On Your Marks: Frontline Issues in Trademark and Advertising Law

Monday, April 24, 2017 | 9 am – 5 pm

Includes Networking Luncheon

Program Co-Chairs:

Name Title

Alexandra Nicholson
Davis Wright Tremaine LLP

Susan Progoff Title

Susan Progoff
Dorsey & Whitney LLP








  • 2016 was a year of dramatic developments in technology, world politics and law – with implications for the trademark and advertising worlds.  This program will help trademark and branding lawyers to be “on their marks” and ready for the future, as it explores cutting-edge issues from this year of change, including a review of major court decisions in the trademark field and rulings by the Trademark Trial and Appeal Board during the last year; trademark issues presented by Brexit and protecting trademarks in Cuba; tips for the clearance of advertising on social media and in online apps; proving damages in trademark infringement litigation; ethical issues raised by trademark investigations; and hear an ambassador’s view of challenges in international trade and IP in the Trump administration.

    Live Program: $399 Member/$499 Nonmember

    In-House Counsel: $299 Member/$399 Nonmember
    Small Law Firm Member: $249

  • June Casalmir
    Assistant General Counsel – Marketing & New Media

    Nicole D. D’Amato
    Senior Vice President, Chief IP Counsel
    MacAndrews & Forbes Incorporated

    Joseph V. DeMarco
    DeVore & DeMarco LLP

    Michelle DiGruttolo
    Senior Managing Director
    Ankura Consulting Group, LLC

    Susan Upton Douglass
    Fross Zelnick Lehrman & Zissu P.C.

    Roxanne Elings
    Davis Wright Tremaine LLP.

    Bonnie L. Jarrett
    Kirkland & Ellis LLP

    Ambassador Ronald Kirk
    Former U.S. Trade Representative (USTR) in the Obama Administration
    Currently Senior Of Counsel, Gibson, Dunn & Crutcher

    Zev Parnass
    Vice President, Associate General Counsel
    Publicis Groupe

    Ainslee A. Schreiber
    Former Vice President & Assoc. General Counsel
    Global Trademark Group, Starwood Hotels & Resorts

    Phil Sherrell
    Bird & Bird LLP

    Fara S. Sunderji
    Dorsey & Whitney LLP

    John L. Welch
    Wolf, Greenfield & Sacks, P.C.

    Tony Yarborough
    Vice President
    Robert Jackson And Associates, Inc.

  • 9:00 am – 9:10 am Introduction
    9:10 am – 10:25 am New World, New Marks: Trademark Issues Presented by Brexit and Market Expansion into Cuba

    2016 saw dramatic developments in both Europe and Cuba that are changing the business environment in those countries.  What does Brexit mean for U.S. rights holders, and what should you be doing now to protect your brands in Europe?  On the other side of the Atlantic, how should U.S. trademark holders protect their marks in the fast-changing economy that is Cuba?

    Michelle DiGruttolo, Ainslee A. Schreiber, and Phil Sherrell

    10:25 am – 10:40 am Break
    10:40 am – 11:55 am Digitally Clear:  Tips for Clearance of Advertising on Social Media and Online Apps

    In today’s digital world, social media and mobile apps are becoming increasingly important in consumer marketing.  When is an online posting an advertisement?  What are the applicable rules and the potential penalties for violating them?

    June Casalmir, Nicole D. D’Amato, Zev Parnass, and Fara S. Sunderji

    11:55 am – 12:20 pm An Ambassador’s View:  International Trade and IP Challenges for the Trump Administration

    Ambassador Ronald Kirk
    Former U.S. Trade Representative (USTR) in the Obama Administration
    Currently Senior Of Counsel, Gibson, Dunn & Crutcher

    12:20 pm – 1:45 pm Networking Luncheon
    1:45 pm – 3:00 pm Trademark Battle Roundup:  Annual Review of Leading Trademark Decisions by Federal Courts and the TTAB

    What were the major decisions of 2016 in both at the Trademark Trial and Appeal Board and in the courts? This session will provide a comprehensive summary of the past year’s most important rulings and their impact on rights holders.

    Bonnie L. Jarrett and John L. Welch

    3:00 pm – 3:10 pm Break
    3:10 pm – 4:00 pm Disruptive Strategies to Combat Infringement in Cyberspace

    In today’s connected world, infringers can take advantage of U.S. commerce from outside the United States. This session explores practical and litigation strategies taken within the United States that can disrupt the infringer’s business and bring a return on investment for the rights holder.

    Joseph V. DeMarco and Roxanne Elings

    4:00 pm – 4:50 pm In All Honesty:  How to Navigate Ethical Issues in Trademark Investigations

    Investigating trademarks that potentially block a client’s proposed mark, or investigating a potential adverse party before sending a cease and desist letter or bringing a lawsuit can raise complicated ethical issues.  In this session, a trademark attorney and investigator address the potential ethical pitfalls and ways to avoid them.

    Susan Upton Douglass and Tony Yarborough



  • NY Credit: 7.0 total: 6.0 professional practice & 1.0 ethics

    NJ Credit: 7.0 total: 6.0 general & 1.0 professional responsibility

    CA Credit: 7.0 total: 6.0 general & 1.0 professional responsibility

    PA Credit: 5.5 total: 5.0 general & 0.5 professional responsibility

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    Sponsoring Association Committee:
    Trademarks & Unfair Competition | Alexandra Nicholson, Chair

    Sponsorship Opportunities are Available! Please Contact:
    Maricela Alfonso | malfonso@nycbar.org