The Ethical Trademark Lawyer

This 60-minute presentation, presented by Steven Feingold of Kilpatrick Townsend, will begin with a brief review of the general rules governing trademark lawyers, including the different standards applied by the USPTO and many other state jurisdictions. The rest of this session will focus on ethical encounters of particular concern to the trademark bar.

Learning Objectives:

1. Examine the ethical obligations with respect to clearing new trademarks if the search reveals the mark is owned by another client
2. Explore ethical boundaries when investigating a reference that is registered with the USPTO
3. Learn when one can ethically hire a private investigator to contact the owner of that mark, and what information the personal investigator has to disclose. Do the ethical rules distinguish between a prior registrant and a possible infringer?
4. Discuss how to work with an expert witness and prevent the disclosure of the expert’s notes
5. Identify the ethical duties of a trademark lawyer with respect to specimens and dates of first use
6. Analyze how state dilution law can vary significantly from state to state, and explore its potential impact