Trademarks (Replacement Chapter)

Floyd Mandell, partner and co-chair of Katten's Trademark, Copyright and Privacy group, and Intellectual Property associate Julia Mazur have co-authored a replacement chapter in Successful Partnering Between Inside and Outside Counsel.

Replacement Chapter 69, "Trademarks," offers legal guidance, insights and tools for addressing a full spectrum of corporate trademark issues and matters, including procuring and maintaining trademark rights; exploiting, enforcing and protecting those rights; and generally managing trademark portfolios. The chapter further discusses effective partnership models between in-house counsel and outside counsel for operating management and protection programs. Throughout the chapter, the authors offer examples "of how in-house counsel can partner with outside counsel to establish a program that effectively utilizes corporate resources . . . by leveraging in-house counsel's understanding of the company's business goals and marketing objectives and by working with outside counsel to protect the company's trademarks, avoid consumer confusion, and promote fair competition."

Successful Partnering Between Inside and Outside Counsel is a seven-volume treatise jointly published by Thomson Reuters and the Association of Corporate Counsel. The treatise features over 350 authors that include general counsel of more than 100 major corporations and senior partners of several major law firms. Containing 130 chapters, the treatise covers "all aspects of corporate law department operations and management, more than 60 substantive law subjects, and all aspects of the relationships between inside and outside counsel."

Floyd and Julia have been co-authors for the "Trademarks" chapter for several years. They worked with members of Cisco Systems, Inc.'s legal team on the latest replacement chapter.

"Chapter 69: Trademarks," Successful Partnering Between Inside and Outside Counsel, April 2023

Highlights of the replacement chapter can be found here.