Ilene Tannen has more than 25 years of experience as a key advisor counseling domestic and multinational companies regarding global trademark clearance, brand development and use, and registration strategies. She also provides advice and insight for protection and enforcement of trademarks in countries with complex intellectual property laws.
Ilene manages all aspects of global trademark portfolios for companies in such industries as pharmaceuticals, telecommunications, apparel, sports, food and beverage, and financial services. She also counsels companies regarding the use of their intellectual property in online content and social media and advises clients regarding copyright protection and use.
In addition, Ilene has extensive experience advising clients regarding adoption of pharmaceutical trademarks for U.S. Food & Drug Administration (FDA) approval. She assists clients in policing and enforcing their intellectual property rights worldwide and represents companies in opposition and cancellation proceedings in the United States Patent and Trademark Office (USPTO) and similar venues abroad.
Furthermore, Ilene's experience extends to corporate transactional work, where she takes the lead on the intellectual property aspects of audits, due diligence, and definitive agreements and negotiates and structures trademark licenses and assignment agreements.
From 2016 to 2019, Ilene served a three-year term as a member of the Trademark Public Advisory Committee (TPAC) of the USPTO, where she advised on trademark operations.
An active member of the International Trademark Association, Ilene has helped make important legislative changes to U.S. trademark law and practice. She is a frequent speaker at professional and client conferences on such topics as domestic and foreign trademark practice, adoption of pharmaceutical trademarks, and corporate rebranding.
Experience
The following represents experience prior to joining Jones Day:
Diesel advised on global trademark strategy for apparel and accessories
Advised Diesel regarding the registration and enforcement of trademarks and trade dress worldwide, managed Diesel’s international trademark portfolio and negotiated and drafted licensing agreements with third parties to expand the use of the DIESEL brand name worldwide.
Cannondale Bicycle Corp. advised on trademark strategy for bicycles and accessories
Advised Cannondale Bicycle Corporation regarding the adoption, clearance, registration and use of trademarks and trade dress, including enforcement of trade dress rights in bicycle designs and managed the Company's trademark and trade dress portfolio.
Stiefel Laboratories advised on global trademark strategy for pharmaceuticals and over-the-counter products
Advised Stiefel Laboratories, Inc. in connection with intellectual property matters effecting the day-to-day business of the Company and its related entities, including the adoption, clearance, registration and enforcement of trademarks and trade dress and management of the Company's international trademark portfolio and enforcement actions worldwide.
United States Tennis Association advised on global intellectual property strategy with respect to the sport of tennis
Advised United States Tennis Association regarding the adoption, clearance, registration and use of trademarks and copyrights in connection with goods and services in its yearly U.S. Open Tennis Tournament and managed the Association's international trademark portfolio.
Additional Publications
- May 2021
Trademarks Throughout the World, Chapter 171 “United States of America”, Fifth Edition - July 2020
United States: ‘generic.com’ Eligible for Protection, published in International Trademark Association Bulletin, Law & Practice
Additional Speaking Engagements
- April 12, 2022
Demonstrating Use in Commerce for Trademark Registration and Enforcement - Navigating Use in Commerce Requirements Under the Lanham Act and for Purposes of Registration - October 26, 2021
Adoption of Pharmaceutical Trademarks for Approval: Navigating the Differing Standards at the FDA and USPTO - August 3, 2021
U.S. Trademark Office Changes and the Impact: Rules to Implement the TMA, Specimen Requirements and Foreign Applicants - March 15, 2021
The NIL Debate: Legislative and Policy Perspectives, Notre Dame Law School, Sports, Communications and Entertainment Law Forum - August 31, 2020
Artificial Intelligence and Copyright: Who Owns AI-Created Works? New York Intellectual Property Law Association, Podbites Episode 8 - 2019
The Pay-To-Play Debate: Legal and Legislative Challenges to the College Sports Model, University of Pennsylvania Law School - 2019
Sports Law Roundtable: Hot Topics Impacting Intercollegiate Athletics, Cardoza School of Law, Yeshiva University - 2015
Discovery: Considerations in Trademark Trial and Appeal (TTAB) Proceedings, moderator, International Trademark Association - 2015
INTA/USPTO Roundtable, moderator, International Trademark Association - 2013
INTA/USPTO Roundtable, moderator, International Trademark Association - 2012
Intellectual Property and the Franchise System, An Overview of Key U.S. Trends and Regulatory Issues for Canadian and Overseas Franchisors, International Franchise Expo - 2012
Protecting the Intellectual Property of the Franchise System, Strategies for Penetrating the U.S. Market for Overseas Franchisors, International Franchise Expo - 2012
INTA/USPTO Roundtables, moderator, International Trademark Association - 2010
Challenges of Protecting, Enforcing and Exploiting Trademarks in the Asia Pacific Region, International Trademark Association - 2009
Working With Outside Counsel - Litigation Cost Savings/Law Department Management, Third Corporate Counsel Institute, New York State Bar Association - 2008
Rebranding: A Case Study, moderator, International Trademark Association - 2008
USPTO Boot Camp Trademark Edition, Bolstering the Value of a Trademark Search in Your USPTO Trademark Registration Strategy, American Conference Institute - 2008
Worldwide Clearance, moderator, International Trademark Association - 2008
Trademark and Copyright Protection in Business, BNY ConvergEx Group, LLC - 2006
Practical Tips on Foreign Trademark Clearance and Filing, Intellectual Property Law Section of the New York State Bar Association - 2006
Expert for Hire, moderator, International Trademark Association - 2004
Adoption and Use of Trademarks in Business, Pershing LLC - 2003
Bankruptcy and Trademarks, moderator, International Trademark Association - 2001
A Primer on Due Diligence Reviews of IP Assets, Practicing Law Institute - 2000
Reviewing and Analyzing Trademark Search Reports, Thomson & Thomson and Fordham University, Current IP Issues - 1999
International and Domestic Trademark Clearance, International Trademark Association - 1998
Trademark and Copyright Protection, SpecTran Corporation - 1996
International Protection in Pacific Rim Countries, moderator, CLE International - 1996
Trademark Protection in Business, United States Tennis Association
- Emory University (J.D. 1986); The State University of New York at Buffalo (B.S. in Accounting 1982)
- New York
- Appointed by the Secretary of Commerce to serve a three-year term as a member of the Trademark Public Advisory Committee (TPAC) of the United States Patent and Trademark Office (USPTO), where she acted as an advisor to the Under Secretary of Commerce for Intellectual Property regarding the trademark operations of the USPTO (November 2016-November 2019)
Acritas "Star Lawyer" (2019 and 2021)
Who's Who Legal Trademarks — global leader (2019 and 2020)