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  • Description

    There have been many fascinating trademark decisions from the Federal Courts as well as the Trademark Trial and Appeal Board. These decisions are required knowledge for trademark practitioners.

    This CLE course will present these decisions as well as the myriad issues visited from protective orders and color marks to standing, initial interest confusion, territoriality and more.

    The course will also review a variety of decisions including:

    • Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC
    • Chutter, Inc. v. Great Management Group, LLC
    • Galperti v. Galperti
    • The Coca-Cola Company v. Meenaxi Enterprise Inc
    • In re Joel Embiid
    • In re Dolce Vita Footwear, Inc.
    • Sulzer Mixpac AG v. A&N Trading Co. et al.
  • Instructor Bio

    Kimberly Maynard

    Kimberly M. Maynard is a partner in the Trademark & Brand Management, and Litigation Groups. She represents emerging and established companies on intellectual property matters across a variety of industries, including technology, fashion, jewelry, finance, food, automotive, television and dance. World Intellectual Property Review recently included Ms. Maynard as a “Trailblazer” in its “Influential Women in IP” list.

    Ms. Maynard guides her clients through all aspects of domestic and international brand-building and brand management. She works hard to understand client business goals and to craft practical, cost-effective legal strategies that meet those goals. Ms. Maynard analyzes and assesses the benefits and risks associated with adopting new brands, prepares and implements strategies for the development of new brands, and protects and expands established brands. Ms. Maynard represents clients before the Trademark Trial and Appeal Board and litigates cases involving complex trademark, trade dress, advertising, copyright and design patent issues in federal court. She also negotiates complex license and settlement agreements, advises on domain names and social media, and counsels on the proper use of trademarks and trade dress. Recently, she was part of the Frankfurt Kurnit team that represented Sprint in a high-profile false advertising case.

    Prior to joining Frankfurt Kurnit, Ms. Maynard was an associate at BakerHostetler, where, among other things, she led a team of lawyers in an appeal of a Trademark Trial and Appeal Board decision before the Southern District of New York — ultimately securing ownership of trademarks for a major New York City dance theater. Prior to law school, Ms. Maynard was affiliated with Trisha Brown Dance Company.

    Ms. Maynard is a member of the New York State Bar Association (Intellectual Property Group) and a member of the U.S. Trademark Law Committee (Intellectual Property Owners Association). She serves on INTA’s Young Practitioner’s Committee and was an Adjunct Professor at New York Law School, where she helped start the PTO Trademark Clinic. She is admitted to practice in the New York and New Jersey state courts, as well as in the Southern and Eastern Districts of New York, the District of New Jersey, and the Court of Appeals for the Second Circuit.


    Catherine Farrell

    Catherine M.C. Farrelly, formerly Catherine M. Clayton, is a partner and chair of the Trademark & Brand Management Group and is also a member of the firm’s Litigation Group.

    Ms. Farrelly advises some of the world’s leading brands on intellectual property matters, helping them plan strategies, manage trademark portfolios, and protect trademarks and other IP in the US and world markets. She represents well-known companies in a variety of industries, including entertainment, finance, sports, cosmetics, toys, beverages, publishing and real estate.

    Ms. Farrelly has focused on trademark and copyright law for 20 years, and regularly provides clients with strategic advice regarding the availability, validity and enforceability of trademarks. She also has significant experience preventing the unauthorized use of trademarks and copyrights through litigation, arbitration and negotiation.

    In addition to representing clients in federal court and before the Trademark Trial and Appeal Board, Ms. Farrelly helps clients establish, maintain and grow domestic and international trademark portfolios. She negotiates and structures trademark and copyright licenses and assignments; regularly shuts down on-line auctions of infringing goods and false advertising on social media platforms; and resolves domain name disputes through negotiation, federal court litigation, and arbitration under the Uniform Domain Name Dispute Resolution Policy.

    Ms. Farrelly is an Advisory Board Member for the University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic, Chair of the ABA’s USPTO Operations Relating to Trademarks Subcommittee, and a member of the International Trademark Association (“INTA”), the Copyright Society, the New York Intellectual Property Law Association, and the New York State Bar Association. She writes and speaks frequently on hot topics in intellectual property law, and has been published in the New York Law Journal, among other publications. Ms. Farrelly is admitted to practice in New York, the United States District Court for the Southern District of New York, the United States District Court for the Eastern District of New York, and the United States Supreme Court.

    Prior to joining Frankfurt Kurnit, Ms. Farrelly was a partner with Gibbons P.C. and was associated with Paul, Hastings, Janofsky & Walker LLP and Pennie & Edmonds LLP. She has lived in the U.S., England, France, the Netherlands, the Bahamas and Saudi Arabia.


    Julie Amadeo

    Julie Amadeo is an associate in the Trademark & Brand Management Group at Frankfurt Kurnit.

    Ms. Amadeo is experienced in all aspects of domestic and international brand building and brand protection. She handles preliminary and full trademark clearance, drafting and negotiating license, settlement, and coexistence agreements, and enforcing and protecting trademark rights. Ms. Amadeo also represents clients before the Trademark Trial and Appeal Board. She has counseled clients in the financial services, entertainment, fashion, and food and beverages industries.

    Prior to joining Frankfurt Kurnit, Ms. Amadeo was an associate at Steptoe & Johnson LLP. and at Hughes Hubbard & Reed LLP. During her time at Steptoe & Johnson LLP, she assisted an NGO that educates youth interested in media in licensing their IP in furtherance of seeding other nonprofits. She was also on a team that represented a band in a dispute over ownership of their name before the Trademark Trial and Appeal Board. Ms. Amadeo’s trademark and brand management clients also benefit from her substantial commercial litigation and international arbitration experience.

    Ms. Amadeo is a member of the New York City Bar Association (City Bar Chorus Committee). She is admitted to practice in New York State Courts, and in the federal courts for the Eastern and Southern District of New York.


    Rachel Santori

    Rachel Santori, formerly Rachel Kronman, is counsel to the Intellectual Property and Trademark & Brand Management Groups at Frankfurt Kurnit. She represents clients at all levels in a wide variety of industries including fashion, music, film, television, literature, advertising, hospitality, design, entertainment, sports, and transportation among others.

    Ms. Santori has special expertise in brand-building and brand protection. She is experienced in all aspects of domestic and international trademark law, including directing trademark portfolio programs, counseling clients on the selection and clearance of marks, trademark prosecution in the USPTO and abroad, and opposition and cancellation proceedings before the TTAB and in foreign tribunals. Ms. Santori works with clients to create unique brands and brand protection and enforcement policies. She handles preliminary and full trademark clearance, drafting and negotiating license, settlement, and coexistence agreements, and enforcing and protecting trademark and trade dress rights. Ms. Santori regularly advises on a wide range of trademark matters including licensing, proper trademark use and notice, brand and trademark expansion strategy, joint trademark ownership, brand guidelines, strategies to exploit intellectual property rights, trademark use in social media, and website, search engine, and domain name issues. Ms. Santori also has expertise in publicity rights, celebrity branding, promotional and advertising issues, copyright, trade dress, search engine management and intellectual property related due diligence.

    Prior to joining Frankfurt Kurnit, Ms. Santori was an associate with Wilson Elser Moskowitz Edelman & Dicker in the Intellectual Property practice group, and was also affiliated with Beigelman, Feiner & Feldman, PC and Lincoln Center for the Performing Arts.

    She is a member of the New York City Bar (Trademarks and Unfair Competition Committee), INTA (selected for the Brands and Innovation Committee), the New York State Bar, and the Copyright Society. Ms. Santori is admitted to practice in New York state courts and federal courts in the Southern and Eastern Districts of New York.


    Kristina D’Angelo

    Kristina D’Angelo is a law clerk in the Trademark & Brand Management Group.

    Ms. D’Angelo focuses on all aspects of domestic and international brand building and brand protection. She assists with preliminary and full trademark clearances, as well as enforcing and protecting trademark rights. She works with clients in a broad range of industries, including the sports, fitness, entertainment, and food and beverage industries.

    Prior to joining Frankfurt Kurnit, Ms. D’Angelo served as an intern with the firm’s Trademark & Brand Management Group where she handled a variety of trademark matters. While in law school, Ms. D’Angelo interned with the trademark group of Ladas & Parry LLP and served as a judicial intern to the Honorable Debra Freeman of the United States District Court for the Southern District of New York. She also served as the Vice President of the Appellate Division of the Moot Court Honor Society and participated in the International Trademark Association’s Saul Lefkowitz Moot Court Competition as both a competitor and a coach.

    Ms. D’Angelo is a member of the International Trademark Association (“INTA”) and will serve on INTA’s Non-Traditional Marks Committee during the 2022-2023 term.