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Date(s) - Thu 10/16/2014
12:00 pm

Bar Association of San Francisco Conference Center

Bobrick Washroom Equipment v. American Specialties: An Insider’s Perspective on a Multifaceted Product Design Trade Dress Case

Roval and Contura comparison

How can IP counsel fashion a defense against a product design trade dress infringement claim based on very close copying of the innovative exterior design of a line of commercial/industrial products when the relevant design feature (1) was originated by the senior party, (2) was covered by a series of expired design patents, and (3) presumably had attained secondary meaning years earlier?

Ken Germain was retained as a trademark law expert by counsel for defendant ASI, manufacturer of metal washroom accessories such as paper towel dispensers containing the disputed curved front design feature.  He submitted Expert Reports (supportive of defendant) on defenses of aesthetic functionality, lack of likelihood of confusion, and the possible unconstitutionality of extending trade dress protection to a feature previously protected by a design patent.

While the case was ultimately resolved by CD Cal (and affirmed by the 9th Circuit) on the basis of utilitarian functionality, Ken will explain why, had that argument failed, the aesthetic functionality and constitutional arguments should have prevailed.

This topic concerns the intriguing intersection of various IP doctrines, especially patents (utility and design) and trademarks/trade dress.  This topic even includes a possibly cataclysmic conflict between two Clauses of the US Constitution.

Presenter: Ken GermainKen Germain of Wood Herron & Evans

Ken Germain has more than 35 years of varied experience in the trademark/unfair competition field and is a former full-time law professor.  He focuses his practice on trademark counseling, consulting and litigation.  Ken is often retained as an expert witness on issues relating to trademarks and unfair competition, working on cases involving some of the nation’s largest companies in high-stakes, cutting-edge cases.  For many years, Ken has been an active speaker on trademark and unfair competition, lecturing at national, regional and local conferences over 240 times.

In addition, in 1990 Ken founded, and until 2014 chaired, the All Ohio Annual Institute On Intellectual Property seminar.  This seminar is in its 24th year, provides two-city programming (Cincinnati, Cleveland) covering all aspects of IP, and is the largest (300 attendees per city), oldest, full-day IP CLE program in and around Ohio.

Ken served as an Adjunct Professor at the University of Cincinnati College of Law for a number of years, teaching trademark/unfair competition courses.  Later, Ken served as a Distinguished Professorial Practitioner in the University of Dayton Law School’s Program in Law and Technology.  In 2013-14, Ken taught as a Distinguished Senior Fellow in connection with the Law + Informatics program of the NKU Chase School of Law.

Location: BASF Conference Center, 301 Battery Street, San Francisco, CA 94111

Price and Registration

Ticket Type Price (Before Ticketing Fees)
In-Person In-House Counsel Free
In-Person SFIPLA Member (Law Firm) $35
In-Person Non-Member $40
Live Webinar $10

Click here to register and pay on-line, or mail your RSVP, desired ticket type, and check made payable to SFIPLA to us at the address on our contact page.


Thanks to our sponsor, Cogent Legal, for providing our live webinar.

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