International Trademark Protection After Abitron: Branding and Enforcement Considerations
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide trademark counsel on international trademark protection after Abitron v. Hetronic (U.S. 2023). The panel will discuss the implications of the decision and what U.S. trademark owners should do if they believe there is foreign trademark infringement. The panel will also address brand protection and enforcement strategies within and outside the U.S.
Outline
- Abitron v. Hetronic (U.S. 2023) and the implications for international trademark protection
- Foreign trademark infringement
- Brand protection and enforcement strategies
- Best practices
Benefits
The panel will discuss these and other key considerations:
- What impact has the Abitron decision had on international trademark protection?
- When can a trademark owner get damages if their mark is infringed out of the U.S.?
- Where can trademark owners look to prevent infringement and protect their marks outside the U.S.?
Faculty
Thomas W. Brooke
Partner
Holland & Knight
Mr. Brooke handles matters ranging from serving as litigation counsel in major intellectual property disputes across... | Read More
Mr. Brooke handles matters ranging from serving as litigation counsel in major intellectual property disputes across the globe, to initial counseling and trademark selection, copyright and trademark registration around the world, licensing, and technology transfers. Related matters include drafting and interpreting agreements regarding ownership and use of names, images, photographs, software, trade secrets, music, and other IP. Mr. Brooke ranks among the most prolific filers of U.S. trademark applications and has strong relationships within the USPTO. He currently serves on the INTA's Internet Committee, working to craft worldwide policy on domain name abuse. Mr. Brooke previously served as chair of the INTA's U.S. Legislation Committee, where he helped craft the Federal Anticybersquatting Piracy Act and the Federal Trademark Dilution Act.
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Lauren Gregory Leipold
Partner
Seyfarth Shaw
Ms. Leipold works with clients from a wide range of industries to create and execute customized intellectual property... | Read More
Ms. Leipold works with clients from a wide range of industries to create and execute customized intellectual property protection programs that align their goals with the practical realities of emerging e-commerce trends. She regularly counsels on brand protection strategy and mitigation of risk in connection with the launch of new marketing campaigns. Ms. Leipold has designed and implemented trademark enforcement programs for clients ranging from startups to large, international corporations. She also assists clients in securing, protecting, enforcing, and licensing other intangible assets, from copyright to trade secrets to publicity rights. When litigation becomes inevitable, Ms. Leipold draws on her significant experience before state and federal courts, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, and in international arbitration proceedings pursuant to the Uniform Domain-Name Dispute-Resolution Policy. She regularly partners with foreign counsel to tackle issues that become global in scale, coordinating strategic alignment across jurisdictions.
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Martin Schwimmer
Partner
Leason Ellis
Mr. Schwimmer has been practicing IP law for over 30 years. He counsels ventures of any size from start-ups to Fortune... | Read More
Mr. Schwimmer has been practicing IP law for over 30 years. He counsels ventures of any size from start-ups to Fortune 100 companies and litigates in U.S. federal district and appellate courts, and in the Trademark Trial and Appeal Board. Mr. Schwimmer manages global trademark portfolios, and has instructed matters in most trademark jurisdictions in the world, including Tuvalu and Vanuatu. Through his writing, speaking, committee work, lobbying, counseling, and litigating, Mr. Schwimmer has been at the forefront of the forces that have transformed trademark law – including domain names, blogging, search engines, ecommerce, social media, and blockchain. He is the publisher of The Trademark Blog, the world’s oldest blog devoted to trademark and copyright law, and has authored numerous articles that have appeared in trademark publications, as well as a number of amicus briefs.
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