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  • Global Portfolio Management on a Budget: In-Housing, Outsourcing or Somewhere in Between?

    Contains 1 Component(s) Recorded On: 05/05/2015

    As in-house counsel responsible for your company’s global trademark portfolio, you have numerous options available when it comes to managing and maintaining this most valuable of company assets. But which way should you go? Having an in-house team to reduce external spending might seem the most cost-effective structure, but what unexpected problems can this lead to? When can an external advisor really assist in achieving your goals without blowing your budget? And how can you demonstrate your value to management when the external agents are the ones doing the real work? If these are issues you face as an in-house practitioner, join this interactive panel discussion, which will draw on the experience of both in-house practitioners and the external advisors who assist in-house teams in delivering excellent portfolio management to their companies. (Intermediate Level)

    Pre-recorded from INTA's 2015 Annual Meeting.

    Covering practical tips on efficient filing practices as well as more nuanced issues such as whether to appoint territory specific agents or one single external agent to manage your portfolio, this session will be of primary interest to in-house counsel and practitioners working within industry, as well as trademark professionals in private practice firms interested in understanding what they can do to better tailor their services to their corporate clients around the world.

    Cameron Olsen (Moderator)

    International Brand Management Ltd. (United Kingdom)

    Tom Heremans

    CMS DeBacker (Belgium)

    Nicole L. Linehan

    Schneider Electric (United States)

    Natalie Salter

    Lane IP Limited (United Kingdom)

  • What Is Parody?

    Contains 1 Component(s) Recorded On: 05/04/2015

    Famous marks are frequently subject to parody. There is a thin line between what is protected by the law as parody and what constitutes infringement. (Advanced Level)

    Pre-recorded from INTA's 2015 Annual Meeting.

    Speakers will take a theoretical look at the law in a variety of jurisdictions to explore when parody may be legitimate fair use and when it is just used as an excuse by infringers.

    Camila Santamaría (Moderator)

    Noemi Parrotta

    Studio Legale SIB (Italy)

    Barbara Quinn

    The Walt Disney Company (United States)

    Sanjiv D. Sarwate

    Dell Inc. (United States)

  • Paving the Way for the Next Generation of Trademark Lawyers in the 21st Century

    Contains 1 Component(s) Recorded On: 05/02/2015

    The days of spending your time cloistered away in a library researching and writing a memo for the file have long passed. Clients are more cost conscious than ever in expecting law firms to provide business-savvy service at the lowest possible price. Law firm partners are under such pressure that they feel like they do not have the time (or incentive) to mentor their associates. How, then, are associates expected to develop an understanding of trademark law in order to serve their firms and eventually advise clients and litigate disputes? Answering this question is essential to ensuring that the next generation of trademark lawyers is as well seasoned as the ones that have come before. (Intermediate Level)

    Pre-recorded from INTA's 2015 Annual Meeting.

    A panel including a law firm partner, a law firm associate and a law firm consultant (or inside counsel) will examine the changing landscape for trademark lawyers and address the following critical issues:

    • How are trademark attorneys hired, and are law school IP programs important?
    • How do trademark attorneys learn the nuts and bolts of substantive trademark law?
    • How do trademark attorneys learn how to prosecute trademarks and handle international work?
    • Does technology make a difference in the way trademark attorneys are trained today?
    • What can trademark attorneys do to ensure the viability of their skills well into the 21st century?
    • What can law firms do to better mentor trademark attorneys and cultivate their legal (and networking) skills?
    • How can organizations like INTA be utilized to help groom the legal (and marketing) skills of the next generation of trademark lawyers?

    Amalia M. Berg (Moderator)

    Goodmans LLP (Canada)

    Tracey Berger

    Spruson & Ferguson (Australia)

    Carrollanne Lindley

    Kilburn & Strode LLP (United Kingdom)

    Devon Sparrow

    Citrix Systems, Inc. (United States)

  • An Insider’s View of the Challenges of Law Firm Management

    Contains 1 Component(s) Recorded On: 05/02/2015

    The business of running a law firm has never been more stressful. In-house counsel are demanding ever-greater efficiencies and price reductions from outside law firms. At the same time, associates and staff are not getting any less expensive and they need to be cultivated to ensure the long-term success of the firm. Professional and ethical obligations to keep up-to-date on legal developments and skills have not changed over time. (Advanced Level)

    Pre-recorded from INTA's 2015 Annual Meeting.

    This session will provide a behind-the-scenes look at the many issues facing law firm management, specifically:

    • How does a firm balance the pricing pressure from inside counsel with the need to maintain a reasonable level of profitability?
    • How does one deal with staffing issues and balance the client relationship with the need to handle administrative and marketing responsibilities?
    • How does one facilitate more knowledge sharing within a firm and foster relationships among colleagues?
    • What technologies are available to make the law firm more efficient?
    • How does a firm mentor and supervise its associates to strengthen their critical legal and business skills?
    • How can staff and paraprofessionals provide more value to the firm?
    • What are best practices in dealing with collections to reduce accounts receivable?
    • Are requests by clients for proposals worth the time and effort to respond?
    • How are firms dealing with issues of reciprocity when it comes to maximizing potential business while advancing client interests in uniform representation?
    • How are firms vetting and handling conflicts of interest: legal vs. business?

    Mark Kachigian (Moderator)

    Johnson & Kachigian (United States)

    Rose Auslander

    Carter, Ledyard & Milburn LLP (United States)

    Marcus Gallie

    Ridout & Maybee LLP (Canada)

    Anthony Tong

    Robin Bridge & John Liu (Hong Kong SAR, China)

  • Reaching Equilibrium: How In-house and Outside Counsel Can Achieve Consensus on Reasonable Legal Fees

    Contains 1 Component(s) Recorded On: 05/02/2015

    In-house counsel are under a constant mandate to continually decrease legal spending and provide certainty in estimating legal expenses for budgeting purposes. At the same time, outside counsel are under unrelenting pressure to keep up with rising costs and make a reasonable profit at year-end. Are these competing forces irreconcilable? (Intermediate Level)

    Pre-recorded from INTA's 2015 Annual Meeting.

    This panel will work together and propose practical solutions to minimize conflict and maximize harmony:

    • What motivates in-house counsel when it comes to managing outside legal counsel fees, and what expectations do in-house counsel have in asking outside counsel for cost estimates (and how should law firms deal with such requests)?
    • What law firm activities are amenable to standard charges (e.g., trademark prosecution), and how should standard charges be conveyed (e.g., standard fee schedule updated annually)?
    • What services should be included as part of the standard charge (e.g., reporting publication and registration, legalizing documents)?
    • What expenses should law firms pass on, and how should they be handled (e.g., billing for copying charges and legal research, marking-up expenses)?
    • How can alternative fees be used, especially in the context of litigation (e.g., contingency fee, blended rate, fixed rate, fee bap, risk collar, holdback, merit bonus)?
    • What are the experiences of outside counsel in dealing with various alternative approaches to billing (i.e., what works and what does not work)?

    Steve Meleen (Moderator)

    Pirkey Barber PLLC (United States)

    Bobby Ghajar

    Pillsbury Winthrop, LLP (United States)

    Mark Holah

    Bird & Bird LLP (United Kingdom)

    Allison McDade

    7-Eleven, Inc. (United States)

    Kristin McNulty

    Intel Corporation (United States)