Getting Your Staff to Use Trademarks Properly and Effectively

Gabrielle Holley Esq., Shareholder, Holley and Menker, USA
April Wurster Esq., Patent Attorney, ViaCyte
Liz Bui PhD, Esq., Vice President and Intellectual Property Counsel, ViaCyte

Once a trademark registration is obtained from the United States (US) Patent and Trademark Office (PTO), it is important to continue to properly use the trademark and provide notice that the mark is registered. However, marketing departments, scientists and others who actually use the mark in commerce are not often aware of the use and notice requirements or how to satisfy those requirements. This article provides some real world examples of how and where entities fail to comply with the use and notice requirements, how that failure can relate to likelihood of confusion, and offers suggestions and a practical “To Do List” to help ensure consistent and proper trademark use.

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USA Intellectual Property Healthcare June 2013 Vol. 6, No. 23, Spring 2013

Gabrielle Holley

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Prior to forming her current firm in 2007, she worked at a major international law firm for ten years, doing the same type of work.

April Wurster

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April Wurster Esq., joined ViaCyte in 2011 and serves as Patent Attorney. April Wurster routinely works on intellectual property protection and enforcement involving patents and trademarks. Prior to joining ViaCyte, Ms. Wurster was with the law firm of Baker and McKenzie where she helped clients establish and maintain patent and trademark portfolios, and assists in the drafting and negotiations of licenses and assignments. Ms. Wurster has broad experience with intellectual property litigation in California and Texas. She has also conducted interferences with the Board of Patent Appeals and Interferences, as well as investigations with the International Trade Commission. Ms. Wurster holds a M.S. and B.S in biochemistry and cell biology from the University of California, San Diego. She received her J.D. from UC Hastings College of the Law.

Liz Bui

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Liz Bui PhD, Esq. joined ViaCyte in 2007 and serves as Vice President and Intellectual Property Counsel. In addition to overseeing all matters related to intellectual property, Dr. Bui is instrumental in the execution of corporate partnerships, licensing contracts, and other key business alliances. Prior to joining ViaCyte, Dr. Bui was with the law firm of DLA Piper, in the Global Life Science Sector, where she focused on IP asset management and protection strategies. She began her law career as a technology specialist at the firm of Oppenheimer, Wolff & Donnelly. Dr. Bui holds a Ph.D. in cell and molecular biology from the University of California, Los Angeles and was a National Institutes of Health postdoctoral fellow at the University of California, Irvine where her research focused on the biochemistry of Alzheimer’s disease. She received her J.D. from Pepperdine University School of Law in Malibu, California. Dr. Bui also sits on the Board of the Toussaint Academy of San Diego a member of Father Joe's Villages. Dr. Bui is fluent in Vietnamese.

ViaCyte

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ViaCyte, Inc., a leader in the emerging field of regenerative medicine, is a private, venture-capital backed company headquartered in San Diego, California focused on profoundly improving the way patients with diabetes are treated.

Holley & Menker, P.A.

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USA Intellectual Property Healthcare June 2013 Vol. 6, No. 23, Spring 2013