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Advanced Trademark Law Annual Review 2015


Speaker(s): Amie Peele Carter, J. Richard Supple, Jr., Janet M. Fuhrer, Joseph N. Welch, II, Kieran G. Doyle, Louis T. Perry, Peter J. Klarfeld, Tsan Abrahamson
Recorded on: Mar. 24, 2015
PLI Program #: 59432

Amie Peele Carter is an intellectual property and sports lawyer. Her passion is to help clients create, protect and leverage value. She helps her clients succeed by:

  • Identifying and protecting their intangible assets, including their brands, trademarks, software, web content, trade secrets, creative works and new technologies
  • Leveraging the value of these assets through brand activation, licensing deals, sponsorships, promotions, and the appropriate use of social media and other marketing channels
  • Monitoring the marketplace for potential infringement of client-owned IP
  • Enforcing client's rights in these assets through pre-litigation dispute resolution, TTAB proceedings, and litigation in state and federal courts.

Amie's client base includes Fortune 100 and 500 companies, mid-sized and small companies, entrepreneurs, sports organizations and athletes, marketing agencies, TV personalities, artists, authors, musicians, and publishers.


Janet Fuhrer is a partner of Ridout & Maybee LLP in the firm's Ottawa office. Janet’s practice focuses on trademark and copyright matters, particularly in the areas of pre-clearance searching, drafting and processing of trademark applications, representing clients in trademark opposition and cancellation proceedings, and related litigation. She also provides advice on due diligence in transactions involving intellectual property and on strategies for the licensing, maintenance and protection of intellectual property.

Janet has been granted the Certified Specialist designation in Intellectual Property (Trademark/Copyright) Law by the Law Society of Upper Canada (LSUC) and previously chaired the Intellectual Property Specialist Certification Committee.

She is involved in numerous professional activities, and is a frequent speaker and moderator at various IP conferences and meetings.

Education & Qualifications

LL.B., 1985, Queen's University
LL.M. (e-Business), 2003, York University, Osgoode Hall Law School
Barrister & Solicitor, Province of Ontario, 1987
Registered Trademark Agent, Canada, 1987
Certified Specialist (Intellectual Property Law: Trademarks/Copyright), Law Society of Upper Canada, 2004

Professional Activities

Canadian Bar Association (CBA), First Vice-President
Ontario Bar Association (OBA), Strategic Planning Committee, Past Chair
Intellectual Property Institute of Canada (IPIC), Past President
American Intellectual Property Law Association (AIPLA), Trademark Internet Committee, Chair
International Trademark Association (INTA), member of Related Rights Committee - Indigenous Rights Subcommittee
Trademark Agents Examination Board, Past Chair


Lou Perry is a member of the firm's trademark, copyright, advertising and media (T- CAM) practice. His area of expertise is litigation, and he routinely serves as trial counsel for clients in federal and state courts, as well as before the Trademark Trial and Appeal Board.

Lou has represented clients from a variety of industries in disputes arising under:

  • The Lanham Act
  • The Copyright Act
  • The Digital Millennium Copyright Act
  • The Telephone Consumer Protection Act

Representative IP Litigation Experience

  • Hana Financial, Inc. v. Hana Bank et al., ----U.S.--- (2014) (cert granted) (amicus curiae brief filed on behalf of the American Intellectual Property Organization) (trademark tacking)
  • Verscene, Inc. v. HNI Corporation (D. Minn. 2012) (trademark infringement);
  • Reckitt Benckiser v. L. Perrigo (TTAB 2010) (opposition proceeding)
  • The Outdoorsman, Inc. v. Outdoorsman Direct, LLC (Marion County Superior Court 2012) (trademark infringement)

IP Counseling and Licensing Expertise
Lou also routinely handles the following types of matters for his clients:

  • Website policies and agreements
  • Trademark clearance and opinions
  • Pre-litigation trademark enforcement and defense
  • Software agreements
  • Licensing agreements
  • Publishing agreements

Professional Organizations

  • Indiana State Bar Association
  • Indianapolis Bar Association
  • American Intellectual Property Law Association

Presentations

  • When It's Important, It's REALLY Important—Trademark and Bankruptcy, Due Diligence, Dual Filings and Assignments - American Intellectual Property Law Association Annual Meeting, 2014
  • Survey Evidence in Trademark Disputes - International Trademark Association Roundtable, Indianapolis, 2009

Services & Industries

  • Intellectual Property
    • Trademark, Copyright, Advertising & Media (T-CAM)
  • Litigation & Advocacy
    • Finance Litigation
  • Regulatory
    • Privacy & Data Security
  • Sports & Entertainment

Education

Notre Dame Law School J.D., cum laude (2005)
University of Notre Dame B.A., magna cum laude (2002)

Bar Admissions

Indiana

Court Admissions

U.S. District Court for the Northern District of Indiana
U.S. District Court for the Southern District of Indiana


Mr. Klarfeld is a principal in the Washington, D.C. office of Gray Plant Mooty.  He has specialized in franchise dispute resolution and counseling for over 35 years and has appeared as lead counsel for some of America’s largest franchisors in courts, arbitrations and mediations across the United States, and as an arbitrator in international arbitration.  From 2007 - 2010, Mr. Klarfeld served on the Governing Committee of the American Bar Association’s Forum on Franchising and as the Forum’s Membership Officer, and in 2008 he served as Co-Chair of the Forum’s Annual Meeting.  He was the Editor-In-Chief and a co-author of the first edition of Covenants Against Competition In Franchise Agreements (ABA 1992) and served in the same capacity for the second edition of that work, published in 2003.  He is the author of numerous articles and a frequent speaker on domestic and international franchise litigation and arbitration issues and was the co-author of the manual Franchise Litigation (Federal Publications, 1996).

Prior to entering private practice, Mr. Klarfeld served for two years as an Attorney/Advisor in the Office of Legal Counsel of the United States Department of Justice.  He is a member of the Virginia and District of Columbia bars and of the bars of numerous federal trial and appellate courts.

Mr. Klarfeld received a Master’s degree from the University of Chicago and his law degree from the University of Virginia Law School, where he was a member of the editorial board of the Virginia Law Review and the Order of the Coif.  After graduation from law school, he served as law clerk to the Honorable Robert R. Merhige, Jr., United States District Judge for the Eastern District of Virginia.


J. Richard (Rick) Supple Jr. represents law firms and lawyers in professional ethics-related litigation, including disciplinary and legal malpractice cases, partnership and fee disputes, internal investigations, and disqualification and sanctions motions. He advises clients on regulatory compliance issues, litigation finance, lateral movement, and formation and dissolution matters.

As a former prosecutor and defense counsel, Rick regularly tries, arbitrates and mediates cases in federal and state courts, and has argued dozens of appeals. He is also frequently retained as an expert witness.

Rick is former general counsel of an AmLaw 100 law firm and was leader of that firm’s well-regarded lawyers’ professional ethics practice group. He is co-author of the leading treatise on New York attorney discipline procedure and regularly speaks on professional ethics matters nationwide.

Admissions

  • New York
  • US District Courts for the Eastern, Northern, and Southern Districts of New York
  • US Court of Appeals for the Second Circuit
  • US Supreme Court

Education

  • J.D., University of Wisconsin Law School, 1989
  • B.A., magna cum laude, Duke University, 1985

Memberships

  • New York City Bar Association
    • Professional Discipline Committee, Chair, 2010-2013
  • Practising Law Institute (PLI)
    • Faculty Member
  • Benjamin N. Cardozo School of Law
    • Adjunct Professor, 2004-2016

Experience

  • Successfully tried to verdict a law firm’s breach of oral contract claims against its former litigation counsel.
  • Successfully tried to verdict a partnership dispute arising from the dissolution of a preeminent plaintiffs’ personal injury law firm.
  • Obtained summary judgment for major law firm clients in several state and federal legal malpractice cases.
  • Successfully negotiated litigation funding agreement for multimillion dollar portfolio of nationwide tort and products liability cases.
  • Represented prominent law firm for internal investigation of alleged illegal lobbying activities relating to New York state corruption scandal.
  • Successfully argued appeal of disciplinary sanction imposed against attorney on basis of Dead Man’s statute in the New York Court of Appeals.
  • Obtained stay and then dismissal of Family Court judge’s order to show cause against lawyer for criminal contempt.

Presentations

  • "Lawyers' Professional Liability in Transformative Times," ABA National Legal Malpractice Conference, San Diego, California, September 2019
  • "Distributed Ledger Technology: Blockchain and Smart Contracts, the Implications for Law Firms," General Counsel, Compliance and Risk Forum, London, United Kingdom, May 2019
  • "Litigation Funding in Class Actions versus Arbitrations," The Litigation Funding Forum, New York, New York, April 2019
  • "Update – Litigation Finance," General Counsel Roundtables, Miami, Florida, January 2019 and Oklahoma City, Oklahoma, April 2019
  • "Cryptocurrency: Show Me the Money," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2019
  • "It's a Jungle Out There: Managing Risks in Mid-Sized Firms," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2018
  • "Winning the Arms Race in Big Civil Cases — the Upside and Downside of Litigation Finance," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2017
  • "The 'New' New York Rules on Attorney Discipline Procedure," Practicing Law Institute (PLI), New York, New York, January 2017
  • "Staying Out of Trouble 2016: The In-House Attorney-Client Privilege and Ethics and Technology Quiz Show," Practicing Law Institute (PLI), New York, New York, December 2016
  • "Playing the Away Game, How Can Non-Resident New York Lawyers Comply," New York State Bar Association, Miami, Florida, September 2016
  • "Phantom Clients and How to Exorcise Them," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, March 2016
  • "Ethics for the Trademark Lawyer," Practising Law Institute (PLI), New York, New York, March 2015
  • "Defenses to Disqualification Motions: What Works and What Doesn't," Legal Malpractice & Risk Management Conference (LMRM), Chicago, Illinois, February 2015

Publications

  • Co-author, "New York Attorney Discipline: Practice and Procedure," ALM Press, updated every other year


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

 



Tsan Abrahamson’s practice focuses on strategic counseling in the areas of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution, licensing, and other business transactions.  She also manages the adverse proceedings practice at the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Tsan has an extensive practice in the area of marketing promotions, including social media promotions, gift card and gift certificate marketing, print and online sweepstakes, contests, give-aways, warranties, rebates, and coupon promotions.  Tsan completed her undergraduate work at Dartmouth College, and received both her JD and MBA from the UCLA School of Law and The Anderson Graduate School of Management.


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.