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Fundamentals of Trademark Law in the Global Marketplace 2021


Speaker(s): Andrew S. MacKay, Beth M. Goldman, Diana M. Rutowski, Kiran Belur, Todd Adler, Vijay K. Toke, Virginia Wolk Marino
Recorded on: Jul. 7, 2021
PLI Program #: 304023

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.


Diana M. Rutowski has always loved complex puzzles – studying each piece until the solution emerges. She applies that same determined curiosity to her IP practice. After carefully listening to each client, Diana examines every legal, business, and human element, arranging disparate pieces into elegant solutions. With Diana as their advocate, her clients can confidently develop and expand their IP strategy and portfolios.

As a seasoned IP litigator and counselor, Diana’s practice has run the gamut from high stakes trials, to take-down and anti-counterfeiting campaigns, to employee departure and trade secret investigations. She represents clients in District and state courts and before the Trademark Trial and Appeal Board.  Diana recently tried and won a complex case in which the other side sought to extend the monopoly of an expired utility patent by claiming trade dress rights in a technical product feature. Drawing upon experience handling both complex patent and trademark matters, her team successfully argued that the intersection of patent and trademark policy prevented the other side from continuing its monopoly, clearing the way for her client to enter the market. With Diana at their side, companies can rest assured that their essential assets are protected, from their company name, logo, and website, to their core technologies.

While at Orrick, Diana was seconded to the City and County of San Francisco, where she had the privilege to serve as an Assistant District Attorney, and first-chair several trials. She was also seconded to Salesforce, where she learned first-hand that the law comprises just one component of a company’s overall business strategy.

Diana is also passionate about her pro bono work. For example, she represented two detainees in Guantanamo in connection with their petitions for a writ of habeas corpus, and she is currently working with the Lawyers’ Committee for Civil Rights of the San Francisco Bay Area. Before joining the firm, Diana worked for the Legal Aid of Cambodia where she assisted with the prosecution of former Khmer Rouge officials and represented individuals who sought to reclaim land rights.

Diana is a member of the International Trademark Association, of ChIPs: Advancing Women in IP and of the Harvard Club of San Francisco.

 


Todd Adler is Managing Counsel in the Patent, Trademark & Copyright group at Oracle and has been with the company for over fifteen years. Todd handled trademark issues for the Oracle Park naming rights deal and the naming rights agreement for Oracle Arena, as well as product placement agreements for several movies and other major marketing sponsorships and initiatives. He manages clearance, prosecution and enforcement of Oracle's global trademark portfolio, and acted as Oracle's designated expert on copyright issues in litigation that resulted in a $1.3 billion jury verdict for Oracle (later reduced). He works on clearance of advertising campaigns and has handled challenges at the NAD and FTC, as well as domain name acquisition and policing projects.


Prior to joining Oracle, Todd was an associate at the law firm of Heller Ehrman. He is a periodic contributor to KQED's Perspectives series. 


Virginia Marino focuses her intellectual property law practice on all aspects of domestic and global brand protection, copyright and unfair competition law. 

Virginia’s trademark prosecution and counseling practice includes the acquisition, maintenance, licensing, enforcement and transfer of intellectual property with an emphasis on the selection and clearance of trademarks. She partners with her large and small clients to develop and maintain their global trademark portfolios.

As a litigator, Virginia represents clients in civil litigation in federal district court and Trademark Trial and Appeal Board oppositions and cancellation actions, and has extensive experience with domain name disputes under the Uniform Dispute Resolution Policy.  She regularly assists clients with online intellectual property protection, including web-based trademark protection and vigilance. Virginia also has extensive in-house experience, as she was seconded to Accenture as in-house trademark counsel for over a year.


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