarcu practiced tax law before joining the USPTO in 2012. She is a Senior Attorney with the Office, and actively participates in the training of new examiners and coordinates and manages the USPTO’s unlawful use related trademark applications, which primarily relate to cannabis and hemp filings. 

She is licensed to practice in Virginia and the District of Columbia.      


Dahlia George first joined the U.S. Patent and Trademark Office (USPTO) in January 2005 as a Trademark Examining Attorney.  In January 2008, she joined the USPTO Office of General Law where she investigated and prosecuted EEOC complaints, grievances, and Merit Systems Protection Bureau appeals. She also responded to subpoenas for Government witnesses and documents, investigated Federal Tort Claims Act claims and IG inquiries, and handled Reasonable Accommodation requests for legal sufficiency.  In addition, she was the USPTO FOIA Officer.  Since January 2011 to the present, she joined the USPTO Office of Enrollment and Discipline where she investigates grievances and complaints alleging misconduct by patent and trademark practitioners; conducts moral character and “fitness to practice” applications for individuals seeking registration before the USPTO; and heads the Diversion Pilot Program for impaired practitioners.

Before working at the USPTO, Ms. George was an Assistant Attorney General for the N.H. Office of Attorney General where she investigated and prosecuted professional misconduct cases against licensed professionals such as physicians, psychiatrists, psychologists, and social workers, before their respective licensing boards.

Prior to her stint as a N.H. Assistant Attorney General, she served a tour of duty as a Judge Advocate General (JAG) in the United States Air Force where she served as a prosecutor for the United States in courts-martial and administrative discharge proceedings; handled procurement and claims matters; and advised base and wing commanders on the legality of base activities such as bingo night and mess activities.  Later she was promoted to the position of Area Defense Counsel for three bases covering 15,000 military and civilian personnel, where she represented military personnel in courts-martial (felony trials) and discharge proceedings.

She is licensed to practice law in the District of Columbia.


David Donahue is a Partner in the litigation group of Fross Zelnick Lehrman & Zissu, P.C., an intellectual property boutique with offices in New York City and Alexandria, Virginia. David brings the benefit of his extensive courtroom experience when advising clients on protection and enforcement issues relating to copyright, trademark, unfair competition, right of publicity, design patent, and related commercial matters. His commercial litigation experience also informs his approach to negotiating and drafting commercial agreements involving intellectual property matters.

A former clerk to federal judges in both the Southern District of New York and the Second Circuit Court of Appeals, David’s deep litigation experience includes successes in federal and state trial and appellate courts across the country and in matters before the USPTO’s Trademark Trial and Appeal Board. He advises and represents clients that reflect diverse sectors, including hotels and resorts, food and beverage, fashion, music, entertainment and celebrities, authors and literary works, fine art, and film. Heineken, Peloton Interactive, Gala-Salvador Dalí Foundation and Gap are among his clients.

As a member of the prestigious International Amicus Committee  of the International Trademark Association (INTA), David coauthored INTA’s amicus briefs to the U.S. Supreme Court in Iancu v. Brunetti and Romag Fasteners, Inc. v. Fossil, Inc., two of the most significant trademark cases heard by the Court in the past decade. David also is a member of the Copyright Society of the USA, the Federal Bar Council, and the New York City Bar Association’s Council on Intellectual Property.


Jeffrey Chery is an Associate with Cowan, Liebowitz & Latman, P.C. Jeffrey’s practice focuses on trademark prosecution, clearance, and maintenance matters. In addition, Jeffrey handles domestic enforcement issues and represents clients in contested proceedings before the Trademark Trial and Appeal Board. As a former Trademark Examining Attorney with the U.S. Patent and Trademark Office, Jeffrey has extensive experience in managing and resolving substantive and procedural issues pertaining to trademark prosecution. He represents clients in many industries, including sports and entertainment, banking and financial, software, apparel, and consumer goods. Jeffrey was named a New York Metro 2019 Rising Star by Super Lawyers.

Prior Employment

  • United States Patent and Trademark Office – Trademark Attorney Advisor
  • New York State Supreme Court, Kings County – Law Clerk for Hon. Delores J. Thomas, Hon. Herbert Kramer (Ret.), and Hon. Yvonne Lewis (Ret.)
  • National Basketball Association –Team Premium Licensing and Business Development Assistant

Education

  • St. John's University School of Law (JD 2008) (CALI Award for Excellence in Constitutional Law and Race and Corporate Law; Dean’s List; President, Black Law Students Association; Secretary, Entertainment and Sports Law Society)
  • University of Florida (B.S. in Sport Management; Minor in Business Administration, 2003, cum laude) (President’s List; College of Health and Human Performance Dean’s List; Golden Key Int’l Honor Society; Co-founder and Vice President, Student Sport Management Association)


Jonathan Hudis is an Administrative Trademark Judge with the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”).  Prior to joining the USPTO, Judge Hudis was in private practice as a partner with the national law firms Quarles & Brady LLP and Oblon, McClelland, Maier & Neustadt LLP, respectively. He also served on the Trademark Public Advisory Council (“TPAC”) of the USPTO, on the Board of directors of the American Intellectual Property Law Association (“AIPLA”), and was member of the Council of the American Bar Association’s Intellectual Property Law Section (“ABA-IPL”). Judge Hudis received his J.D. from Brooklyn Law School, and a B.S. in Business Administration from the State University of New York at Albany.


Neda Lajevardi is a partner at Lott & Fischer in Coral Gables, Florida and is a native Miamian.  Neda is a Phi Beta Kappa graduate of Emory University, where she earned a Bachelor of Arts degree in Philosophy and a minor in Persian Language and Literature.  She received her Juris Doctor cum laude from the University of Florida Levin College of Law, with a focus in intellectual property law.  She is trilingual, fluent in written and spoken Spanish and Persian, in addition to English.

Prior to joining Lott & Fischer, Neda was a fellow at the World Intellectual Property Organization at the United Nations in New York City, where she experienced firsthand the intricacies of international intellectual property law.

While Neda’s practice includes intellectual property law at large, her primary practice is in U.S. and international trademark law.  Her clients range from startups to multinational companies with trademark portfolios spanning the globe.  Neda counsels her clients in all aspects of trademark law, including the creation, clearance, prosecution, maintenance and enforcement of their brands, licensing, and litigation.  

Neda is active in the intellectual property community, serving as a member of her local bar associations as well as the Florida Association of Women Lawyers.  She is also highly involved with the International Trademark Association (“INTA”).  She has presented at INTA Conferences in Barcelona, Spain and Orlando, Florida and currently serves as a Subcommittee Co-Chair of INTA’s Young Practitioners Committee, where she helps educate young lawyers about INTA and trademark law. 

 

 

 


Phillip Bohl focuses his practice in the areas of business reorganization and bankruptcy.  He practices throughout the United States representing secured and unsecured creditors in business workouts, reorganizations, and bankruptcies. He has significant experience representing purchasers of assets in Chapter 11 and Chapter 7 bankruptcy cases, and other insolvency settings.

Phillip is a Fellow in the American College of Bankruptcy.  Phillip has lectured on bankruptcy law at the University of Minnesota Law School, the Peking University Law Department, and at numerous continuing legal education courses. Previously, Phillip was a law clerk for Bankruptcy Judges Hartley Nordin and Margaret Mahoney.

 


Sheldon Klein represents clients in the areas of trademark, copyright, unfair competition, advertising and social media, handling matters involving intellectual property (IP) availability and infringement opinions, portfolio management, litigation, licensing and transactions.

Sheldon handles a wide range of IP issues. He conducts IP audits and due diligence investigations and drafts IP licenses and other agreements. He also enforces IP rights via negotiation, litigation, and opposition and cancellation proceedings before the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board and foreign trademark offices.

Clients highly value the depth and breadth of Sheldon's intellectual property experience and knowledge. He has taught IP law at George Washington University, and chairs an annual seminar/webinar on advanced trademark law for the Practising Law Institute. He regularly writes about current issues and presents on IP law topics nationally and internationally.

Sheldon served as President of the American Intellectual Property Law Association (AIPLA), www.aipla.org, and of the U.S. section of the International Association for the Protection of Intellectual Property (AIPPI-US) for the 2018-19 term, and continues to serve on the AIPLA Executive Committee. He is a longtime, active member of AIPLA and has held a number of leadership roles of this premier intellectual property law association that serves members throughout the nation and the world.

 

 


Travis Wimberly practices trademark and copyright law. He represents clients in federal and state court litigation, in contentious and non-contentious matters before the U.S. Patent & Trademark Office, and in application matters before the U.S. Copyright Office. In addition, Travis advises clients on building their IP portfolios, developing enforcement strategies, and policing of infringements. He also handles licensing and other IP-related contracts and negotiations.

Travis has experience as a first-chair trial lawyer and an appellate oral advocate. He has drafted briefs in the U.S. Supreme Court and in several federal courts of appeals. His experience includes four years with Vinson & Elkins LLP. Before entering private practice, he served as a law clerk to the Honorable Richard C. Tallman on the U.S. Court of Appeals for the Ninth Circuit.

Travis earned his J.D. with High Honors from The University of Texas School of Law, where he was Keeper of the Peregrinus for the Chancellors, awarded for having the fourth-highest grade-point average after second year. Travis also served as an Articles Editor on the Texas Law Review and was a member of the Order of the Coif.

Before law school, Travis graduated with Highest Honors from the University of Texas at Austin, receiving a Bachelor of Science in Radio-Television-Film, with a concentration in screenwriting and critical theory.

Outside the office, Travis enjoys NBA basketball, the Texas Longhorns, and trying to find the country’s best sandwich.

HONORS

Texas Rising Stars list by Super Lawyers®, a Thomson Reuters service (2017-2019)

Rising Star list by Managing Intellectual Property’s IP Stars Magazine (2018-2019)

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

American Bar Association

  • IP Law Section
  • Amicus Briefs Committee (IP Law Section)

American Intellectual Property Law Association

The Honorable Lee Yeakel IP Inn of Court

Austin Intellectual Property Law Association

Federal Bar Association

  • Sponsorship Chair, Austin Chapter (2019-2020)

 


Kieran litigates trademark, copyright and product labeling matters in federal and state courts and counsels clients regarding trademark clearance, registration, prosecution, licensing and protection.  He also represents brandowners before the Trademark Trial and Appeal Board.  Kieran's clients include fashion, footwear, hair care and skin care companies, publishers, professional sports marketing and merchandising companies, restaurants, food and beverage manufacturers as well as businesses in the burgeoning medical marijuana industry.  Among others he has represented Major League Baseball Properties, Inc., QVC, Inc., HIGH TIMES Magazine, Edible Arrangements, Vogue International, and Iconix Brand Group, Inc.

HONORS & RECOGNITIONS

Kieran Doyle is known to be "knowledgeable and easy to deal with, he adopts a pensive and nuanced approach."  2018 WTR 1000 - The World's Leading Trademark Professionals

"[Cowan, Liebowitz & Latman’s] contentious and noncontentious practices dovetail seamlessly, with Kieran Doyle epitomizing this approach: 'He is a great all-rounder.' 'While skilled in prosecution and licensing, it is Doyle's talent as a litigator that makes him stand out.' He has long been considered an expert on trademarks for marijuana-related products, which is now paying real dividends as states begin to legalize the drug."  2017 WTR 1000 - The World's Leading Trademark Professionals 

WTR 1000 World Leading Trademark Professionals (2016, 2017, 2018)

New York "Super Lawyers" in Intellectual Property Law (2014 to present)

Prior Experience

  • Patterson Belknap Webb & Tyler LLP, Associate (1995 - 98)
  • Legal Aid Society, Federal Defenders Division, Paralegal (1990 - 95)

    Affiliations

  • Adjunct Professor, Trademark Law, New York University School of Continuing and Professional Studies.  (2007- Present)
  • Co-chair; Practicing Law Institute Advanced Seminar in Trademark Law (2008-Present)
  • Vice-chair, American Intellectual Property Law Association Trademark Law Committee (2010 -2012)
  • Chair, AIPLA Anti-Counterfeiting and Anti-Piracy Committee (2006-2010)
  • Contributor to Copyright Annual Review (1998-2006)

Education

Fordham University School of Law (JD 1995; Law Review: Associate Editor 1993 - 95)

Fordham University (BA 1990)

Bar Admissions

New York

United States District Courts - Southern and Eastern Districts of New York

 



Ms. Bald is a Partner at Kelly IP, LLP, in Washington, DC, where she specializes in trademark and unfair competition litigation, disputes, and strategic counseling. She represents clients in federal courts across the country and before the USPTO’s Trademark Trial and Appeal Board. She also handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has significant experience managing global trademark portfolios and advising clients on the selection, use, registration, enforcement, and licensing of trademarks.

Ms. Bald has been named to Managing Intellectual Property’s Top 250 Women in IP (2014-2018), named to the World Trademark Review 1000 (2016-2018), and recognized as an “IP Star” by Managing Intellectual Property (2014-2018). She was recently appointed by the Secretary of Commerce to serve a three-year term as a member of the USPTO's Trademark Public Advisory Committee (TPAC). Ms. Bald is also active with the American Intellectual Property Law Association (AIPLA), where she has served as the chair and vice chair of the Trademark Law and Trademark Litigation Committees.

Ms. Bald has spoken and written extensively on a wide variety of trademark issues, including as a contributing author to leading publications on trademark remedies and TTAB practice and procedure. Stephanie also serves as an Adjunct Professor at American University's Washington College of Law where she has taught an advanced course on Trademark Practice and Procedure for many years.

Ms. Bald received a bachelor's degree in English Literature and French from Denison University, and her law degree and master’s degree in International Politics from American University.