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Advanced Trademark Law Annual Review 2013


Speaker(s): David A. Gauntlett, Dean Eyler, Jonathan Hudis, Joseph M. Drayton, Joseph N. Welch, II, Kieran G. Doyle, Kimberly N. Reddick, Kristina Rosette, Sheldon H. Klein, Tricia McDermott Thompkins, Vanessa J. Soman
Recorded on: Apr. 18, 2013
PLI Program #: 42116

Kimberly Reddick has over 15 years experience in intellectual property law. She is the managing attorney of Red IP Law in Washington, DC, where she specializes in domestic and international trademark counseling, licensing, enforcement, clearance, prosecution and litigation.

Prior to founding Red IP Law, Ms. Reddick was a Partner at K&L Gates LLP, where she counseled clients on cutting-edge issues in all aspects of trademark, unfair competition, and copyright laws. She was also a Trademark Attorney Advisor with the United States Patent and Trademark Office (USPTO).

Ms. Reddick serves as outside intellectual property counsel to large and small corporations, ranging from start-ups to Fortune 500 companies.  In this capacity, she counsels clients regarding branding strategies, liability, enforcement, anti-counterfeiting tactics, and maintenance and licensing of trademarks and copyrights. In addition, she advises clients on a variety of advertising, sweepstakes, Internet, domain name and social networking issues, as well as handles domain name disputes and IP owner disputes on Facebook®, Twitter® and other social networking sites.

Ms. Reddick has written and participated in speaking engagements on a number of trademark and social media topics.  Most recently, she was named as one of 40 of the Nation's Best Advocates under 40 by IMPACT and the National Bar Association.

Ms. Reddick received her J.D. from The George Washington University Law School, where she was a Notes Editor and member of the American Intellectual Property (AIPLA) Law Association Quarterly Journal and her B.A. from Dartmouth College in Hanover New Hampshire. She is a member of the New York Bar and District of Columbia Bar.


Tricia McDermott Thompkins is the Global Intellectual Property and Licensing Counsel for Perry Ellis International, Inc. in Miami, Florida, where she counsels the business on the acquisition, maintenance, enforcement/litigation of a wide range of intellectual property rights, including trademark, copyright, anti-counterfeiting, and right of publicity. Ms. Thompkins is also responsible for the legal work associated with the licensing, distribution and advertising of the retailer's diverse brands, which include owned brands such as Perry Ellis®, Original Penguin by Munsingwear®, Laundry by Shelli Segal®, Jantzen®, Ben Hogan®, Grand Slam® among others and licensed brands such as Nike®, Callaway®, PGA Tour® and Jag®.  

Prior to joining Perry Ellis, Ms. Thompkins served as Sr. Director, Intellectual Property and Division Counsel for the $1.3B appliances division of Spectrum Brands, Inc., owner of the George Foreman®, Rayovac® and Remington® brands, among others. Ms. Thompkins was also Director and Trademark Counsel for Office Depot, Inc., previously worked in a law firm in Washington, DC and at the US Patent & Trademark Office before migrating to South Florida. She earned a B.A. in English and J.D. from Rutgers University, Camden College of Arts & Sciences and Camden School of Law, respectively.

Ms. Thompkins is the current Vice-Chair of the Trademark Transactions Committee of the American Bar Association, active as a member of the International Trademark Association (INTA), and is a frequent speaker for several bar association conferences - most recently, for the American Bar Association, National Bar Association - Commercial Law Section and the Miami-Dade Bar Association, Intellectual Property Committee. 

Ms. Thompkins, along with her daughters Maya and Tajo, also serve on the Board of Directors and Teen Board of Directors, respectively, for Family Promise of South Palm Beach County.


David Gauntlett represents policyholders in insurance coverage disputes regarding intellectual property, antitrust and business tort claims as well as in the underlying actions.

Law School/Graduate School:

 Mr. Gauntlett received his B.A. Magna Cum Laude from the University of California, Irvine and his J.D. from the University of California, Berkeley where he served as an editor of the California Law Review.

Work History: 

Mr. Gauntlett is the author of "Insurance Coverage for Intellectual Property Assets" (Aspen Law & Business © 1999), IP Attorney's Handbook for Insurance Coverage in Intellectual Property Disputes (American Bar Association © 2010) and is a contributed a chapter  "Insurance Coverage for Antitrust Lawsuits"  for the New Appleman on Insurance Critical Issues in Insurance Coverage (LexisNexis © 2011) as well as numerous other articles on this and related topics and holds leadership positions in various ABA committees.

Professional Memberships:

California State Bar; Orange County Bar Association; American Intellectual Property Law Association; American Bar Association, Vice-Chair of the American Bar Association's 1995 96 & 2001-02 Tort and Insurance Practice Section Committee on Intellectual Property Law.  He has served as the Newsletter Editor of this committee from 1995 through the present.  He has been the Chair of the American Bar Association's Intellectual Property Section, Special Committee on Insurance since 1998; Litigation Section Vice-Chair and Chair Emeritus, Intellectual Property Committee (1995-1996) as well as Co-Chair of the Advertising/Intellectual Property subcommittee (2013-2014); 2001 Vice Chair of the Intellectual Property Owners Association's newly formed Insurance Coverage Committee.


JONATHAN HUDIS is a partner with Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., located in Alexandria, Virginia, in the firm's Trademark and Copyright practice Group. Jonathan counsels clients in trademark, copyright, trade secrets and unfair competition matters, as well as related matters pertaining to the Internet. A skilled trademark and copyright attorney, he prosecutes and litigates a full range of these matters before the federal courts, the Register of Copyrights, and the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO").  He has several years of practical intellectual property litigation experience in contested court matters and administrative proceedings.

Jonathan helps clients of all sizes to establish and grow trademark and copyright portfolios, design and implement procedures to protect their intellectual capital, resolve foreign and domestic disputes, preserve trade secrets, and formulate company-wide IP strategies and policies. He  is well versed in trademark prosecution and registered copyright protection matters.

Jonathan presently serves as an Adjunct Professor of trademark and unfair competition law at the George Mason University School of Law and lectures and writes regularly on trademark and copyright law issues.  He is the Editor-in-Chief of the first and second editions of A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, published by ABA Publishing.

Jonathan is particularly knowledgeable about Internet-related challenges and is a member of several arbitration panels in the areas of Internet domain names and trademarks. These roles include serving as a Domain Name Panelist for the World Intellectual Property Organization's Arbitration and Mediation Center, and a Qualified Domain Name Dispute Resolution Panelist for the National Arbitration Forum.

Jonathan has served in numerous leadership roles within the American Intellectual Property Law Association ("AIPLA"), having served on its Board of Directors as well as on the Board of Editors of its prestigious AIPLA Quarterly Journal. Jonathan also presently serves in numerous leadership roles within the Intellectual Property Law Section of the American Bar Association ("ABA IPL"), where he present serves on its Council and as the Vice Chair of its Continuing Legal Education Board.

Jonathan is a member of the New York, New Jersey, Pennsylvania (nonresident, active), District of Columbia and Virginia bars. He also is admitted to practice before several United States District and Circuit Courts throughout the United States, and the U. S. Supreme Court.


Vanessa J. Soman is Vice-President and Associate General Counsel at Martha Stewart Living Omnimedia, Inc.  In her current role her and her team are responsible for SEC/Corporate Governance, Intellectual Property, Licensing, Privacy, and Employment matters. She is a seasoned attorney whose most recent roles have provided her with the opportunity to advise senior executives at two Fortune 500 companies on a variety of issues including risk-management and policy development that have mitigated counterfeits, increased compliance with regulations, and monetized intangible assets. Vanessa began her career as a trademark examining attorney at the U.S.P.T.O.

 


Dean Eyler is a principal at Gray Plant Mooty in Minneapolis.  Dean practices intellectual property litigation, and he chairs the firm’s Intellectual Property Litigation team.  Dean graduated from the University of Iowa College of Law, with high distinction, and clerked for the Honorable Donald P. Lay, former chief judge of the Eighth Circuit Court of Appeals.  Dean has two decades of experience litigating IP cases, with particular emphasis in trademark infringement and unfair competition cases.  Dean has been repeatedly recognized by World Trademark Review, where he has been described as “a go-to on complex or unusual disputes.”  He is the chair of AIPLA’s Trademark Litigation Committee.


Joseph M. Drayton is a partner in the Cooley Litigation department and member of the Intellectual Property Litigation practice group. He joined the Firm in 2012 and is resident in the New York office.

Mr. Drayton's practice background includes a broad range of intellectual property and complex commercial matters. He is experienced in patent litigation, trademark and copyright usage, trade dress, design patents and false advertising. Mr. Drayton also counsels clients in all aspects of intellectual property acquisition, transfer, protection and enforcement. He has represented leading companies in the media, telecommunications, banking, private equity, pharmaceutical, electronics and retail industries.

Mr. Drayton practices before both state and federal courts, as well as the International Trade Commission. He has been a lead member of numerous patent trial teams, including four over the past few years. Mr. Drayton has handled temporary restraining orders, preliminary injunctions, all facets of motion practice and complex discovery. 

Education

  • University of Pennsylvania Law School
    JD, 1997
  • University of Maryland, College Park
    BS, 1993

Court Admissions

  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York

Bar Admissions

  • District of Columbia
  • Maryland
  • New York

Memberships

  • American Bar Association
  • Federal Bar Council
  • Maryland State Bar Association
  • Metropolitan Black Bar Association
  • National Bar Association
  • New York City Bar Association
  • New York State Bar Association


Primary Areas of Practice:  New gTLDs and domain names, Internet-related trademark matters, trademark advice, prosecution, litigation, and transactions

Law School/Graduate School:  University of Georgia School of Law, J.D., cum laude, 1995

Work History:  Covington 1995-present

Professional Memberships:  President, ICANN Intellectual Property Constituency


Sheldon Klein represents clients in the areas of trademark, copyright, unfair competition, advertising and social media, handling matters involving 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. Sheldon 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.

In October 2017, Sheldon became President-Elect of the American Intellectual Property Law Association (AIPLA). Since his election to the executive committee of AIPLA in 2015, Sheldon has played a key role in the governance of one of the world’s largest and most influential intellectual property bar associations.

Professional Activities

American Intellectual Property Law Association, President-Elect
International Trademark Association, Trademark Office Practices Committee, Member
Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), Member
U.S. Patent and Trademark Office, Trademark Public Advisory Committee, Past Member
Bar Assn. of D.C., Patent, Trademark & Copyright Section, Past Chair

Honors and Distinctions

"Leading Trademark Lawyer," The International Who’s Who of Business Lawyers, 2007- 2017
“Leading Trademark Lawyer,” World Trademark Review, 2011-2013, 2015-2017
“Washington, DC Super Lawyer,” Super Lawyers, 2014-2017
“Top Lawyers” in Intellectual Property, Washingtonian Magazine, 2011, 2013


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

 



Joe has more than thirty years' experience in intellectual property litigation, and taught at Northwestern Law School for more than 20 years.  His publications include a practitioner's Deskbook, now in its seventh edition, and a law school coursebook in its tenth edition, as well as a chapter on the "Use of Experts" in an ABA book on TTAB practice.  He has repeatedly been recognized as a "Leading Lawyer" and "Super Lawyer" in intellectual property litigation.  World Trademark Reporter identified him as "A true expert in the field," and Intellectual Property Today described him as "incredibly well versed in all aspects of trademark law, [with] a string of successes to his name."  He is a Fellow of the American Intellectual Property Law Association and the American Bar Foundation.  Joe regularly speaks on intellectual property topics.