2024 Trademark Boot Camp (TMBC)

The Fourteenth Annual Trademark Boot Camp is a comprehensive online CLE program designed for new practitioners and others interested in learning the basics of trademark practice. Topics include; trademark clearance, pre-filing considerations, trademark prosecution, international trademark filing strategies, disputes, including trademark investigations, cease-and-desist campaigns, Trademark Trial and Appeal Board (TTAB) practice, and an introduction to trademark litigation.

Participants will participate in two hands-on workshops taught by experienced trademark practitioners: (1) ordering and analyzing search reports and preparing clearance opinions and (2) responding effectively to Office Actions. Representatives from the United States Patent and Trademark Office will serve as instructors for the Office Action response workshop, and another workshop will feature a panel of TTAB Judges and/or Interlocutory Attorneys.

This live, multi-day webinar runs from June 24 – June 27, 2024 from 12:00pm-5:00pm ET. 

Agenda:

Monday Afternoon, Jun 24
Pre-Filing Considerations

12:00-1:00 pm: Trademarks 101
Connie Stafanou, Morgan Lewis

1:30-2:30: Developing a Filing Strategy
Monica Riva Talley, Sterne Kessler Goldstein & Fox

Hands-on Training:
3:00-4:30 pm:   Ordering trademark clearance search reports; analyzing search reports; preparing opinions
Richard C. Gilmore, Maschoff Brennan Gilmore Israelsen & Wright 
Hani S. Gazal, Kelly IP, LLP

Tuesday Afternoon, Jun 25
Overview of International Trademark Basics

12:00-1:00 pm: The Application Process
Jennifer Fraser, Dykema Gossett PLLC

1:30 – 2:30 pm: International Filing basics
Michael Hernandez, Pierce Atwood LLP
Robin Baydurcan, Fross Zelnick

Hands-on Training:
3:00-4:30 pm:  Responding effectively to Office Actions
Jonathan Gelchinsky, Pierce Atwood LLP
Jennifer Williston, United States Patent and Trademark Office
Chrisie Brightmore King, United States Patent and Trademark Office
 

Wednesday Afternoon, Jun 26

TTAB Practice & Procedure

12:00 – 1:00 pm: Ex Parte Appeals
Heather Smith-Carra, Banner & Witcoff, Ltd.

Dispute Counseling and Strategies

1:30-2:30 pm: Dispute Investigations
Joel Beres, Stites & Harbison, PLLC

3:00-4:00 pm: Cease and Desist Campaigns
Danae Robinson &
Kim Arriola, Pirkey Barber PLLC

4:30-5:30 pm: Consent & Co-Existence Agreements
Shelby Rokito, Fross Zelnick

Thursday Afternoon, Jun 27

TTAB Practice & Procedure

12:00-1:30: Oppositions & Cancellations / Ethics
Clint Taylor &
Saul Cohen, Kelly IP, LLP

Board Practice Tips & Pitfalls 

2:00-3:30 pm: TTAB Practice & Pitfalls
TTAB Interlocutory Attorney 
TTAB Administrative Trademark Judge
Heather Kliebenstein (Moderator), Merchant & Gould

Dispute Counseling and Strategies

4:00-5:00: US District Court Litigation
Ted Davis, Kilpatrick Townsend

Registration Fees:

Regular Members: $395
Solo/Small Firm Members: $295
Junior Members: $195
IP Paralegal Members: $195
Government/Academic/Judicial Members: $99
Student Members: $55

Non-Members: $795

Speakers

• Arriola, Kimberly

  Pirkey Barber | Associate

  Kimberly Arriola focuses her area of practice on trademark law. Kimberly regularly advises clients on prosecution matters, including trademark selection, clearance, and prosecution of trademark applications in the United States and abroad. Kimberly also has experience assisting clients with domestic and international enforcement matters.
• Baydurcan, Robin

  Fross Zelnick | Counsel

  Robin Baydurcan advises clients on all aspects of international trademark searching and clearance, filing, prosecution, and enforcement. Robin works with established brands and startups to identify and fill gaps in coverage, and to formulate effective enforcement strategies. She is especially well-versed in Chinese and Turkish examination practices and court proceedings. With more than 10 years of experience in international trademark matters, Robin most enjoys explaining the international rules and procedures to domestic clients as they seek straightforward solutions to complex problems.
• Beres, Joel T.

  Stites & Harbison, PLLC | Member

  With more than 25 years of Intellectual Property experience, Joel actively tries cases in both state and federal courts. A founding member and former co-chair of the firm's Intellectual Property and Technology Service Group, he manages all aspects of infringement litigation for both federal and state courts, including trial and appellate practice. He has also prepared and prosecuted trademark and copyright applications, prosecuted and defended trademark opposition and cancellation proceedings, negotiated and prepared trademark and copyright assignment and license agreements, and negotiated and prepared software licensing and consulting agreements.
• Cohen, Saul

  Kelly IP | Associate

  Saul Cohen practices in the areas of trademark, copyright, and false advertising law, among others. Saul regularly counsels clients on intellectual property matters and litigates in federal district and appellate courts as well as the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
• Davis, Theodore

  Kilpatrick Townsend & Stockton, LLP | Partner

  Ted Davis is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he has practiced trademark, copyright, false advertising, and unfair competition law since 1990. He is a member of the American Intellectual Property Law Association’s Board of Directors, American Bar Association’s Board of Governors, a past chair of the ABA’s Section of Intellectual Property Law, and a past member of the International Trademark Association’s Executive Committee. He frequently serves as an expert witness in trademark-related matters and is an adjunct professor at the Emory University School of Law.
• Fraser, Jennifer

  Dykema Gossett | Member

  Jennifer Fraser is a Member in Dykema Gossett's Washington, D.C. office and is Chair of the Trademark Practice Group. Ms. Fraser represents many Fortune 500 companies and well-known brands across a variety of industries, and her practice includes trademark prosecution, counseling and litigation.
• Gazal, Hani

  Kelly IP | Associate

  Hani Gazal is an Associate at Kelly IP in Washington, D.C. Hani focuses his practice on trademark and copyright counseling, prosecution, enforcement, and litigation. Prior to joining Kelly IP, Hani gained extensive experience in IP matters as an intern in NPR’s Office of General Counsel, as a law clerk for the Alliance of Artists and Recording Companies, and as a law clerk for an IP litigation firm in D.C. Hani graduated from The George Washington University Law School with honors, where he served on the board for the AIPLA Quarterly Journal as a Notes Editor. Hani received his B.A. summa cum laude from Southern Methodist University in 2014.
• Gelchinsky, Jonathan M.

  Pierce Atwood, LLP | Partner

  Jon Gelchinsky specializes in the protection and enforcement of trademark rights for businesses of all sizes. His diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, enforcement, oppositions, and litigation. He also assists clients with the protection, enforcement, and licensing of copyrights. Over the past two decades, Jon has represented a wide range of clients in a variety of industries, including consumer products, musical instruments, medical devices, pharmaceuticals, computer software and hardware, online media, telecommunications, publishing, education, motorcycles, sporting goods, and heavy machinery.
• Gilmore, Richard C.

  Maschoff Brennan | Shareholder

  Rick is a partner in the Salt Lake office of Maschoff Brennan Gilmore Israelsen & Mauriel. He is involved in all aspects of intellectual property law, with a focus on patent and trademark application preparation and prosecution domestically and internationally. He represents large and small clients from a diverse range of industries and often works directly with in-house counsel to develop and maintain their worldwide patent and trademark portfolios. Rick is a frequent speaker on patent and trademark matters and has taught many law school classes on patent and trademark issues.
• Hernandez, Michael

  Pierce Atwood LLP | Attorney

  Michael Hernandez is an attorney in the IP & Technology Practice Group at Pierce Atwood LLP. Leveraging nearly 20 years of global experience in software product management and technical sales at a large, international software company, Mike now assists clients with a wide range of business and intellectual property transactions, including drafting and negotiating complex software, SaaS, and professional services agreements in the financial, insurance, and healthcare industries.
• Joyal, Jason

  Partner | Kelly IP

  Jason Joyal specializes in trademark, trade dress, copyright, false advertising, and unfair competition litigation and counseling. He represents clients in diverse industries in federal courts throughout the country, and routinely before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB).
• Kliebenstein, Heather

  Merchant & Gould | Partner

  Specializing in intellectual property litigation, Heather served as the chair of Merchant & Gould’s litigation group and now as the Managing Partner. Her work focuses on complex intellectual property disputes involving copyright, trademark, patent, false advertising trade secret and contract claims. Heather is an adept communicator. Focusing on jury trials, Heather connects with juries by simplifying complex concepts and focuses on strategy development at each stage of litigation to prepare the case for trial. Heather graduated from the University of Texas School of Law.
• Robinson, Danae

  Pirkey Barber PLLC | Associate

  Danae Robinson focuses her practice on trademark and copyright law. Danae regularly advises clients on contested proceedings, global trademark clearance, licensing, and the management and protection of domestic and international trademark portfolios. She assists clients with various enforcement and domain issues, including the protection of their marks through UDRP proceedings.
• Rokito, Shelby

  Fross Zelnick | Associate

  Shelby Rokito’s litigation practice focuses on protecting and enforcing clients’ intellectual property rights. Shelby’s litigation experience enables her to identify issues and come up with creative solutions to help clients maintain the integrity of their brands and their content. With a robust litigation background in state and federal court, Shelby litigates copyright, trademark, and unfair competition claims on behalf of clients across a range of industries, including media and entertainment, sports, fashion, food and beverage, and consumer products.
• Stefanou, Constance

  Morgan Lewis | Associate

  Constance Stefanou focuses her practice on protection and enforcement of matters related to trademark, false advertising, unfair competition, copyright, anticounterfeiting, and customs in the United States and globally. Connie advises Fortune 100 companies and emerging businesses across different industries on all aspects of intellectual property (IP) portfolio management at a global level, including issues involving trademark selection, clearance, registration, maintenance, and enforcement. Connie assists clients in protecting their valuable brands through administrative proceedings before the Trademark Trial and Appeal Board and in defending such actions brought by third parties.
• Talley, Monica Riva

  Sterne Kessler | Director

  For more than 25 years Monica Riva Talley has specialized in strategic trademark counseling and portfolio enhancement, developing anti-counterfeiting solutions and strategies, and resolving trademark disputes. She is particularly sought after for her expertise in enforcing brand rights against infringers and counterfeiters seeking to profit from her clients' well-known brands. In addition to managing her robust practice, Ms. Talley has worked as an adjunct professor teaching trademark law at The George Washington University Law School. She also frequently speaks and writes on trademark issues to a variety of public and private audiences and has been active for many years in leading IP organizations, including The International Trademark Association (INTA) and the Intellectual Property Owner's Association (IPO). She is the vice chair of IPO's Anti-Counterfeiting Committee and serves on INTA's Brands and Innovation Committee.
• Taylor, Clint

  Kelly IP, LLP | Partner

  Clint focuses his practice on trademark and copyright counseling, prosecution, enforcement, and litigation. He has spent his career helping clients of all sizes navigate the trademark registration process and successfully enforcing those rights. He provides practical advice to clients to assist them in selecting and enforcing their trademarks consistent with their goals.
• Smith-Carra, Heather

  Banner Witcoff | Attorney

  As an advocate for brand protection, Heather works with clients around the world to manage, protect, and enforce their trademark, copyright, and trade dress rights. She focuses her practice on trademark and copyright prosecution and counseling matters, as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board (TTAB).

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