Trademark and Unfair Competition Law Developments

Ted Davis, Kilpatrick Townsend & Stockton LLP

Please join us on June 20, 2023, for our next CLE event. This month’s CLE will be held from 12:00 to 1:15 pm via webinar. We anticipate 1.00 General CLE credit in Ohio for this event.

Our presenter will be Ted Davis of Kilpatrick Townsend & Stockton LLP. Mr. Davis will cover recent developments in United States trademark and unfair competition law over the trailing twelve months. In particular, Mr. Davis will discuss the following:

  • The Supreme Court’s Jack Daniel’s and Abitron (pending) opinions;
  • The apparent consensus regarding the role of mark strength in cases presenting allegations of reverse confusion;
  • Clarification by the Sixth Circuit of the test for standing to bring false advertising claims under Section 43(a) of the Lanham Act;
  • Clarification by the Sixth Circuit of the test for trade dress functionality;
  • The possible evisceration of the confirmed/restored presumption of irreparable harm in cases presenting actual of likely violations of the Lanham Act;
  • Bad craziness under New Mexico law; and
  • The USPTO’s proposed revised fee schedule for trademark filings.

The webinar event will be approximately 60 minutes.

Registration is:

  • free for CincyIP members, 
  • free for students and academics, and 
  • $15.00 for non-members. 

Register here by Friday, June 16, 2023, at 5:00 PM. CincyIP will send a webinar link to all registrants after event registration closes.

About the Speaker:

Ted Davis divides his practice between litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He is a member-elect of the American Bar Association’s Board of Governors and a past chair of the ABA’s Section of Intellectual Property Law, on behalf of which he has testified before Congress on trademark and Internet issues. He also has served on the American Intellectual Property Law Association’s Board of Directors and on the Executive Committee of the International Trademark Association. He frequently serves as an expert witness in trademark-related matters and is an adjunct professor at the Emory University School of Law.

Patents vs. Trade Secrets: Panel Discussion on Considerations for Computing and Consumer Products

Please join us on May 16, 2023, for the next monthly CLE luncheon. This month’s CLE will be held 12:00-1:15 pm by webinar. We anticipate 1.00 General CLE credit in Ohio for this event.

Our speakers will be Ali Anoff (P&G), Mark Vallone (IBM), and Wade Lin (PhenomeX).

  Ali Anoff, Procter & Gamble

Mark Vallone, IBM

Wade Lin, PhenomeX

Innovative companies must balance filing patents and maintaining trade secrets to secure competitive advantage. It can be difficult to determine which option will offer the best protection since patents and trade secrets seem to present opposing choices. A patent holder in the United States can obtain 20 years of exclusivity in exchange for a public disclosure of information. While trade secrets theoretically last forever, they only ensure protection while the information is not discovered by the public, and trade secrets, unlike patents, can be reverse engineered or otherwise independently obtained. 

Companies must carefully consider whether seeking patents or trade secret protection is preferred for their valuable IP assets. It is important for each company to understand the competitive landscape and their business goals when making these decisions and companies will reach different conclusions depending on their industry, size, and location of manufacturing and sales. Our panelists will consider these issues while working through two scenarios that contrast how trade secrets and patents are used in computer software and hardware and consumer packaged goods industries.

The webinar event will be 60 minutes.

Registration is:

  • free for CincyIP members, 
  • free for students and academics, and 
  • $15.00 for non-members. 

Register here by Friday, May 12, at 5:00 PM.

About the Speakers:

Ali Anoff is Director and Assistant General Counsel at Procter & Gamble. She is the primary patent attorney for Olay® skin care, a brand with net sales of more than $1 billion annually. Ali provides strategic legal counsel to the business to create and protect global intellectual property assets. Her practice focuses on IP strategy development, preparation and prosecution of global patent applications, freedom-to-practice assessments, enforcement, and due diligence.

Mark Vallone is Senior IP Counsel at IBM, where he manages IBM’s in-house team that primarily handles U.S. patent application preparation and prosecution matters.  Mark is also active in IBM patent strategy and policy matters.  He formerly led the team responsible for IBM’s U.S. Patent Procedures, which are followed by IBM’s in-house and outside patent counsel.  He also served as lead IP Counsel for IBM Cloud and IBM Commerce, for which he supported transactions and product clearances, led patent procurement operations, and provided counsel on a wide range of other IP matters.  He received his B.S. in Computer Science from The Pennsylvania State University in 1998, after which he spent five years as a software developer for IBM in the areas of network security, distributed computing and e-commerce.  He received his J.D., summa cum laude, from Syracuse University in 2006. He is a registered to practice before the U.S. Patent and Trademark Office and is a member of the New York State Bar.

Wade Lin is a patent agent registered in Taiwan and the United States and also qualified in China. His scientific background is molecular biology. He had over ten years of experience working at one of the biggest law firms in Taiwan specializing in global patent prosecution, patent analyses and representing clients in patent infringement litigations. He currently works at PhenomeX as a Senior Patent Agent.

Practical Tips for Succeeding as an Intellectual Property Attorney

Please join us on April 11, 2023, from 6:00 PM to 7:00 PM, for an in-person networking event. The event is being graciously hosted by Thompson Hine LLP, located at 312 Walnut Street, Cincinnati, OH 45202. We anticipate 1.00 General CLE credit in Ohio for this event.

Our speakers will be a panel of CINCYIP Officers and Board Members including Jeff Teeters, Cory Ingle, Kevin Flynn, and Kristin Hardy. 

  Jeff Teeters Wood + Lamping LLP

Cory Ingle Dinsmore & Shohl LLP

Kevin Flynn Baker & Hostetler LLP

Kristin Hardy Taft Stettinius & Hollister LLP

This panel will be presented as part of a larger networking event for CincyIP, young practitioners in the Cincinnati area, and law students interested in learning more about the practice of law. The panelists will discuss the general background of their practices, including the basics of trademark, patent, and copyright law. They will also discuss practice tips for attorneys generally, including dealing with federal agencies and procedure and improving legal judgement and writing when faced with different issues.

The event will be 60 minutes and appetizers and refreshments will be served.

Registration is:

  • free for CincyIP members, 
  • free for students and academics, and 
  • $15.00 for non-members. 

Register here by Friday, April 7, at 5:00 PM.

About the Speakers:

Jeff Teeters is a partner at Wood + Lamping LLP. He is the chair of the firm’s Litigation practice area. The majority of his work focuses on assisting clients to manage their interactions with their competitors. He provides counsel and litigation services in the areas of business and commercial, antitrust, trade secrets, non-compete agreements, unfair competition, shareholder, director and officer disputes, and insurance coverage. Covering a wide range of industries, Jeff has handled well over 100 injunction hearings related to covenants not to compete, franchise disputes, insurance coverage, real estate, and trade secrets.

Cory Ingle is a Partner at Dinsmore & Shohl LLP. Cory concentrates his practice on intellectual property law with a focus on patent application preparation and prosecution both in the United States and abroad. Additionally, he advises clients on the patentability, freedom to practice, acquisition and licensing of technical innovations. His work spans a variety of industries and technologies, including chemical/materials, pharmaceuticals, mechanical, biomedical and software/electrical. Furthermore, Cory has experience counseling many different client needs, from those of large Fortune 500 corporations to small startup companies.

Kevin Flynn is an associate at Baker & Hostetler LLP. Kevin maintains a robust practice spanning the spectrum of intellectual property matters. He has represented clients in courts across the country and has experience in administrative forums, including the International Trade Commission and the Patent Trial and Appeal Board. A registered patent attorney, Kevin regularly counsels inventors and brand owners to secure and maintain protection. Kevin has experience in all phases of litigation and has counseled clients over a wide range of technologies, from computer and Internet technologies to turbine engines, optics, industrial machines, LED lights, radiological systems, pharmaceuticals and more. Kevin translates both business and technical issues into effective legal advocacy.

Kristin Hardy is an associate at Taft Stettinius & Hollister LLP in Taft’s Intellectual Property practice group. Her practice focuses on trademark clearance, trademark prosecution and enforcement, trademark litigation, copyrights and various IP infringement matters, as well as WIPO UDRP matters. She advises clients on protecting their brands and proprietary information, while providing guidance regarding brand development, clearance, registration, and maintenance for intellectual property portfolios, including trademarks, copyrights, domain names, and social media, in addition to handling TTAB and litigation matters. Prior to law school, Kristin worked for the Chicago Bears and at a large corporate Chicago firm doing marketing and business development work. Prior to joining Taft as an associate, she was a summer associate with the firm and a law clerk for the Indiana Office of the Attorney General in the Consumer Protection Division. She also was a law clerk for Honorable Barbara P. Gorman at the Montgomery County Court of Common Pleas.