Trademark Enforcement Tactics: Strategies for Business Success

Paul W, Reidl | DP&F Law

Paul Reidl has been practicing law for 45 years, representing clients in trademark matters in both the United States and overseas. He is a frequent litigator before Federal courts and the Trademark Trial and Appeal Board. He has also been retained as an expert witness on numerous occasions.

Paul joined the Intellectual Property group of Dickenson, Peatman & Fogarty as Of Counsel in February 2022. He had a very diverse career before that: thirteen years of solo practice; Associate General Counsel with the largest wine company in the world, E. & J. Gallo Winery, where he was responsible for their global intellectual property program; and ten years as a litigator with Crowell & Moring in Washington, D.C.

Paul is a frequent speaker and writer on trademark and wine issues, having published or spoken nearly seventy times in his career. He has been a guest lecturer on trademark law at George Washington University (“GWU”) and has conducted training sessions for USPTO Examining Attorneys.

Paul is a member of the Trademark Committee of the Biodynamic Federation of Demeter International and the Board of Directors of the United States chapter of the International Wine Lawyers’ Association (AIDV). He served in the leadership of the International Trademark Association (INTA) for many years and was its President in 2006.

Paul received his B.A. (in political science and speech communication, with a minor in theology) in 1977 and a J.D. in 1980 from GWU where he was a member of Phi Beta Kappa and the Law Review. While in law school, he taught Speech Communication at GWU for three years.

R. David Donoghue | Holland & Knight

R. David Donoghue is an established intellectual property (IP) trial attorney with jury trial success and a strong track record across district courts, the U.S. Court of Appeals for the Federal Circuit and at the Patent Trial and Appeal Board (PTAB). He serves as the leader of Holland & Knight’s National Intellectual Property Group and is based in the firm’s Chicago office.

Mr. Donoghue advises clients from major corporations and midsize businesses on technology disputes such as patent, trade secret, trademark, copyright and the Computer Fraud and Abuse Act (CFAA). Mr. Donoghue has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2014. A recent publication describes him as “A practical lawyer who gets right to the heart of any matter, David Donoghue really understands the most technical aspects of patent law. He is also great at figuring out how to win cases without spending a shedload of his clients’ money.” He provides strong leadership to Holland & Knight’s national IP group.

Whether he is asserting his client’s IP, defending against competitors or fending off Non-Practicing Entities (NPE), Mr. Donoghue blends his deep litigation experience with practical business insight garnered from his in-house experience. As a founding member of Aptiv’s (f/k/a Delphi) Technology Licensing and Litigation Group, he handled substantial international IP litigation and licensing matters.

In addition to his legal practice, Mr. Donoghue has served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research, writing and IP courses. At the beginning of his legal career, he served as a law clerk to the Honorable Gordon J. Quist, federal district judge for the U.S. District Court for the Western District of Michigan.

Mr. Donoghue is also the founder and principle author of the Chicago IP Litigation and Retail Patent Litigation blogs.

Session I – Risk management and brand strategy | 1:00pm – 2:00pm

• Risk management strategies for the trademark portfolio
• Key trademark litigation trends from recent federal court decisions
• Impact of evolving case law on risk management
• Practical application of fair use, parody, and descriptive term defenses
• How businesses can lawfully capitalize on weakened or genericized  marks

Break | 2:00pm – 2:10pm

Session II – The art of enforcement: Practical playbooks for trademark protection | 2:10pm – 3:10pm

• Trademark enforcement tactics that work
• Litigation decision-making
• Building the enforcement case
• Litigation-proofing your brand
• Private resolution vs. public litigation