Map Unavailable

Date(s) - Thu 12/10/2020
12:00 pm - 1:00 pm

Traditionally, some product designs have been protected both as design patents and trade dress. But is it allowable and appropriate for both of these IP regimes to apply to the very same design? Only a few interested people (lawyers, judges, professors, commentators) have considered whether these two IP law regimes correctly may apply—consecutively or concurrently.

Please join SFIPLA in welcoming our esteemed speakers Ken Germain and Sarah Burstein for in-depth discussion of the interplay between design patent and trade dress protection and constitutional implications of protecting the same subject matter with both forms of intellectual property. Ms. Burstein will kick off the discussion by providing an overview of design patent and trade dress principles, followed by Mr. Germain’s remarks in which he will assert that the two forms of IP cannot protect the same design consistent with the Constitution. This begs the question: If only one type of IP protection is available, which one should it be? Our panelists will offer their perspectives.


Ken Germain has more than 45 years of varied experience in the trademark/unfair competition field and is a former full-time law professor. He focuses his practice on expert witness work, consulting and litigation, including Early Neutral Evaluation. Ken often has been 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. He has testified in court over 15 times.
Ken has been an active speaker on trademark and unfair competition, lecturing at national, regional and local conferences over 300 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 30th year, provides two-city programming (Cincinnati, Cleveland) covering all aspects of IP, and is the largest (over 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 many years, teaching trademark/unfair competition courses. Later, Ken served as the Distinguished Professorial Practitioner in the University of Dayton Law School’s Program in Law and Technology. Ken served as the Distinguished Senior Fellow in connection with the Law + Informatics program of the NKU Chase School of Law.

Professor Sarah Burstein is an internationally-recognized expert in design patents. Prior to joining the faculty at OU, she worked as an intellectual property litigation associate in the Chicago office of Kirkland & Ellis LLP and clerked for the Honorable Robert W. Pratt in the United States District Court for the Southern District of Iowa. Professor Burstein has a law degree from the University of Chicago and B.A. in Art & Design from Iowa State University.

Professor Burstein has participated in design law conferences at the University of Oxford, Notre Dame Law School, Stanford Law School, the Max Planck Institute for Intellectual Property and Competition Law, ETH Zürich, and Waseda University in Tokyo. Professor Burstein is a past chair of the AALS Section on Art Law and the ABA Design Committee and a member of the INTA Academic Committee.

Date:  Thursday, December 10, 2020

Time:  12pm-1pm

Place:  ZOOM (login credential details to be provided prior to program meeting date)

Cost:    FREE

Click here to register.

The San Francisco Intellectual Property Law Association is an approved provider of California MCLE credit, and certifies that the above activity meets the requirements for one hour of participatory credit.