Getting Your Staff to Use Trademarks Properly and Effectively

June 2013

Abstract

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.

Authors

Liz Bui

Vice President and Intellectual Property Counsel, ViaCyte Inc, USA

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.

April Wurster

Patent Attorney, ViaCyte Inc, USA

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.

Gabrielle Holley

Shareholder and Patent Attorney, Holley and Menker, USA

Gabrielle Holley Esq. is a shareholder at Holley and Menker where she focuses on trademark and copyright prosecution and protection (http://www.holleymenker.com). Her practice includes counseling clients in all types of industries on the selection, availability, protection and enforcement of trademarks; clearing, securing and maintaining trademark and copyright registrations both in the United States and abroad; trademark policing, including opposition and cancellation proceedings before the Trademark Trial and Appeal Board; and the negotiation and settlement of disputed trademark, unfair competition and copyright matters. She has assisted several different companies with large global portfolio acquisitions and assignments, both in due diligence, strategy and compliance with local recordation requirements.

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Joanna Brougher

Owner & Principal, BioPharma Law Group PLLC, USA

Tom Irving

Partner, Marbury Law Group, USA

Stacy Lewis

Law Clerk, Finnegan, USA

Mark Feldstein

Partner, Finnegan, USA

Adriana Burgy

Finnegan, USA

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Associate VP - Assistant General Patent Counsel , Eli Lilly and Company, USA

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Assistant Legal Counsel, Cedars-Sinai Medical Center, USA

Nirdesh Gupta Ph.D.

Director of IP Portfolio Management & Licensing, Cedars-Sinai Medical Center, USA

James Lau

Singapore

Getting Your Staff to Use Trademarks Properly and Effectively

Abstract

Authors

Companies

ViaCyte Inc

ViaCyte Inc

Holley and Menker

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