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Program Description

Ethics for the Trademark Practitioner




Approved for CLE credit in: AK,AZ,CA,FL,ME,ND,NJ,NY,WV

This program will focus on ethical issues common to trademark and unfair competition law practitioners. A panel of experts will examine issues such as proper behavior during investigations and protecting privileged information when interacting with third parties and in-house clients.

Provided By: New York City Bar


I. Introduction 0:00 - 0:10
Jessica S. Parise

II. The Attorney-Investigator Relationship: Ethical Issues and Practical Tips 0:10 - 0:50
Mark N. Mutterperl & Robert Jackson

III. Ethical Pitfalls to Avoid in Counterfeiting Actions 0:50 - 1:15
James Swire

IV. Ethical Pitfalls Arising from Practice Before the Patent and Trademark Office 1:15 - 1:40
Dana R. Metes

V. Companies, Advertising Agencies and all the Lawyers Protecting Confidentiality and Attorney-Client Privilege 1:40 - 2:00
Amanda C. Samuel

This program was recorded 03/27/2008
Running Time: 1 Hour 56 Minutes

CLE Credit Information

Click on the state abbreviation to find the CLE Credit Information for your state.

This program is has been approved for credit in AK,AZ,CA,FL,ME,ND,NJ,NY,WV

Experienced attorneys only (non-transitional)

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Panelist Biographies

James B.Swire

Arnold & Porter LLP

James B. Swire is a partner in the Intellectual Property Group of Arnold & Porter LLP, based in its New York office. He is a graduate of Princeton University and the Harvard Law School. Mr. Swire is a past Chair of the Committee on Trademarks and Unfair Competition of the City Bar Association as well as of its Committee on Medicine and the Law. He also served as a member of the Committee on Professional Responsibility. He specializes in trademark and unfair competition litigation, including false advertising, and has brought cases in federal courts in numerous jurisdictions around the nation. He was lead trial counsel to Institute Pasteur in its action against the United States concerning the discovery of the AIDS virus and patenting of blood detection labs therefore. He is currently lead counsel for Tiffany in its pending action against eBay, Inc. regarding the sale of counterfeit Tiffany merchandise on eBay. Mr. Swire is admitted to practice in the State of New York and District of Columbia and in the United States Courts of Appeal for the Second, Third, Sixth, Seventh, Ninth and Federal Circuits and in the United States District Courts for the Southern, Eastern and Western Districts of New York.

Jessica S.Parise

Senior Associate
Fulbright & Jaworski LLP

Jessica S. Parise is a senior associate in the New York office of Fulbright & Jaworski LLP, an international law firm. Ms. Parise litigates all types of trademark, trade dress and unfair competition cases and in particular enforces trademark rights against infringement, dilution and counterfeiting. Ms. Parise¿s practice also includes all other aspects of trademark law, including portfolio management, counseling clients on the selection and use of trademarks, prosecution and defense of proceedings before the United States Patent and Trademark Office, conducting due diligence and drafting license and assignment agreements in connection with corporate transactions. Ms. Parise is currently the secretary of the New York City Bar Association¿s Committee on Trademarks and Unfair Competition. She is also a member of the New York City Bar Association¿s Joint Subcommittee on Women in Intellectual Property.

Mark N.Mutterperl

Fulbright & Jaworski LLP

Mark N. Mutterperl is a partner in the New York office of Fulbright & Jaworski L.L.P., an international law firm. Mr. Mutterperl litigates all types of trademark, trade dress and unfair competition cases and, in particular, enforces trademark rights against infringement, dilution and counterfeiting. His practice also includes all other aspects of trademark law such as portfolio management. Mr. Mutterperl has served as Council Member for the ABA¿s Intellectual Property Section and currently chairs INTA¿s North American Anticounterfeiting and Enforcement Subcommittee. Mr. Mutterperl, a former senior attorney with the U.S. Department of Justice and Special Assistant U.S. Attorney, has litigated cases throughout the United States including dozens of cases in the United States Courts of Appeal. Among recent matters, Mr. Mutterperl achieved favorable results from the Second and Fifth Circuits in cases for a leading coffee company, successfully handled cases in different jurisdictions for major consumer products companies involving well known products against private label manufacturers, and resolved favorably counterfeiting cases involving famous brands in cases from New York to California.

Dana R.Metes

LeBoeuf, Lamb, Greene & MacRae LLP

Dana Metes is an associate in the Information Technology and Intellectual Property group at LeBoeuf, Lamb, Greene & MacRae LLP in New York. Ms. Metes has extensive experience helping clients in a wide variety of industries obtain, protect, and enforce trademark, copyright, and other intellectual property rights. She counsels clients on the selection, registration and maintenance of trademark registrations in the U.S. and internationally, and assists clients in the evaluation, prosecution, and defense of proceedings before the United States Patent and Trademark Office. Her experience includes internet enforcement of trademark and copyrights, including monitoring web site content, domain name registrations, and addressing the problem of cybersquatting. She also advises clients in securing and enforcing copyrights in a variety of mediums. Ms. Metes has wide experience in all areas of trademark, copyright and patent litigation, including discovery, motion practice, and trial preparation. She also assists clients in resolving intellectual property disputes, including negotiating, drafting, and implementing coexistence and settlement agreements. In addition, Ms. Metes conducts copyright and trademark due diligence and drafts services, license and assignment agreements in connection with large corporate transactions. Prior to joining LeBoeuf, Lamb, Ms. Metes was an associate at Amster, Rothstein & Ebenstein in New York. She has also worked in the publishing and special events industries.


Jackson Robert & Associates Inc.

Robert Jackson has been a private investigator in Manhattan for over 25 years, the last 13-½ years of which as owner of his company, Robert Jackson And Associates, Inc. "RJA" is a full service investigative firm handling all kinds of investigations, however, for a number of years the vast majority of its caseload has been related to Intellectual Property Investigations. Its clients include some of the largest law firms and corporate legal departments in the country representing a large roster of famous brands.

Amanda C.Samuel

Trademark and Copyright Attorney
Colgate-Palmolive Company

Amanda Samuel is a Trademark and Copyright Attorney with Colgate-Palmolive Company. Ms. Samuel is responsible for all worldwide intellectual property matters on behalf of Colgate Palmolive Company related to her designated product categories. This includes trademark clearance, prosecutions, infringement actions, counterfeit prosecution, divestitures and customs issues. She also handles global licensing agreements with third parties, such as Warner Bros., Nickelodeon, Mattel and MGA Entertainment. She is responsible for management of intercompany intellectual property licenses and has worked on several divestitures of Colgate brands. She manages internet and domain names conflicts for the company. Finally, she handles copyright related issues within her designated product categories. Ms. Samuel is a graduate of Princeton University and Georgetown University Law Center. Before joining Colgate, she was an Associate in the Trade Practices and Regulatory Law Group of Weil Gotshal & Manges. Her practice at Weil included antitrust litigation and music licensing litigation, in addition to litigation and corporate matters relating to intellectual property.

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Ethics for the Trademark Practitioner



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