Trademark Enforcement: Analyzing Claims, Crafting Cease and Desist Letters, Monitoring Marks, and More

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, October 17, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will prepare counsel to trademark owners to develop and implement effective trademark enforcement strategies. The panel will review recent developments that may impact trademark enforcement efforts.
Faculty

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.

Ms. Littman-Johnson focuses her practice on intellectual property litigation and enforcement. She has significant experience representing clients in federal courts throughout the United States and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Ms. Littman-Johnson's experience also includes representing clients in Uniform Domain Name Dispute Resolution (UDRP) proceedings, and protecting and enforcing clients’ intellectual property rights online and on social media. In addition to her intellectual property litigation practice, she advises on brand management and protection in the United States and globally, and on copyright development and registration.

Dean Grinvald is an internationally recognized intellectual property law scholar, whose research focuses on the enforcement of intellectual property law, and the potential negative impacts of related laws on small businesses and entrepreneurs. Her work has appeared in some of the nation’s leading law journals. Dean Grinvald’s most recent work focuses on the intersection of the “right to repair” and intellectual property law. Dean Grinvald has previously taught courses in Contracts, Copyright, International Intellectual Property, Negotiation, Trademark Law and Trademark Practice at her prior institutions, Suffolk Law and St. Louis University School of Law.
Description
Trademark enforcement is essential to the success of a brand. After all, trademark rights are dynamic, they can grow or shrink over time, depending on the actions of the brand owner and third parties who may adopt and use confusingly similar trademarks. Brand owners that sit idle while third parties adopt and use confusingly similar marks will see their scope of rights shrink and diminish over time. A reasonable enforcement strategy will help a business avoid being either maligned online or branded as a trademark bully.
Failure to police a trademark and take action to stop unauthorized use of the mark can not only result in producing narrower rights, but a reduction in the distinctiveness of the mark, laches, acquiescence, and in severe cases, abandonment. Inaction against wrongful use of the mark may diminish the goodwill associated with the owner's goods and services.
Counsel to trademark owners should be prepared to take proactive steps to develop and implement creative, effective, and efficient enforcement strategies to police the trademarks and halt illegal use of the mark to minimize and mitigate the adverse impact on the owner's revenue or reputation.
Listen as our authoritative panel of trademark attorneys shares their insights and perspectives on best practices in bringing effective trademark enforcement actions and designing and implementing creative and reasonable trademark enforcement strategies.
Outline
- Recent developments
- Establishing and implementing a reasonable strategy
- Analyzing claims
- Monitoring
- Due diligence
- Cease and desist letters
- Additional action
Benefits
The panel will review these and other notable questions:
- What are the lessons from recent developments in trademark enforcement?
- What are the elements of an effective enforcement strategy?
- What steps should counsel take to implement an effective enforcement strategy?
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