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CHICAGO � Intellectual property lawyers will descend on Chicago starting this weekend for the annual International Trademark Association conference, which is expected to attract 8,500 private practice and in-house attorneys, or 5% more than last year. Lawyers come for updates on trademark law and trends as well as networking with clients and faraway co-counsel. Hot topics at the five-day conference, running from April 28 to May 2, are likely to include trademark rights in internet advertising, publicity rights for sports celebrities, and new views of the use of cease and desist letters. “This is a big deal for trademark lawyers,” said Paul Garcia, a senior intellectual property partner at Kirkland & Ellis in Chicago who is moderating a conference panel with three federal judges from the U.S. District of Northern Illinois. Attorneys at the conference are likely to take an interest in a session on trademark law issues related to pop-up Internet ads triggered when someone types a brand name into a search engine, said program planners Michelle Brownlee, general counsel at consumer products company Colibri Group Inc., and David Fleming, an intellectual property attorney at Brinks Hofer Gilson & Lione in Chicago. Pop-ads that are generated for the rival of a company that’s name is entered into the search engine raises questions about trademarked use of a name, consumer confusion or permissible use of the name, Brownlee and Fleming said. [Related article: " Utah's trademark protection act causes constitutional controversy."] Lawyers are watching for the outcome of two pending cases on the subject, one in the 2d U.S. Circuit Court of Appeals and another in the Northern District of California, Fleming said. The appeals court case is one in which Rescuecom Corp. sued Google (No. 06-4881) and, in California, Google sued American Blind and Wallpaper Factory Inc., which in turn countersued Google and other sites. (No. 03-5340) “The issue has been around for a few years, but there is still no definitive view of what the law says,” Brownlee said. Attention is also likely for a session about the rights of sports celebrities to protect their names and statistics from use in unlicensed fantasy baseball, football and other sports games, the organizers said. A case involving the issue, which has become important because it’s an increasingly lucrative business, is pending in the 8th U.S. Circuit Court of Appeals, Fleming said. CBC v. Major League Baseball, No. 06-3357. Cease and desist letters to stop trademark infringement, a seemingly basic tool of lawyers, are grabbing the conference spotlight too. Recent rulings may make it easier for targets of the letters to go to court and get a declaratory judgment that there is no infringement, Garcia said. Sending the letters may pose more risks now, he said. “The land mines may be bigger and different,” Garcia said. Attendees will use conference receptions and outside meetings to build relationships and new business. There are a host of in-house lawyers from companies, such as Coca-Cola Co. and Intel Corp., that meet with outside counsel and foreign lawyers, said Katherine Basile, a Howrey partner in the field who has attended the conference for the past twelve years. While trademark legal work has tended to flow out of the U.S. to practitioners in other countries, that tide may be turning to deliver work to U.S. lawyers, Basile said. The greatest number of attendees will be from the host country with large contingents also from Canada, the United Kingdom, France, China and Germany, the association said. “You do end up with this truly international mix of people,” said Basile, who travels to the conference from Howrey’s office in East Palo Alto.

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