Published Works

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"Ethics in the Trademark Arena," INTA Trademark Administration 2016

INTA member may view the entire chapter here.

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Trademark Trial and Appeal Board: In Unusual Circumstances, TTAB Rejects A Coexistence Agreement (Consent to Registration)

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Fourth Circuit Court of Appeals: Foreign Owner Without Use or Registration in United States May Bring Unfair Competition, False Advertising, and Cancellation Actions

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USPTO: Proving Use Of A Trademark In The United States Patent And Trademark Office

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From Disparagement to Fame and Other Key Developments in U.S. Trademark Law

This article appeared in the 2016 edition of The International Comparative Legal Guide to: Trade Marks; published by...

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From Disparagement to Fame and Other Key Developments in U.S. Trademark Law

This article appeared in the 2016 edition of The International Comparative Legal Guide to: Trade Marks; published by...

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Ninth Circuit Court of Appeals: Actor May Not Enjoin Film Under Copyright Law - Performance Not Copyrightable

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Design Patents Valuable in Protecting Product Trade Dress

Mondaq...

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TTAB Incorrectly Evaluated Alleged Genericness of Pretzel Crisps Mark

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Erica Gould featured in the June, 2015 issue of Managing Intellectual Property

Erica Gould writes about trademark piracy in Cuba in June, 2015 MIP.

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Ninth Circuit Court of Appeals: Use of Deceased Celebrity's Image On T-Shirts Constitutes False Endorsement Under Lanham Act

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U.S. Chapter to The International Comparative Legal Guide to Trademarks 2015

This article appeared in the 2015 edition of The International Comparative Legal Guide to: Trade Marks; published by...

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Supreme Court Rules on TTAB Preclusion

David Donahue and Jason Jones explain the recent U.S. Supreme Court's ruling in B&B Hardware, Inc. v Hargis Industries, Inc. in the...

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First Successful Fraud Case in Five Years at U.S. Trademark Trial and Appeal Board

Mondaq...

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Trademark Tacking is Factual Question for Juries Says U.S. Supreme Court

Mondaq...

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Co-Existence Outside of U.S. May Be Relevant to Obtaining Permanent Injunction in U.S.

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Protection of Celebrity Images in the U.K. - Rihanna Decision Affirmed By Court of Appeal

Mondaq...

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David Donahue contributes the U.S. chapter to The International Comparative Legal Guide: Copyright 2015

David Donahue contributed the United States chapter to The International Comparative Legal Guide: Copyright 2015. The chapter provides an...

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Apple Able to Register EU Trademark in Store Layout

Mondaq, October 9, 2014....

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The Sherlock Holmes Copyright Case

Mondaq, October 9, 2014.

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False Advertising: No FDA Preemption in Pom v. Coca-Cola

Mondaq...

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Pretzel Crisps Found Generic and Unregistrable

Mondaq, August 5, 2014.

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International Trademark Dilution

Author, Russian Federation Chapter for the 2012 and subsequent editions (Thomson West, 2012-2015) of International Trademark Dilution (ed., Daniel...

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Small uses, big rewards.

Managing IP June 2011, also published online in...

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Look Before You Leap Into Naming Rights Agreements, Managing Intellectual Property, October 2009

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Trade Mark Warranties in M & A Transactions

This article was published in The Journal of IP Law & Practice, August 2008, and in Wall Street Lawyer, October 2007

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International Protection of Well-Known Marks

This article was first published in 'The International Who's Who of Trademark Lawyers 2006'. For more information please see...

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Filings Under the Madrid Protocol

Presented at the 22nd Annual American Bar Association Intellectual Property Law Conference

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Roger L. Zissu Reviews "Patry on Copyright," by William F. Patry

This article is reprinted with permission from the April 11, 2007 issue of New York Law Journal. © 2007 ALM Properties Inc. Further...

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New Russian IP Law Has Serious Deficiencies for Trademark Owners

Reprinted with permission from INTA Bulletin, Vol. 62, No. 2, (January 15, 2007)

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Copyright Luncheon Circle: The Interplay of Copyright and Trademark Law in the Protection of Character Rights With Observations on Dastar v. Twentieth Century Fox Film Corp.

Journal of the Copyright Society of the U.S.A., Winter 2004

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Domain Name Disputes: New Developments and Open Issues

91 The Trademark Reporter 833 (July-August 2001)

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Trademark Prosecution

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Navigating Trademark Trial & Appeal Board Practice 2003

PLI 2003

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Twenty Questions Copyright Tips and Traps...Don't Trust Your Intuition

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The Madrid Protocol - Advising Foreigners on Extending International Registrations to the U.S.

June 2003, Practicing Law Institute

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Do I Need A License To Make This Toy?

Playthings, February 2006

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Brain Drain: Intellectual Property and How To Protect It

Interview on Meetings Radio, Event Talk With Beth Shubert, May 2005

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Trademark Opinion Basics

AIPLA 2005 Spring Meeting

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Do Not be Afraid to Search

Managing Intellectual Property, April 2005

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Funny is Fair: The Case for According Increased Value to Humor in Copyright Fair Use Analysis

Benjamin Kaplan Et Al., An Unhurried View of Copyright Republished/and with Contributions from Friends, 2005 LexisNexis Matthew Bender,...

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Can the Lanham Act Protect Tiger Woods? An Analysis of the Uncomfortable Fit Between Right of Publicity and Unfair Competition

94 The Trademark Reporter 1202 (November-December 2004)

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Ethics Issues in Searching Trademarks and Offering Opinions

New York State Bar Association, Intellectual Property Section Meeting, October 2004

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The Arbitrary Nature of Reverse Confusion Claims

Litigation and Enforcement Focus 2004, Managing Intellectual Property

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Essentials of Madrid Protocol Practice

June 2003

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The Madrid Protocol: Filing Strategies for U.S. Trademark Owners

April 2003

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Madrid Protocol Basics and U.S. Practice for Non-U.S. Trademark Owners

2003

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Licensing and Due Diligence Considerations in the Internet Age

The Licensing Journal, June-July 2001

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Two New Tools to Combat Cyberpiracy: A Comparison

Intellectual Property Forum, Sept. 2000 and 90 The Trademark Reporter 679 (May - June 2000)

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Splitting a U.S. Mark

Thomson & Thomson Client Times, Spring 1999

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Ninth Circuit of Appeals: The Batmobile is a Character Under Copyright Law - New, Three-Part Test for Determining Character Protection

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