On Demand Audio

The Ethical Trademark Lawyer

(847 reviews)

Produced on October 26, 2018

Taught by
$ 59 Ethics and Intellectual Property Law In Stock
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Course Information

Time 61 minutes
Difficulty Intermediate

Course Description

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

Credit Information

This course is pre-approved for CLE credit in the following states. If your state is not listed, contact support for more information on how to receive credit

Lawline reports attorney attendance in select states. View more about CLE reporting .

Faculty

Steve Feingold

Kilpatrick Townsend

Stephen Feingold focuses his practice on trademark, copyright, advertising and Internet law. Trained as a litigator, Mr. Feingold currently divides his time between litigation and transactional projects advising clients with their most complicated trademark, copyright and Internet issues.

On the litigation front, Mr. Feingold has extensive knowledge in the area of trademark fair use and argued before the Third Circuit Court of Appeals in the case leading to that Circuit's first definitive ruling on the standards for establishing the fair use defense. He has also successfully obtained injunctive relief against John Doe defendants perpetuating consumer fraud and trademark on the Internet.

Mr. Feingold's transactional practice is similarly involved with many emerging issues. He is currently advising several clients with respect to the implementation of social networks and the integration of other new media into their business plans. He has also handled complicated licensing agreements with respect to online gaming, merchandising and the implementation of dealer networks to combat the unauthorized sale of gray market goods. In connection with his Internet practice, Mr. Feingold has also advised many clients with respect to privacy related issues and has counseled clients with respect to data breach and notification issues.

Mr. Feingold also leads several teams of lawyers handling the worldwide portfolios of several global companies and in connection with that work has advised clients on international enforcement and registration issues. A hallmark of his approach to portfolio maintenance is to assist clients to reduce costs by restructuring their portfolios so that there is a symmetry between the amount of legal spend for each brand that relates to how much that brand contributes to the clients' bottom line. One client was able to reduce its trademark budget by more than 50 percent after transferring its portfolio from another firm.

While his practice is not limited to any one industry, he has significant experience with the hospitality, gaming, real estate and educational publishing industries. He also has represented several major entertainment brands and in the past has done extensive work for both financial and pharmaceutical companies. Reflecting his commitment to the public interest, he has provided pro bono services to several not-for-profit companies including the American Conference for Diversity and Moving Traditions.



Reviews

AN
Anna N.

Presenter parsed out complex fact patterns very well.

CO
Colin O.

An excellent refresher course on ethics for trademark practitioners.

JP
James P.

EXCELLENT PRESENTATION. VERY TOPICAL AND RELEVANT.

AA
Ahab A.

Excellent presenter and well-distilled topic.

AP
Annette E. P.

Excellent!

MZ
M Teresia Z.

Informative and exceptionally pragmatic. Excellent presentation.

MC
Marion C.

Exceptionally well done!

KW
Kathleen W.

Very well done

DM
David M.

Wonderful personality. The kind of lawyer we all want to be.

HS
HENRY S.

Certainly knows the subject.

AR
Amy R.

Very interesting and enjoyable.

KP
Katherine P.

very well done and very informative!

FM
francisco javier m.

good

RB
Robert B.

Nicely done!

EB
Earl B.

good summary from actual experience

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