Cost-Saving Secrets to Streamlining Complex Patent and Trademark Litigation
In situations in which patent and trademark claims are made simultaneously, cost management is critical. Having a well-oiled team at a single firm with experience coordinating your case, and who can handle all legal issues raised, positions your company to save time and money. Time can be best utilized, and costs can be saved through one or more of the following:
- Joint analysis of jurisdictional and venue issues, in particular, the impact of patent venue rules on the trademark claims
- Early coordination of common issues, defenses, and counterclaims arising in patent and trademark cases; the first sale date and offer for sale are critical dates in both cases, for example
- Early decision-making on whether and when to file an Inter Partes Review when trademark claims would remain
- Balancing the case schedule, when to go through the Markman proceedings but needing to conduct pilot surveys on trademark issues such as secondary meaning, the likelihood of confusion, and genericism
- Strategically seeking and combining discovery and interrogatory requests, requests for admission, and depositions (watch your discovery definitions to avoid overly narrow or overly broad requests)
- Considering unorthodox sequencing of discovery, such as deposing third party inventor or chief marketing officer who may have more information than the CEO
- Making dispositive motions to include both patent and trademark claims – how to make effective points while presenting complex legal topics in one paper
- Identifying multi-skilled experts or expert teams that can handle patent and trademark concerns (e.g., commercial success, non-obviousness, damages)
- Combatting willful patent/trademark infringement allegations when a client is accused of copying both and the impact that has on a jury/judge
- Coordinating your patent and trademark trial to be understandable to the jury and not lose the court, effective use of opening and closing statements
When: Wednesday, December 16, 2020
9:00 – 10:00 a.m.
This course has been approved for 1.2 Continuing Legal Education (CLE) credits in New Jersey. We have provisional approval for CLE credit in Pennsylvania, however the number of total credits and final approval are still pending. Attorneys seeking CLE credit in New York may apply for credit by submitting a request for credit using a New Jersey CLE certificate.
About Jeanne Hamburg
Jeanne concentrates her practice in all aspects of copyright and trademark law, both in litigation and in the transactional area. Resident in the New York City office, she assists clients in the food, beverage, and restaurant industries with their IP needs. In each year since 2009, Jeanne has been recognized in New York Super Lawyers® for Intellectual Property and Intellectual Property Litigation. Only 5% of New York attorneys are given this honor. Additionally, Jeanne is ranked in the 2019 World Trademark Review 1000 – The World’s Leading Trademark Professionals, which lists the top 1,000 trademark attorneys in 70 jurisdictions globally. Among a group of fewer than 90 trademark professionals in New York, she was named a top trademark attorney in the areas of enforcement and litigation.
Jeanne litigates copyright, trademark, and cybersquatting cases through trial and, if necessary, appeal. To this end, she has acted as national counsel in federal courts across the country to bring and defend infringement claims for clients, both foreign and domestic. Additionally, Jeanne has recovered domain names for clients in many Uniform Domain Name Dispute Resolution Proceedings and prosecuted and defended numerous opposition and cancellation proceedings and ex parte appeals in the Trademark Trial and Appeal Board. She recently litigated through appeal to the Federal Circuit a food trademark case that has been described as generating one of the most important trademark decisions in 2018.
In the transactional area, Jeanne counsels clients on the intellectual property aspects of mergers and acquisitions. She is experienced in copyright and trademark clearance, prosecution, and enforcement, and has particular expertise with contentious and transactional issues arising from the Internet.
As a co-author of the firm’s trademark, copyright, and unfair competition law blog, More Than Your MaⓇk™, Jeanne is a frequent writer and speaker on intellectual property topics and is active in many trade groups in industries whose clients she serves. Additionally, she is a member of the New York State Restaurant Association, the Specialty Food Association, and the International Trademark Association (INTA), currently serving on its Leadership Development Committee. Jeanne formerly served on the Government Officials Training Committee, was nominated and served as Chair of INTA’s Law Firm Committee, and was selected as a speaker for INTA’s Trademark Basics “Maintaining the Perfect Partnership” seminar held in New York for inside and outside counsel.