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Ethical Issues in Trademark Practice

Level: Advanced
Runtime: 93 minutes
Recorded Date: June 05, 2018
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  • Applicable Ethical rules
  • Trademark Searching
  • Conflicts
  • Ethical Issues in Trademark Prosecution and Post-Registration
  • Withdrawal of Representation 
  • Fraudulent Filings
  • Trademark Bullying
  • Pre-Filing Considerations
  • Good Faith Reliance on Advice of Counsel
  • Trademark Investigations
  • Negotiations
  • Due Diligence
  • International Billing
  • Ethical Hypotheticals
Runtime: 1 hour and 33 minutes
Recorded: June 5th, 2018


Back by popular demand, from the 2018 IPL Spring Conference, this highly rated program features a panel of experienced trademark IP practitioners as they explore ethical issues arising from pre-suit investigations and other types of pre-filing searches in trademark representations.

What due diligence should you undertake—even if your client has declined to authorize any trademark searches—before filing a new trademark application or sending a cease and desist letter? What happens if you find a blocking registration when the client did not authorize a search? Take this program to hear our faculty discuss these and other thorny issues that may arise in trademark investigations.

This program was recorded on June 5th, 2018.

Provided By

American Bar Association
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Tamar Niv Bessinger

Fross Zelnick Fehrman & Zissu, P.C.

As Counsel at Fross Zelnick, Tamar’s practice focuses on U.S. trademark searching, filing, and enforcement, with a sophisticated understanding of strategic issues in worldwide portfolios. Tamar advises clients on trademark clearance and avoiding conflicts, while providing creative and cost-effective solutions. In addition to prosecuting more than 900 trademark applications, Tamar drafts and advises on license agreements, acquisition agreements, coexistence agreements, and contract manufacturing agreements. She has particular experience with clients in the fields of personal care products, beauty, jewelry, fashion and merchandise, including luxury brands. Tamar also works with communications and entertainment companies, and advises on social media and copyright issues. Tamar has been a speaker at trademark industry events and writes articles on topics including trademark search strategies and ethics issues in trademark law.

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Nancy Frandsen


For more than 30 years, Nancy has guided clients not only through the core areas of trademark and copyright strategic counseling and portfolio management, but also through the more complex areas of the practice, including enforcement before the federal courts and the Trademark Trial and Appeal Board (TTAB). Nancy's in-depth knowledge of her clients' businesses, from individual entrepreneurs to major corporations, enables her to support and advance their unique objectives and goals. This has led Nancy to be ranked for more than 10 years by Chambers USA as a "Leading Lawyer" in Intellectual Property Law, where she has been described as "'tough, experienced leader" (Chambers USA 2015).

Nancy is an adjunct professor at Villanova University Charles Widger School of Law and Temple University Beasley School of Law, where she teaches trademark practice. She is the co-author of What the General Practitioner Should Know About Trademarks and Copyrights (6th ed.), published by ALI-ABA. Nancy is the course planner of the Pennsylvania Bar Institute's annual IP Institute, a two-day seminar on the hottest topics in IP law, which she has planned and co-chaired since its inception in 2007.

Nancy received her JD, cum laude at Temple University Beasley School of Law in 1986.

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Dyan Finguerra-Ducharme

Pryor Cashman

Partner Dyan Finguerra-DuCharme is a member of Pryor Cashman’s Intellectual Property, Litigation and Media Entertainment Groups, where she provides hands-on, end-to-end service to a diverse roster of clients.

With more than 20 years of experience litigating and advising on complex IP matters, Dyan has earned the reputation of the go-to lawyer for trademark, trade dress, false advertising, patent and copyright disputes.

Companies ranging from small Bitcoin startups to multi-national corporations and celebrities seek out Dyan to navigate their most critical legal challenges. She has particular expertise securing and enforcing the intellectual property of global brands, and represents one of the world’s leading luxury jewelry and watch groups, one of the top-grossing international cosmetics companies, a premier car and power equipment manufacturer and a national financial services firm, among many others.

Dyan manages large-scale trademark vigilance programs, prosecutes trademarks on a global basis and provides opinions on the availability of trademarks in the U.S. She routinely litigates trademark and unfair competition cases in federal and state courts and before foreign tribunals. Dyan also actively pursues and defends contested matters before the Trademark Trial and Appeal Board (TTAB), where she has obtained dozens of wins for clients, some after full trial and many on successful summary judgment or dismissal motions early in the case. Active in industry associations, Dyan is the attorney of record on numerous amicus briefs submitted to the U.S. Supreme Court on behalf of the New York Intellectual Property Law Association.

Dyan received her JD from Brooklyn Law School in 1996.

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