Chapter 1: The Origins of Trademark Rights and the Nature of the Interests Protected Steve Meleen Alexandra Bistline Steve Meleen Alexandra Bistline

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1 Author Biographies Chapter 1: The Origins of Trademark Rights and the Nature of the Interests Protected Steve Meleen Alexandra Bistline Steve Meleen is Managing Member of Pirkey Barber PLLC, Austin, Texas. Steve has specialized in trademark law for more than twenty years, after spending four years as a nuclear engineer and a brief foray into patent law. Steve handles all aspects of trademark and unfair competition law, with a primary focus on trademark litigation. He is also experienced in copyright counseling and litigation. Alexandra Bistline is an associate at Pirkey Barber PLLC, Austin, Texas. Alex practices trademark, copyright, and unfair competition law, with a primary focus on litigation and policing. Alex has represented clients in all phases of litigation, including pre-trial, trial, post-trial, and appeal. She also advises clients on developing enforcement strategies, policing of infringements, and trademarkrelated contracts and negotiations. Chapter 2: Establishing Trademark and Unfair Competition Liability B. Brett Heavner Patrick Rodgers Brett Heavner is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, in the firm s Washington, D.C. office. His practice includes all aspects of trademark and unfair competition law, with a particular emphasis on trademark infringement, counterfeiting, and false advertising litigation. His clients include pharmaceutical companies, medical device manufacturers, banking and financial services institutions, major trade associations, food product companies, and petroleum exploration and refining companies. Mr. Heavner also handles intellectual property issues, including protecting certification marks, for safety and quality testing organizations. Having significant experience in all aspects of domestic and foreign trademark protection, Mr. Heavner assists clients in developing xi

2 xii Trademark Infringement Remedies, 2018 Supp. effective worldwide strategies for establishing and enforcing their trademark rights. He regularly counsels clients on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs. He handles trademark matters in U.S. district courts, cancellation and opposition proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO), and appeal proceedings before the U.S. Court of Appeals for the Federal Circuit. Patrick Rodgers is a Finnegan law clerk in the firm s Trademark Group. During his two summers at Finnegan, he worked on both trademark prosecution and litigation matters, copyright matters, and has co-authored articles. Mr. Rodgers expects to receive his J.D. from Georgetown in He received his B.B.A from the University of Miami in Business Law and Management in Chapter 3: General Principles Mark Thurmon Mark Thurmon is a tenured Professor of Law at Southern University Law Center and is of counsel at Roy, Kiesel, Ford, Doody & Thurmon APLC in Baton Rouge, Louisiana. He is registered to practice before the United States Patent and Trademark Office, and has published extensively on intellectual property issues. He has had a varied career working as an engineer, serving in the United States Navy, working in-house for a private corporation, and as a Professor of Intellectual Property, in addition to his work at a law firm. Mr. Thurmon holds an electrical engineering degree, and completed nuclear engineering training and submarine training while in the United States Navy. Mr. Thurmon obtained a B.S. in Electrical Engineering from Louisiana State University, and his J.D. from Duke University. Chapter 4: Preliminary Injunctions Jered E. Matthysse Jered E. Matthysse is a lawyer at Pirkey Barber PLLC in Austin, Texas. He specializes in trademark law with a primary focus on litigation and policing, frequently handling cases in federal courts throughout the U.S. and before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Jered has extensive experience in mediation and regularly assists clients with trademark policing strategies and programs. Jered has a background in appellate practice, having served as a law clerk for the U.S. Court of Appeals for the Seventh Circuit. Jered received his J.D. with High Honors from The George Washington University Law School, where he served as Executive Managing Editor for the International Law Review and was a member of the National Order of the Coif.

3 Chapter 5: Permanent Injunctions Elizabeth E. Brenckman Author Biographies xiii Elizabeth Brenckman is a principal in the trademark and copyright litigation practice of the New York office of Fish & Richardson. Ms. Brenckman specializes in trademark and copyright enforcement and litigation matters, and has managed numerous high-profile trademark and copyright litigation matters before federal district and appellate courts and the International Trade Commission. Chapter 6: Extraordinary Circumstances and Relief Amy J. Benjamin Diane B. Melnick Amy J. Benjamin is the founding partner of Benjamin Law PC. She has nearly thirty years of experience in intellectual property law, advertising law and First Amendment legal matters. Ms. Benjamin s practice focuses on all areas of intellectual property law, including trademark, copyright and unfair competition, advertising and First Amendment litigation, counseling and procurement. She has significant experience with Internet, new media and online issues, such as key word and pop-up advertising and domain name issues. Ms. Benjamin manages significant trademark portfolios, handling both U.S. and foreign trademark prosecution. She provides clearance opinions and counseling services to her clients. She has extensive litigation experience in intellectual property matters, both in federal court and before the Trademark Trial and Appeal Board, including jury trials. She is also experienced in advertising and packaging review, pre-publication review, licensing and due diligence for corporate matters. Ms. Benjamin received her J.D. in 1989 from New York University School of Law, where she had a fellowship in Libel Law. She received a B.A. in American Studies, cum laude, from Brandeis University in Ms. Benjamin is actively involved in the American Bar Association Intellectual Property Law Section, where she has held various committee and division chair positions, and is a member of the Association of the City Bar of New York. Diane B. Melnick is of counsel at the law firm of Powley & Gibson P.C., a full-service intellectual property firm in New York City. She specializes in domestic and international trademark matters, including clearance, prosecution, portfolio management, disputes, and licensing. Diane has substantial experience in pharmaceuticals and medical devices, and has also represented clients in the areas of industrial and electronic products, computer hardware and software, apparel, accessories, jewelry and financial services. Diane is a former Trademark Examining Attorney at the United States Patent

4 xiv Trademark Infringement Remedies, 2018 Supp. and Trademark Office and has extensive experience with USPTO processes and practices for trademarks. Diane graduated from the University of Michigan in its Honors Program, with a major in political science, and received her J.D. from Emory University School of Law. Diane is licensed to practice law in New York and Michigan, and in the District of Columbia. She is admitted to practice in the United States District Courts for the Southern and Eastern Districts of New York and the Eastern District of Michigan. Diane is a member of the International Trademark Association and will serve on the Publications Committee for the term. Chapter 7: Defendant s Profits Marc C. Levy Marc C. Levy is a partner at Seed Intellectual Property Law Group LLP in Seattle, Washington. He focuses his practice on trademark, advertising and unfair competition litigation and enforcement. Marc has represented clients in these matters, including preliminary injunction hearings and trials, in federal trial and appellate courts across the country. In the advertising arena, Marc has not only represented clients in the federal courts, but also at the National Advertising Division of the Better Business Bureau. Marc also handles opposition and cancellation proceedings at the Trademark Trial and Appeal Board. Chapter 8: Plaintiff s Damages Christina D. Frangiosa Christina D. Frangiosa is a partner with Eckert Seamans Cherin & Mellott, LLC in Philadelphia, Pennsylvania. She counsels clients across various industries about intellectual property and technology law. Her combined litigation and transactional practice concentrates on copyright and trademark advisory services (search, applications, and use), counterfeiting, infringement, unfair competition, false advertising, trade secrets, licensing, and policy development. She has appeared in state and federal courts on behalf of her clients and represents them in trademark applications filed with the U.S. Patent and Trademark Office, as well as in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. Chris is also active in the legal community, serving in many key leadership roles of the American Bar Association Section of Intellectual Property Law. She provides legal commentary on IP-related issues in the mainstream media, authoring articles, leading CLE sessions, and most notably, serving as the publisher of the Privacy and IP Law Blog, which addresses recent developments in trademark, copyright, computer, data security, and privacy law.

5 Chapter 9: Attorneys Fees Theodore H. Davis Jr. Author Biographies xv Ted Davis is a partner in the Atlanta, Georgia office of Kilpatrick Townsend & Stockton LLP, where he has practiced trademark, copyright, false advertising, and unfair competition law since Outside the office, he has taught as an adjunct professor at the Emory University, University of Georgia, and John Marshall law schools. Additionally, he has testified before Congress on trade dress and Internet issues. He is a past Chair of the American Bar Association Section of Intellectual Property Law and a former member of the Board of Directors of the International Trademark Association. Ted received his undergraduate degree from Davidson College and his law degree from the University of Virginia. He is a member of the bars of Georgia, New York, and the District of Columbia. Chapter 10: Special Enforcement Remedies Barbara J. Grahn Barb Grahn is a partner at Fox Rothschild in Minneapolis where she helps companies secure and enforce their trademark rights both in the U.S. and internationally. She also advises clients in copyright law and licensing, and the related areas of advertising compliance, false advertising, unfair competition, and rights of publicity and privacy. Before joining Fox, Barb was a partner at Oppenheimer Wolff & Donnelly LLP. Barb has extensive experience counseling clients in the areas of U.S. and international trademark clearance, registration and enforcement, brand development and management, trademark registration strategy, trademark and copyright infringement disputes, domain name issues, sweepstakes and contest rules, and copyright registrations for software and databases. She has handled numerous trademark oppositions and cancellations before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Barb has particular expertise with clients in the medical device, consumer goods, publishing, digital and information security, and computer software fields. Chapter 11: State Law Remedies Jacquelyn R. Prom Jacquelyn R. Prom is an associate at Pattishall McAuliffe, where she practices trademark litigation and prosecution, unfair competition, copyright, and right of publicity law. Ms. Prom has litigation experience in cases involving trademark and trade dress infringement, unfair competition, false advertising, right of publicity, and right of privacy claims before the federal and state courts. She has experience counseling clients on the selection and registration

6 xvi Trademark Infringement Remedies, 2018 Supp. of trademarks in the United States and abroad. She earned her J.D. from The University of Chicago Law School, and her B.A. in Politics and Media Studies, magna cum laude and Phi Beta Kappa, from The Catholic University of America. While in her last year of undergraduate studies, Jacquelyn worked for the U.S. Department of State as a Program Analyst in the State Department s Litigation and Appeals Office. Chapter 12: Special Remedies for Counterfeit Leslie J. Lott Leslie J. Lott is a founding partner of Lott & Fischer, PL, specializing exclusively in intellectual property law, with offices in Coral Gables, Florida. Ms. Lott is a past member of the Florida Bar Board of Governors. She has served on the Trademark Public Advisory Committee of the United States Patent and Trademark Office. She has been actively involved with the International Trademark Association for many years, having served two terms on the Board of Directors, and was named to the Panel of Distinguished Neutrals for the Resolution of Trademark Disputes. Ms. Lott was named Lawyer of the Year in Trademark Law for the Miami area for the 2018 edition of The Best Lawyers in America, and was previously named Lawyer of the Year in Intellectual Property Litigation and Patent Litigation. She was named one of Florida s Top 50 Female Florida Super Lawyers, and has repeatedly appeared in Florida Super Lawyers magazine in the intellectual property category. She was among the first in the country to be certified by the Florida Bar as a specialist in intellectual property law, and is past chair of the Intellectual Property Committee of the Florida Bar. Chapter 13: Remedies for Trademark Infringement and Unfair Competition on the Internet B. Brett Heavner Patrick Rodgers Brett Heavner is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, in the firm s Washington, D.C. office. His practice includes all aspects of trademark and unfair competition law, with a particular emphasis on trademark infringement, counterfeiting, and false advertising litigation. His clients include pharmaceutical companies, medical device manufacturers, banking and financial services institutions, major trade associations, food product companies, and petroleum exploration and refining companies. Mr. Heavner also handles intellectual property issues, including protecting certification marks, for safety and quality testing organizations. Having significant experience in all aspects of domestic and foreign trademark protection, Mr. Heavner assists clients in developing

7 Author Biographies xvii effective worldwide strategies for establishing and enforcing their trademark rights. He regularly counsels clients on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs. He handles trademark matters in U.S. district courts, cancellation and opposition proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO), and appeal proceedings before the U.S. Court of Appeals for the Federal Circuit. Patrick Rodgers is a Finnegan law clerk in the firm s Trademark Group. During his two summers at Finnegan, he worked on both trademark prosecution and litigation matters, copyright matters, and has co-authored articles. Mr. Rodgers expects to receive his J.D. from Georgetown in He received his B.B.A from the University of Miami in Business Law and Management in 2015.

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