Celesq® Attorneys Ed Center
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Programs in Trademark Law

Programs are available online to all firms wishing to assist their attorneys in obtaining their CLE credits. Please email customer.care@celesq.com to obtain a coupon code for your firm. Once an attorney has completed a program, your firm will be billed $30 each for the cost of each certificate which will be issued as a download once the attorney has completed the affirmation for the particular program. CDs will be available for all programs upon request. Please email customer.care@celesq.com to purchase CDs for any course. Cost will be $95.00 per CD, plus shipping and handling.

PROGRAMS ARE NOT AVAILABLE UNTIL AFTER THE PROGRAM DATE – IF THE ONLINE PURCHASE BUTTON IS NOT SHOWING – THE PROGRAM IS NOT YET AVAILABLE FOR LISTENING. PLEASE DO NOT ADD AUDIO TAPE TO YOUR CART AS THE PROGRAM IS NOT YET AVAILABLE. ONLY ADD TO YOUR CART IF YOU SEE ‘ONLINE AUDIO’ - THANK YOU SO MUCH!

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To Embed, or Not to Embed, that is the Question (01/22/2021)

Program Number: 3114 Presenter: Michael D. Hobbs, Jr. Esq., Shaleen J. Patel, Esq.

A discussion on an increasingly tumultuous area of on-line copyright law. The discussion focuses on a trend where courts are increasingly allowing cases to proceed on the merits in instances of media publishers embedding, a practice of displaying content from one platform into another without actually hosting the underlying content. For years, such a practice seemed safe under the Ninth Circuit’s “server test.” However, districts in other circuits are rejecting that the server test is settled law and questioning the legality of embedding. As social media makes embedding content a more available feature, this broadcast discusses the risks of continuing to embed content without first acquiring permission and possible alternatives.

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To Trade Secret or Not to Trade Secret- That is THE Question! (06/10/2020)

Program Number: 3094 Presenter: David Postolski, Esq.

Keeping something secret is hard! Especially when it comes to what gives your business a competitive advantage. If you can legally and commercially manage to do this, then you can achieve Federal Rights for the first time in US history since 2016. This presentation will explore best practices, steps and strategies in ensuring that what you have as a trade secret can achieve maximum protection. This presentation will also explore the opposite of a Trade Secret, the Patent and the interplay between these types of intellectual property so that your clients can make an informed decision!

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Drafting Licensing and Development Agreements to Avoid Expensive Legal Disputes (04/30/2020)

Program Number: 3054 Presenter: Raman N. Dewan, Esq., Christopher J. Rourk, Esq.

Drafting Licensing and Development Agreements to Avoid Expensive Legal Disputes. In Romag v. Fossil, the parties have found themselves heading to the Supreme Court to resolve a legal issue. Is that because there is a split in authority between the circuits, or because the agreement failed to protect against the dispute? This webinar will discuss key clauses where such disputes are likely to arise and will address due diligence and drafting best practices that can help to identify such issues and prevent extended and expensive litigation. Many of these issues relate to patents, copyrights, trademarks and trade secrets, and the webinar will help the general practitioner to identify the key issues pertaining to each of these four types of intellectual property and to avoid wasting time and negotiating positions arguing over issues that are not important.

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Developments in Standard Essential Patents (11/04/2020)

Program Number: 3042 Presenter: Robert Stoll, Esq.

Please join Bob as he discusses the evolution of the standards in the Administration and recent developments in the US Courts on Fair, Reasonable and Non-Discriminatory licensing as well as developments on worldwide licensing of patents that are needed to operate the standards. Bob will focus on 5G as an example of a standard.

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Overcoming Fintiv: Obtaining Institution Decisions From the PTAB in This New Age of Discretion (12/08/2020)

Program Number: 30287 Presenter: Kevin J. Boyle, Esq., Louis L. Campbell, Esq., Michael A. Tomasulo, Esq.

There’s no doubt about it. Convincing the PTAB to institute an inter partes review today is getting tougher. It’s no longer enough to just find killer prior art and draft a strong petition. With the rise of decisions like NHK Spring and Fintiv, now petitioners have to convince the PTAB that a the IPR would not be inefficient in view of parallel proceedings in the district court or the ITC. Overcoming NHK Spring and Fintiv, can be a challenge, but it’s not impossible. In this presentation, we will review the developing case law and discuss how some petitioners have been able to convince the PTAB to institute despite fast moving parallel district court proceedings.

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Analysis of Descriptive versus Generic Trademarks and Establishing Secondary Meaning /Acquired Distinctiveness in the EU, UK and the US (11/05/2020)

Program Number: 30262 Presenter: Sean C. Fifield, Esq., Ben Hitchens, Esq., Robert E. Nail, Esq., Paul Sweeden, Esq.

The program will explore the distinctions between descriptive and generic marks in the United States, the United Kingdom and the European Union and the impact of the recent Booking.com case in the United States. The program will then discuss the requirements for protecting a descriptive trademark by establishing secondary meaning in the United States, the United Kingdom and the European Union. We will explore the types of evidence and relevant factors that will be considered in the United States when establishing secondary meaning. In Europe, the scope of usage required to acquire distinctiveness through secondary meaning in the United Kingdom will be explored and compared to that required in the European Union. The presentation will also discuss the impact of Brexit transition rules upon the acquisition of secondary meaning, particularly the relevance of use in the UK to the maintenance of trade mark rights in the EU, and vice

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Foreign Trademark Filing Considerations and Pitfalls to Avoid (11/11/2020)

Program Number: 30251 Presenter: Neha Bhalani, Esq., Peter Nussbaum

U.S. trademark rights stop at the U.S. border. In order to be protected outside of the U.S., trademark rights must be obtained separately across territories. In this program, the presenters will discuss key considerations for foreign trademark filings including the differences between first-to-use and first-to-file jurisdictions, establishing trademark priority, and the different filing strategies and options for obtaining trademark protection abroad. The presentation will also touch upon some differences across territories on eligibility for trademark registration as well as the differing standards of likelihood of confusion. Finally, the presenters provide key takeaways and pitfalls to avoid when representing brand owners.

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The Six Stages of Trade Secret Misappropriation Protection (11/18/2020)

Program Number: 30246 Presenter: David L. Cohen, Esq., Michael J. Kasdan, Esq. - Wiggin and Dana LLP, Donal O'Connell

This presentation examines considerations for an effective trade secret asset management through the prism of trade secret misappropriation, examining how to approach the question of what to protect as a trade secret and how and whether a company would safeguard and enforce its IP if there were a misappropriation. There are six sequential stages of consideration: Recognition, Detectability, Provability, Specificity, Correlation, and Mitigation. (Any similarity to “The Six Stages of Grief” is purely coincidental. In fact, following these six stages is designed to avoid grief on the part of the trade secret holder when the time arises to pursue a claim of trade secret misappropriation.)

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Trademark Counterfeiting in the 2020’s (10/14/2020)

Program Number: 30237 Presenter: Anthony F. Lo Cicero, Esq.

The old tactics of anticounterfeiting enforcement against street vendors and flea market operators have largely been replaced with online takedown notices, mass litigations against unnamed defendants and border enforcement. On the flip side, the “counterfeiting” label is being applied to activities different from what we have seen in the past, as reflected in the Second Circuit’s decision in Tiffany & Co. v. Costco Wholesale Corp. and elsewhere. Join Tony Lo Cicero, Managing Partner of Amster, Rothstein & Ebenstein as he discusses these developments and their likely impact for the future.

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Consequences of Trademark Infringement (09/09/2020)

Program Number: 30213 Presenter: Jessica Johnson Fishfeld, Esq.

During a time when online marketing, virtual shopping, and electronic communication are more widely used than ever, it is critically important for individuals and businesses to be highly aware of how they are using trademarks, the scope of a trademark owner’s rights, and the consequences of infringing them. In this program, Greenberg Traurig litigation associate Jessica Fishfeld will discuss the consequences of trademark infringement. The program will include a brief general review of trademark law, a discussion of each of the several categories of monetary damages permitted by law and their interplay, and litigation strategies for proving or defending against these damages.

$95.00Audio CD Add to Cart

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