Goodbyes | Lunch with Adam Kelly

The John Marshall Law School, now known as UIC School of Law, has its share of inspiring alumni. Adam Kelly is one I had the privilege of working closely with for over a decade. Over the years, he became a wise and trusted counsel for initiatives for the law school's IP program. The legal community affirmed Adam's extraordinary dedication to professionalism, ethics, civility and excellence with the prestigious 2022 American Inns of Court Professionalism Award for the Federal Circuit. The American Inns of Court Celebration of Excellence will honor Adam and his fellow recipients at the Supreme Court of the United States in Washington, DC on October 29, 2022. Details here: https://bit.ly/3t9UdfD. Of the five recipients from the Federal Circuit since 2012, Adam is the youngest. Of the other four, three are senior judges from the Federal Circuit, and one is the late Don Dunner, doyen of the patent bar and former chair of our advisory board. I mentioned to Adam that we could both be very proud to count three of the five recipients as our board members. UIC Law and its extraordinary 80-plus years of a rich legacy of achievement in intellectual property law is something to be cherished and handed down from one generation to the next.

Thinking Internationally About IP and Dispute Resolution | What Every Lawyer & Corporate Counsel Should Know

Join us on Thursday, August 11, to learn the overlooked role of specialist mediators, strategies for cross-border SEP disputes, how to design national IP master plans and more! The discussion features well-known and well-respected panelists from across the nation and around the world. The seminar will also be Gary's and my first event with our new affiliations. It promises to be a memorable, engaging, and insightful time. Hope to see you there! Event details here: https://bit.ly/3N8LthJ.

World Trademark Review | Report on “Trademark Confusion Revealed: An Empirical Analysis”

Uncertain trademark infringement rules cause negotiations to break down, harming both brand owners and potential licensees. They also act as a drag on dispute resolution, compliance, and social equity. The rational response must be a call for clarity in the law. Whether the courts’ analysis of confusion will evolve in the future depends on how quickly they can absorb and apply new research. Judges and lawyers are very busy people. They usually focus on the task at hand using the tools at hand, which is completely understandable. This is where publications like World Trademark Review (WTR) are crucially important because they distill new knowledge and make them accessible to judges and lawyers - both digestible and within their radar. Kudos to WTR Senior Reporter Victoria Arnold-Rees for her article "Three tips for US litigants: court rulings on likelihood of confusion unpicked," for doing precisely that. She does an exemplary job navigating through complex legal doctrine and empirical data to offer stakeholders the most relevant and immediately applicable insights. You can read Victoria's piece here: https://www.worldtrademarkreview.com/article/three-tips-us-litigants-court-rulings-likelihood-of-confusion-unpicked (Subscription required) and my article here: https://bit.ly/3PO0zLr

Goodbyes | McAndrews, Held & Malloy

Our partnerships with IP, tech, and privacy attorneys in the Chicago community enrich every aspect of our work. They teach our students, share insights at our conferences throughout the year (and invite us to speak at theirs!), financially support our initiatives, and take the time to help us strategize the next iteration of legal education. A personal thank you to McAndrews Held and Malloy, and especially Christopher Carani, Alex Menchaca, Sharon Hwang Jaster, and Dunstan Barnes for your support and encouragement over the years! You help us exemplify the best aspects of what law schools and firms can achieve together.

Goodbyes | Matt Sag and Tonja Jacobi

Delighted to catch up with Matt and Tonja, and to meet Hari before their move to Atlanta. They commissioned the beautiful and quirky mural on the fence you see behind us. Matt even drafted the copyright agreement for the commissioned work! I am grateful our paths crossed in Chicago and look forward to them crossing again in the future. Folks at Emory will now benefit from Matt and Tonja’s warm hospitality and friendship. They are fortunate to have them both (See https://bit.ly/3aopqFx and https://bit.ly/3lM5FtX for details). Photo credit: Matthew Sag Tonja Jacobi.

Goodbyes | Lunch with Professor James Conley

One of the great pleasures in my work is to connect with inspiring people to find new ways to collaborate. Professor James G. Conley and I have done so several times over the years, most recently through our work with the Illinois IP Alliance (https://www.ilipalliance.org/). He hosted me for a farewell lunch at Northwestern University's beautiful campus in Evanston. Professor Conley is an inventor who serves as a faculty member in the Kellogg Center for Research in Technology & Innovation. He also serves as a Faculty Fellow at the Northwestern University Segal Design Institute and is a Charter Fellow of the National Academy of Inventors. You can read more about him here: https://www.jamesconley.org/

Global Food Value Chains and Competition Law | Agribiotech Patents in the Food Supply Chain: A US Perspective

The food industry is a notoriously complex economic sector. Thank you to Ioannis Lianos, Alexey Ivanov, and Dennis Davis for the opportunity to share my thoughts on it in my chapter "Agribiotech Patents in the Food Supply Chain: A US Perspective." Details here and below: https://bit.ly/3LsmKUa. Chapter 19 explores U.S. agribiotech patent issues as they relate to the food supply chain. Agribiotech patents challenge how we think about fundamental issues of seed ownership, innovation, and when downstream uses are or should be permissible. The chapter first sketches the arc of agribiotech developments in the U.S. from its colonial past to the current day and observes the evolution of protection over seed traits transition from an open socialist-style franchise to a tightly controlled oligarchy subsisting on patent rights. It then assesses patent exhaustion through the lens of Bowman and the Court’s more recent decision in Impression Prod., Inc. v. Lexmark Int'l, Inc. Finally, the author offers observations on three issues: (1) patentees and generic seed companies will remain invested in maintaining compliance for transgenic seed exports; (2) the recent spate of mega-mergers continue the transformation set in motion by the privatization of agriculture more than a century ago, with these mergers benefiting agribiotech companies and farmers abroad, unfortunately, at the expense of U.S. farmers at home; and (3) developments such as retaliatory tariffs on transgenic seed exports will affect agribiotech innovation as surely as developments in patent law, and should be part of any comprehensive analysis of dynamic trends in the food value chain.

Trademark Confusion Revealed: An Empirical Analysis | 71 Am. U. L. Rev. 1285 (2022)

The likelihood of confusion standard defines the scope of trademark infringement. Likelihood of confusion examines whether there is a substantial risk that consumers will be confused as to the source, identity, sponsorship, or origin of the defendants’ goods or services. This Article presents a contemporary empirical analysis of the various factors and how they interact. Conventional wisdom teaches us that courts should comprehensively traverse each factor and that likelihood of confusion cases generally require jury determination. However, the data reveals that neither is true. Instead, courts provide early off-ramps to litigants by “economizing,” and analyzing only a handful of factors or by “folding” factors within each other. The findings also reveal (1) which forums are pro-defendant and which are pro-plaintiff; (2) the impact of rivalry and fair use on outcomes; and (3) an apparent Ninth Circuit dominance. What constitutes “confusion” remains highly subjective and difficult to evaluate. Proxies like intent, survey evidence, mark strength, and consumer sophistication fail to incorporate real-world purchasing conditions or are better considered within omnibus factors. In contrast, actual confusion, mark similarity, and competitive proximity provide judges with a potent trio of factors to guide the infringement inquiry. Together with safe harbors for descriptive and expressive uses, these rules of thumb enable courts to resolve trademark disputes more coherently, consistently, and expeditiously. This Article concludes with a blueprint of how these rules of thumb complement artificial intelligence systems and how those systems can use empirical studies as training data to inform future likelihood of confusion analyses.

June 10 | Learn about IP industry-related mental health and DEI insights!

Join us on June 10 to learn the latest IP industry-related developments in mental health and DEI!   Details below: Noon | Welcome . Adam Ernette, IP Law Fellow, Center for Intellectual Property, Information & Privacy Law, University Illinois Chicago School of Law . Gary Friedlander, Senior Vice President; Deputy General Counsel (International), TransUnion; Advisory Board Member, Center for Intellectual Property, Information & Privacy Law, University Illinois Chicago School of Law 12:15 – 1:45 p.m. | Panel Discussion 1 "Mental Health and Wellness"   Topics include: . Balancing billable and non-billable hours as a junior associate. . Becoming a community or thought leader in your practice area. . Managing success and failure. . Transitions to partnership, in-house, and leaving the legal profession. . Working remotely and abroad.   Moderator/Panelist: Adam Ernette, IP Law Fellow, Center for Intellectual Property, Information & Privacy Law, University of Illinois School of Law   . Rachel Carnaggio, Partner, Holland & Hart LLP . Rachel Hunnicutt, Attorney-Advisor, FDA Regulatory Law Division, JAG, U.S. Army Medical Research & Development Command . Kenneth Matuszewski, Associate, Goldberg Segalla . Dr. Rita Sanzgiri, Patent Attorney (Life Sciences), Eli Lilly Company . Dardoh Skinner, Associate, Pirkey Barber PLLC   2:00 – 3:30 p.m. | Panel Discussion 2 "Diversity, Equity & Inclusion"   Topics include: . In-house and law firm DEI initiatives: One-size-fits-all? . Measuring success in DEI initiatives . The role of bar associations in DEI initiatives . The Mansfield Rule: What attorneys need to know   Moderator/Panelist: Kyle Serilla, Attorney, Chiacchio IP, LLC   . Laith M. Abu-Taleb, Chief Strategy Officer & General Counsel, Mori . Esther Lim, Partner & Chief Diversity and Inclusion Officer, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP . Idris McKelvey, Vice President - Patent Group, The Estée Lauder Companies Inc. . Daniel R. Saeedi, Partner, Taft Stettinius & Hollister LLP . Maureen R. Smith, Partner, Fitch, Even, Tabin & Flannery LLP Registration: https://bit.ly/uic_ip_ethics2022

News | Gary Friedlander (’87), TransUnion Senior VP, to Lead IP Program

Delighted to share the good news that effective July 1, Gary Friedlander (JD 1987), currently TransUnion's Senior Vice President and Deputy General Counsel – International will lead UIC Law’s Center for Intellectual Property, Information & Technology Law. For over two decades, TransUnion has relied on Gary’s counsel on national and international matters, including those involving IP, technology and privacy law. Our IP community and partners will benefit from the goodwill and rich experience he accrued advising a multibillion-dollar global corporation. Equally important, Gary is an alumnus with deep affection for the law school and its traditions, even as he remains attuned to its current priorities. I look forward to supporting Gary and cheering him on as he transitions into a role in which he is well-placed to succeed. Press release: https://bit.ly/3lhkGDU Photo: My first meeting with Gary in 2017, arranged by Erik Fagrelius, to discuss deepening the IP program's ties with Gary and TransUnion (https://bit.ly/3sD3hJA).