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  • Description
    The acquisition, protection and licensing of trademarks rights, whether for new products or ventures, is an essential element in any business venture. This CLE course, presented by Frankfurt Kurnit’s Catherine M.C. Farrelly and Donna A. Tobin will explain trademark essentials such as how to obtain a trademark, enforcements to prevent loss of rights including issues of “genericide”, infringement monitoring, benefits, corporate transactions, license drafting, international licenses, recent decisions on disparaging marks and relevant case law.
  • Instructor Bio

    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.

    Donna Tobin

    Donna A. Tobin co-chairs the Trademark & Brand Management Group and is a member of the Litigation Group. An Internationally recognized IP practitioner, Ms. Tobin was recently included in World Trademark Review’s list of The World’s Leading Trademark Professionals (2017). She also regularly appears in Best Lawyers’ and Super Lawyers’ lists of the top IP lawyers.

    Ms. Tobin represents established and emerging companies worldwide in a variety of consumer products and services industries -- including fashion, jewelry, specialty foods, beverages, and home furnishings. She also represents well-known media, entertainment and sports entities.

    A trusted advisor for more than 30 years, Ms. Tobin regularly counsels clients of all sizes on business strategy, and on how best to obtain, protect, enforce and monetize their trademarks, copyrights, trade secrets and patents. Ms. Tobin advises on complex areas of trademark and related laws, including in the areas of geographical indications, trade dress and designs. She promptly renders trademark search and clearance opinions, effectively counsels on trademark portfolio management and monetization, and successfully handles oppositions and cancellations before the Trademark Trial and Appeal Board. She has an extensive intellectual property licensing practice, and advises clients on international as well as domestic filing strategies. Ms. Tobin is an experienced IP litigator, helping her clients enforce their rights and defend against unfounded infringement allegations. All of her clients benefit from her deep knowledge of their industries and responsiveness to their concerns.

    Ms. Tobin is a member of the International Trademark Association (INTA) and a contributing member of the INTA Bulletin. She is also a member of the Federal Bar Council, Intellectual Property Section, and the New York State Bar Association, Section on Women in IP.

    Ms. Tobin is a board member of Nomi Network, a group providing support for survivors of human trafficking, and a legal advisor to Women Across Frontiers, a magazine focusing on gender equality.

    She is admitted to practice in New York State Courts; in the United States Courts of Appeals for the Second, Ninth and Federal Circuits; and in the United States District Courts for the Southern and Eastern Districts of New York.

    Prior to joining Frankfurt Kurnit, Ms. Tobin was a partner with Baker Hostetler.