Skip to main content

Advanced Trademark Law 2021: Current Issues


Speaker(s): Angela J. Grayson, CIPP/US, CLP, Brian B. Darville, Eve DelSoldo, George Chen, Jeanne C. Fromer, Kieran G. Doyle, Kyle-Beth Hilfer, Leslie J. Lott, Mary Walker, Megan M. Kearney, Nicole Gaither, Richard Kempner, Sean D. Garrison, Sheldon H. Klein, Spring Chang
Recorded on: Mar. 10, 2021
PLI Program #: 303886

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).


George Chen is a member of the firmwide international Board of Bryan Cave Leighton Paisner LLP, which is one of the top 50 law firms in the world with 1,400 lawyers worldwide.  He also is the leader of the Intellectual Property Practice Group in the Phoenix office. 

George partners with long-term clients to develop, protect, litigate, and license patents, copyrights, trademarks, and trade secrets.  His recent representations include: (1) representing fintech companies and electronics/semiconductor companies in lawsuits involving utility patent, design patent, and trade dress infringement, as well as unfair competition; (2) representing Internet search companies in lawsuits involving trademark infringement, trademark dilution, and Internet cybersquatting; (3) representing software companies in lawsuits involving copyright infringement and breach of contract; and (4) preparing and prosecuting patent, trademark, and copyright applications for universities, computer chip companies, eCommerce companies, fintech companies, and consumer electronics companies.

He is recognized as (1) the Phoenix Intellectual Property Litigation “Lawyer of the Year” by Best Lawyers of America, (2) the Phoenix Patent Law "Lawyer of the Year" by Best Lawyers of America, (3) a "World's Leading Trademark Professional" by World Trademark Review, (4) a "Top 50 Attorney" in Arizona by Super Lawyers, (5) the "2015 Member of the Year" by the State Bar of Arizona, and (6) a “2009 Top Pro Bono Attorney" by the Arizona Foundation for Legal Services & Education.  Arizona Governor Doug Ducey has commended George for distinguished legal talent and leadership and for dedicated service in contributing to diversity and inclusion in the legal profession and community. 

George has testified before the United States Congress, has appeared in the media, including on NBC News, and is a co-inventor of 4 United States patents.  He regularly presents seminars on patents, copyrights, trademarks, trade secrets, and software.  During the past 3 years, George has conducted over 35 CLE presentations and other seminars regarding intellectual property, bar leadership, and diversity & inclusion in the legal profession.

He also is a past President of the National Asian Pacific American Bar Association (NAPABA), which represents the interests of over 50,000 Asian Pacific American lawyers and judges across the country.  He also has served as the Chair of the Mentor Committee for the State Bar of Arizona, and as a member of the Board of Directors for the Maricopa County Bar Association.

George earned his Bachelor of Science in electrical engineering, with a minor in economics, from the Massachusetts Institute of Technology (MIT), and he worked as an engineer at Motorola, Inc. while he earned his Masters of Science in electrical engineering, with an emphasis in solid state electronics, from Arizona State University (ASU).  He also earned his Juris Doctorate with honors from ASU’s Sandra Day O’Connor College of Law.

 


Kyle-Beth Hilfer has over thirty years’ experience providing legal counsel to advertising, marketing, promotions, intellectual property, and new media clients. Leveraging her deep understanding of branding, Kyle-Beth ensures regulatory compliance for her clients’ advertising and marketing campaigns. She also helps clients create, monetize, and protect their trademark and copyright portfolios in a global marketplace.

Kyle-Beth counsels across all types of platforms in an ever-changing marketplace, including print, tv, radio, social media, digital, e-commerce, mobile, and virtual reality. She regularly performs advertising copy clearance and claim substantiation review. In addition, Kyle-Beth counsels from concept stage through execution on the legal implications of specific marketing techniques, including sweepstakes and contests, word of mouth marketing, user-generated content, premium offers, rebates, negative option and advance consent marketing, loyalty programs, cause marketing, and native advertising.

Kyle-Beth is a resource for all transactional matters relating to advertising and marketing campaigns.  She drafts all required contracts from agency, marketing services, and influencer contracts to NDA’s, vendor/consulting agreements, and licenses. At the same time, she excels in proactive and early dispute resolution. She also counsels on regulatory investigations, false advertising litigation, and NAD challenges.

“My favorite splurge is travel—anywhere around the world. When I’m at home, you’ll probably find me practicing yoga, singing along with Broadway soundtracks, or reading a great historical fiction novel.”


Leslie J. Lott is a founding partner of Lott & Fischer, an intellectual property law firm, with offices in Coral Gables, Florida.   Ms. Lott is a past member of the Florida Bar Board of Governors.  She has served on the Trademark Public Advisory Committee of the United States Patent and Trademark Office.  She was actively involved with the International Trademark Association for many years, having served two terms on the Board of Directors, and was named to the Panel of Distinguished Neutrals for the Resolution of Trademark Disputes. 

Ms. Lott was named “Lawyer of the Year” in Trademark Law for the Miami area for the 2018 edition of The Best Lawyers in America®, and was named “Lawyer of the Year” in Patent Litigation for the Miami area for the 2017 edition. In 2016, she received the Dade County Bar Association’s Legal Luminary Award.

She was named one of Florida’s Top 50 Female Florida Super Lawyers, and has repeatedly appeared in Florida Super Lawyers magazine in the intellectual property category. She was among the first in the country to be certified as a specialist in intellectual property law, and is past chair of the Intellectual Property Committee of the Florida Bar.  


Mary Beth Walker serves as Counsel Detailee to the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, where she focuses on trademark and copyright issues.  Ms. Walker is detailed from the U.S. Patent and Trademark Office, where she is an Associate Solicitor.  In that role she represented the agency in court, principally in trademark cases.  Prior to joining the USPTO, Ms. Walker worked in the Office of General Counsel for the U.S. House of Representatives, and at two law firms in Washington, D.C.  Ms. Walker also clerked for the Honorable Theresa Carroll Buchanan of the United States District Court for the Eastern District of Virginia.  Ms. Walker is a graduate of Duke Law School and the University of Virginia. 


Nicole Gaither is a Partner with Parlatore Law Group and practices in the fields of copyright and trademark prosecution, in addition to tax law. She has demonstrated experience in prosecuting domestic trademark and copyright applications, providing brand protection through trademark monitoring, reviews of refusals, responses to refusals and assessing potential marks for use and availability.

Nicole has helped numerous businesses protect their trademarks from unauthorized use. She counsels clients on all aspects of domestic and global trademark matters, including on the selection and clearance of marks, clearance and prosecution, brand management, and enforcement in the U.S. and abroad. Nicole also advises clients on the protection, registration, and enforcement of copyright assets.

Nicole is an active member of the American Bar Association’s Section of Intellectual Property law, the Louisiana State Bar Association. She is also a presenter on intellectual property protections and issues for Fund 17, a nonprofit organization that works to empower and educate New Orleans entrepreneurs, and a volunteer with The Ella Project, a pro bono organization that provides legal services for low to moderate income artists in musicians in New Orleans. She is a native New Orleanian and a dedicated member of the New Orleans community.

She is admitted to practice in Louisiana and currently resides in Maryland.

Education:

Loyola University, New Orleans College of Law, Juris Doctor, Certificate in Taxation (May 2012)

The University of Texas at Austin, Master of Professional Accounting (August 1998)

Tulane University, Bachelor of Science in Management—Accounting (May 1997)

 

 


Sean Garrison is a partner with Bacal & Garrison Law Group in Scottsdale, Arizona with 26 years of experience representing clients in trademark and other intellectual property matters.  Mr. Garrison represents clients in a variety of industries, including financial services, education and restaurants and pubs. He manages national and international portfolios for numerous clients and regularly represents them in enforcing and defending their rights.

He practices regularly before the Trademark Trial and Appeal Board (TTAB), where he prevailed for his clients in two of the earliest Accelerated Case Resolution (ACR) decisions issued by the TTAB.

Mr. Garrison currently serves as the Vice Chair of the Trademark Law committee for the American Intellectual Property Association and is former Chair of AIPLA’s Trademark Litigation committee.

Mr. Garrison is co-author of the U.S. Trademark Registration chapter of the International Trademark Association’s Trademark Administration and of the Arizona chapter of INTA’s U.S. State Trademark and Unfair Competition Law, as well as "The preclusive effect of Trademark Trial and Appeal Board decisions", published by World Trademark Review in 2016.

He has been listed in The Best Lawyers In America® since 2007, including six different categories of IP law in the 2019 edition.  He has been named among the World Trademark Review’s WTR 1000 practitioners since 2016.

Mr. Garrison received his B.A. with Distinction from the University of North Carolina at Chapel Hill, graduating Phi Beta Kappa. He received his J.D. from the Columbia University School of Law.


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.

 

 


As Intellectual Property Counsel, Megan Kearney is responsible for managing worldwide trademark, copyright and patent matters, including intellectual property clearance, prosecution, counseling, enforcement, and litigation matters for QVC and HSN. 

Before joining the companies in 2017, Megan was an associate in the Intellectual Property Group at the law firm of Troutman Pepper.  She specialized in developing comprehensive intellectual property portfolios for her clients.  She also litigated trademark and copyright infringement, false advertising and unfair competition actions in various federal courts. 

Megan has been a guest lecturer at the University of Pennsylvania’s Carey Law School and Drexel University’s Thomas R. Kline School of Law on the topics of intellectual property transactions and copyright law.     

Megan holds a bachelor’s degree in English Studies from the University of Massachusetts – Amherst and her law degree from Temple University’s Beasley School of Law.

 


As Vice President, General Counsel, Commerce, Eve DelSoldo leads the legal affairs function supporting Qurate Retail Group’s primary market – US commerce operations under TV shopping/live streaming commerce brands QVC and HSN collectively known as QXH. 

She and the QXH legal team focus on commerce related legal services for Commercial Contracts, Technology, Marketing, Regulatory Compliance, IP, Planning, Emerging Platforms, Digital, eCommerce, Retail Pricing, and IP.  Eve serves as the executive legal advisor to QXH leadership regarding strategic planning as commerce activities pivot towards live content streaming, social media and other emerging tech platforms.  During her tenure, Eve designed the legal and compliance framework for claims (typically unscripted and un-rehearsed) made by on-air guests and hosts – an unique challenge given QVC and HSN 24/7/365 live TV/streaming content environment. She also sits on Qurate Retail Group’s Global Diversity, Equity & Inclusion Council.

Before joining Qurate Retail in 2010, Eve was a partner in the business service practice at the law firm of Schnader Harrison Segal & Lewis.  She specialized on US and international M&A, complex high-valued technology transactions often involving proprietary technology. Eve was legal advisor for start-up clients in various stages of their maturity, including business planning, capital raising and IP protection.   

Eve holds a bachelor’s degree in Political Science from Barnard College and her law degree from Temple University’s James E. Beasley School of Law. She and her family reside in Greater Philadelphia, Pennsylvania.

 

 


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

 



Named as the World’s Leading Intellectual Property Lawyer by Chambers & Partners, founding partner Spring Chang is a razor-sharp IP attorney who has advised and represented hundreds of major companies in the world, including companies in the field of electronics, consumer, pharmaceutical, apparel and jewelry. Spring is well known for representing Best Buy in a precedent-setting trademark case before the China’s Supreme Court, which re-evaluate the type of evidence considered in the decisions/judgments of Chinese intellectual property cases.

 

Practice Areas:

• Specialized in all aspects of intellectual property protection, including prosecution and enforcement of trademarks and patents, copyrights, domain names, etc., for more than 26 years.

 

Professional Experiences:

• Founding Partner, Chang Tsi & Partners, Beijing, China

• Partner, Globe-Law Law Firm, Beijing, China

• Attorney at Law, Deheng Law Firm

• Visiting Attorney, Fross Zelnick Lehrman & Zissu

• Attorney at Law, Patent and Trademark Firm of China Council for the Promotion of International Trade

• Attorney at Law and Trademark Agent, State Planning Committee, General Office

 

Education:

• L.L.M., China University of Political Science and Law

• L.L.B. Liaoning University

 

Representative Cases:

• Represented Tiffany & Co. since 2002 and filed large numbers of applications, oppositions, and declarations of invalidity. Recently, Chang helped Tiffany & Co. gain well-known status for its trademark, enabling Tiffany & Co. to strengthen and protect its brand from various infringers.

• Successfully persuaded the court to accept the Under Armour case, in which CNY 100,000,000 (roughly USD 15,000,000) was claimed in damages.

 

Selected Awards:

• “2020 Global Leader” by World Trademark Review.

• “Elite Practitioner” by asialaw Profiles in 2020.

• “Band 1 Lawyers on Intellectual Property: Non-litigation(PRC-firms) – China” by Chambers and Partners;

• “2018 ALB China Client of Choice” by Asian Legal Business in 2018;


Professor Jeanne Fromer specializes in intellectual property, including copyright, patent, trademark, trade secret, and design protection laws. Some of her recent and forthcoming scholarship studies trademark registrations empirically to examine whether we are running out of effective trademarks; trade secret and copyright laws in light of growing uses of artificial intelligence; the ways that copyright and trademark holders take intellectual property into their own hands; the claiming systems for design protection pursuant to copyright, design patent, and trademark laws; and the protectability of fashion designs in intellectual property. She is faculty co-director of the Engelberg Center on Innovation Law & Policy.

Professor Fromer is currently an Adviser for the American Law Institute's Restatement of the Law, Copyright. She is the author of a free copyright textbook, Copyright Law: Cases and Materials, with Chris Sprigman. In 2011, Professor Fromer was awarded the American Law Institute's inaugural Young Scholars Medal for her scholarship in intellectual property.

Before coming to NYU, Professor Fromer served as a law clerk to Justice David H. Souter of the U.S. Supreme Court and to Judge Robert D. Sack of the U.S. Court of Appeals for the Second Circuit. She also worked at Hale and Dorr LLP (now WilmerHale) in the area of intellectual property. In addition, she was an Alexander Fellow with the New York University School of Law and a Resident Fellow with Yale Law School’s Information Society Project. Professor Fromer was a visiting professor at Harvard Law School, and she also previously taught at Fordham Law School.

Professor Fromer earned her B.A., summa cum laude, in Computer Science from Barnard College, Columbia University. She received her S.M. in Electrical Engineering and Computer Science from the Massachusetts Institute of Technology for research work in artificial intelligence and computational linguistics and worked at AT&T (Bell) Laboratories in those same areas. As a graduate student, Professor Fromer was both a National Science Foundation Graduate Research Fellow and an AT&T Laboratories Graduate Research Fellow. Professor Fromer received her J.D., magna cum laude, from Harvard Law School, serving as Articles and Commentaries Editor of the Harvard Law Review and as Editor of the Harvard Journal of Law and Technology.


Richard is recognised as one of the UK’s leading Intellectual Property specialists with over 30 years’ experience in all aspects of contentious and non-contentious IP law, with particular emphasis on dispute resolution, relating to patents, trade marks, copyright, passing off and confidential information.

Richard has led the way in pioneering a better way of delivering IP advice based on his conviction that earning trust, building long term client relationships (appreciating that ‘you are only as good as your last game’) and delivering the best advice, can always be delivered at a fair price. Whilst he is a senior partner of the firm, and is widely known in the industry, he remains heavily engaged with clients, supervising much of the firm’s most complex work.

His clients include Jet2.com, JD Sports, Regus, Roche, and Tesco. His range of work to date has been extensive and often high profile. Examples include:

  • Successfully acting for Asda in the first supermarket look-alike case to go to trial, the United Biscuits v Asda proceedings, which became known as the Penguin v Puffin case
  • Acting successfully for IBM in the first Community Trade Mark infringement and revocation case in the UK, in IBM v Web-Sphere.
  • Obtaining for a multinational company, and simultaneously, 37 interim injunctions for patent infringement (a UK record) against 19 companies at the BCPC International Crop Science Exhibition in Glasgow, the world’s largest agrochemicals fair.

Richard is a solicitor and is ranked by Chambers/Legal 500 as extremely bright, “positive and terrific”, “extremely knowledgeable and calm under pressure, intelligent, knowledgeable and a lateral thinker, incredibly well organised and efficient, innovative, proactive, practical, a sagacious star partner who doesn’t sit on the fence, a leading individual in the intellectual property field”, and “nationally recognised as one of the field’s most eminent practitioners”, seen as having “a down to earth manner” and there being considered to be, for IP disputes, “no finer practitioner in Yorkshire”.

As a result of Richard’s acclaimed expertise, he has been interviewed for television and Radio by (amongst others) BBC News 24, Radio Leeds and Panorama, is regularly invited to speak at a number of national and international specialist conferences and is the author of a number of published articles.


Angela J. Grayson, CIPP/US, CLP is an accomplished nationally recognized lawyer, speaker, and author.  She is Principal Member and Founder of Precipice IP PLLC.  PRECIPICE is an award-winning consultancy and technology law boutique with expertise in patent, trademark, copyright, and data law. PRECIPICE helps entrepreneurs and technology-focused businesses protect their products, brands, designs and data. 

Prior to founding PRECIPICE, Ms. Grayson was Associate General Counsel, Intellectual Property and Patent Operations Lead at Walmart Stores, Inc.  Before joining Walmart, Ms. Grayson served as in-house patent counsel for several Fortune® 100 companies, and she has prior experience as a Patent Examiner for the United States Patent and Trademark Office.

She is committed to advancing Diversity and Inclusion (D&I) in the legal profession, and is equally committed to STEM (Science, Technology, Engineering, and Math) initiatives that focus on better preparing our youth to compete. She is a past Board Chair of the Minority In-House Counsel Association (MIHCA), and previously served on the Board of Trustees for the American Intellectual Property Law Education Foundation (AIPLEF).

Ms. Grayson is a Director on the Board of the Patent Pro Bono Advisory Council, and is past Chair of the American Intellectual Property Law Association (AIPLA) Special Committee on Pro Bono. Ms. Grayson is the current Chair of AIPLA Diversity in IP Law Committee, and she serves Chair of the Intellectual Property and Sports Law Section of the Mississippi Bar.