Trademark Infringement: Structuring Opinions of Counsel

Leveraging Opinion Letters to Reduce the Risks of Liability and Enhanced Damages

Recording of a 90-minute CLE webinar with Q&A

Conducted on Tuesday, April 18, 2017
Recorded event now available

This CLE webinar will provide IP counsel with an analysis of the role of opinions in the defense of trademark infringement claims and the potential use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for developing opinions of counsel.


Opinions of counsel play a significant role in determining the best trademark options for a company. Offensively, they are important in determining whether a third party may be infringing the claims of one of the company’s marks. Defensively, opinions can be used to determine whether the company accused of infringing a third party's intellectual property rights can continue business activities without facing infringement litigation.

Opinions of counsel are traditionally a first line of defense in the event of trademark infringement claims. Opinions of counsel provide valuable advice and suggestions for options to reduce the risks of infringement. However, asserting the defense can put the attorney advice at issue and result in waiver of the attorney-client privilege.

Listen as our authoritative panel of trademark attorneys examines the standard for trademark infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for structuring and using opinions of counsel.


  1. Standard for infringement and use of opinions of counsel
  2. Waiver
  3. Court treatment
  4. Best practices for employing opinions of counsel


The panel will review these and other key issues:

  • How can trademark opinions of counsel be used both offensively and defensively to strengthen a company's brand and trademark portfolio?
  • How have the courts treated the use of trademark opinions of counsel?
  • Under what circumstances should corporate counsel seek outside opinions of counsel to protect their client from infringement claims?


James Hastings, Of Counsel
Collen Intellectual Property Law, Ossining, N.Y.

Mr. Hastings has more than 20 years of experience representing corporate and entrepreneurial brand owners in all facets of trademark law and brand protection and enforcement. Previously, Mr. Hastings served as in-house counsel to a well-known national catalog retailer. He is author of the online publication, Trademark Opposition Lawyer—a guide for CEOs and in-house counsel about contested proceedings before the U.S. Trademark Trial and Appeal Board.

David Jafari, Esq.
Jafari Law Group, Aliso Viejo, Calif.

Mr. Jafari provides solutions for businesses and individuals, especially with regards to the procurement and protection of intellectual property portfolios. In addition to his patent and copyright services, he provides a full range of trademark services including initial counseling, clearance opinions, search services, and preparation and filing of applications in the United States Patent and Trademark Office.


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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



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