Guest Speaker Series

Trademark Law: Issues and Applications

A presentation and open panel discussion
September 19, 2007.  8:30-11:30am
The University of Arizona

Presented by:  The Office of the General Counsel and the Business / Law Exchange, a partnership program of the Eller College of Management and the James E. Rogers College of Law

The Office of the General Counsel and the Business / Law Exchange, a partnership program of the Eller College of Management and the James E. Rogers College of Law invite you to Trademark Law Overview and Workshop the morning of September 19, 2007.  Our special guest will be Jennifer Van Kirk, Co-Chair of the Intellectual Property and Technology Practice Group at Lewis and Roca, LLP.  She will provide an overview of trademark law basics. 

The trademark law overview will be followed by a panel discussion that will provide an opportunity for more in-depth discussion of the role of trademarks in business development.  The panelists, who will discuss their experiences dealing with trademark issues, include: Gary Milner (VP Legal & Development, Canyon Ranch), James Francis (UA Associate Athletics Director), Nick Adamakis (Marketing Specialist, UA Student Union), Paul Allvin, (UA Assoc. VP Communications, who formerly oversaw trademark protection for The Make-A-Wish Foundation of America) and Lois Eisenstein (UA Intellectual Property Counsel, and former general counsel of MTV Networks).

Who Should Attend?

This session is open to both the academic and business communities.  If you have any question or trademark issue, you are welcome to attend. Please distribute this notice to your colleagues who may have an interest in attending this event.

Session Details

Location :                   
McClelland Hall, Room 208, 1130 East Helen Street 
Eller College of Management (Parking is available in the Park Avenue Garage, immediately west of McClelland Hall, for a fee.)
 
Schedule:      
8:30:  Check in--Continental breakfast will be available
9:00:  Welcome and introduction by Lois Eisenstein, UA Office of the General Counsel
9:15:  Trademark overview--by Jennifer VanKirk, Lewis and Roca, LLP
10:30:  Panel discussion, followed by Open forum (questions not previously discussed)
11:30:  Concluding comments

Cost to Attend

There is no cost to attend, but RSVPs are appreciated.  Seating is limited to the first 50 confirmed guests.  Please RSVP to entre.rsvp@eller.arizona.edu. Please note in the subject line:  Trademark session. 

Speaker Bios and Trademark Issue Topic

Nick Adamakis, Director of Marketing

The University of Arizona Student Unions

Trademarked Item: IQ Juice, IQ Smoothies, IQ Fresh
Trademark Owner: ABOR
General Market: UA Campus
Trademark Issue: Securing rights for local/regional distribution, weighing cost benefits of going national
Resolution or Outcome of Issue: State registration only
Costs involved: State filing fees, trademark search, legal consulting fees, approximately $5,000
Bio:  Nick Adamakis is the Director of Marketing for the University of Arizona Student Unions, leading the Union's comprehensive marketing plans, strategies, actions, tactics, and brand development. With 18 years of results driven marketing experience, Nick has built an innovative and award winning marketing department-helping the Unions increase revenues by over 40%, generating over $5 million in e-commerce, developing and introducing new brands, and managing the marketing and communications of a four-year, $60 million new Union construction project. Nick's marketing philosophy is to create and direct comprehensive and innovative marketing strategies and programs that enhance brand value, promote growth, cultivate loyalty and exceed customer satisfaction. Nick has an MBA from the University of Arizona (1991) where he graduated Summa Cum Laude.

Paul G. Allvin, Associate Vice President for Communications

Trademark item: Make-A-Wish Foundation®, Make-A-Wish® and organizational logo
Trademark owner: Make-A-Wish Foundation of America

In October 2004 he and his wife, Rhian Evans, returned to the Tucson area after he was named to his current position at the UA. In his first year, he overhauled the institution’s central media relations operation and placed a renewed focus on strategic media placements in key markets, particularly in Maricopa County and in Spanish language media outlets. The father two sons, Austin and Elijah, Allvin also served as the UA’s interim vice president for external relations from January 2006 through April 2007, overseeing the university’s government relations, community relations, corporate relations, media relations, marketing, special events and the UA visitor center.

Lois Peel Eisenstein, J.D.
Intellectual Property Counsel

Trademarked Item: “Nickelodeon” cable network
Trademark Owner:  Viacom International Inc.

Trademarked Item:
Trademark Owner:

Jennifer Van Kirk

Ms. Van Kirk is a partner in and Co-Chair of the firm’s Intellectual Property and Technology Practice Group. Ms. Van Kirk is the only Arizona lawyer featured in the International Bar Association’s Who’s Who Legal – Trademarks. Focusing upon brand protection, Ms. Van Kirk counsels clients on trademark clearance, prosecution and licensing matters. With a network of agents in over 100 countries, she helps clients secure and protect trademark rights in the U.S. and around the world. Ms. Van Kirk manages the policing programs of several prominent clients including one of the world’s top spas, a federal government agency and a major airline. She has also coordinated anti-counterfeiting programs in the Far East. She has extensive experience with advertising and promotions, and copyright issues generally and in the online context. Ms. Van Kirk has litigated cases involving trademark infringement and dilution, copyright infringement, domain name disputes, trade secret misappropriation, false advertising and violations of restrictive covenants. For example, she was the co-author of the motion for summary judgment granted by the court in Zipee v. United States Postal Service, 140 F. Supp. 2d 1084 (D. Or. 2000) (POSTAL SERVICE is a protectible trademark and registration of postal-service.com constituted infringement and cybersquatting). Ms. Van Kirk has also secured preliminary injunctive relief for clients, both in the infringement context and to preserve evidence. Ms. Van Kirk formerly practiced with Kirkland & Ellis’s Intellectual Property Group in Chicago, Illinois.

Representative Matters

• Create and implement trademark policing program for world famous spa
• Coordinate anti-counterfeiting efforts for electronic manufacturer
• Draft and assist implementation of intellectual property policies for software company

• Clear rights and obtain federal and foreign registrations for federal government agency
• Defend against accusations of infringement
• Negotiate and draft licenses for use of trademarks, copyrights and publicity rights

Professional Activities:  Ms. Van Kirk is active in the International Trademark Association, currently serves on its Internet Resources committee and formerly served as the a subcommittee chair for the Bulletin from 2003 – 2005. She is also a member of the Arizona Women’s Lawyer Association. Ms. Van Kirk is a former co-chair of the Arizona State Bar Committee for State Trademark Law Reform.   Ms. Van Kirk has lectured on intellectual property issues in various contexts including at International Trademark Association and Licensing Executive Society meetings, state bar sponsored CLEs and law school courses. She is a contributing author for the American Health Lawyer Association’s Health Information and Technology Practice Guide (2003) and has authored articles for The National Law Journal, Arizona Attorney and The Corporate Counsel regarding intellectual property issues. While in law school, she was a member of the University of Illinois Law Review (1994-96).

Community Activities: Ms. Van Kirk is a member of the Board of Trustees for Childsplay, Inc. She is also a member of the National Association of Women Business Owners.

Publications

• "Internet Sweepstakes, Contests and Games," Bloomberg Law Reports-Intellectual Property, July 2007.
• "Supreme Court to Hear Fair Use Case," Thomson & Thomson's Client Times, August 2004.
• "Will Mickey Ever Die? The Supreme Court Upholds the Copyright Term Extension Act," Arizona Attorney, October 2003.
• "The Madrid Protocol and Latin America," INTA Bulletin, August 15, 2003.
• "Websites Not Subject to Lanham Act," INTA Bulletin, July 1, 2003.
• "Domain Name Disables Under ACPA," INTA Bulletin, June 1, 2003.
• "U.S. Supreme Court Requires Actual Dilution in Recent Federal Claim," INTA Bulletin, April 1, 2003.
• "Free Speech Defeats Barbie Claim," INTA Bulletin, March 1, 2003.
• "ACPA's In Rem Jurisdiction Limited to Home District of Registrar," INTA Bulletin, January 1, 2003.
• "Tootsie, Barbie and Publicity Rights," The Corporate Counselor, Fall 2002.
• "FTC Shuts Down Cybersquatter," INTA Bulletin, August 1, 2002.
• "Charities Struggle to Protect Marks," INTA Bulletin, May 15, 2002.
• "The TTAB and Dilution," INTA Bulletin, February 15, 2002.
• "USPTO Amends U.S. Trademark Classification System," INTA Bulletin, November 1, 2001.
• "Goldfish Cracker Case Upholds Emerging Claim," The National Law Journal, October 1999.

Court Admissions: Ms. Van Kirk is admitted to practice in the United States Court of Appeals for the Seventh Circuit, the United States District Court for the District of Arizona, the Northern District of Illinois, Central District of Illinois and the District of Colorado.

Special Recognitions: In 2004, Ms. Van Kirk was featured in the "Forty Under 40" section of the Phoenix Business Journal. Ms. Van Kirk is rated by Martindale-Hubbell as a "Preeminent Attorney."
Bar Affiliations: Ms. Van Kirk is a member of the Arizona and Illinois State Bars.

 
For further information, please contact us.