Ilene B.Tannen

Of Counsel

New York + 1.212.326.3411

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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

  • Trademark Counseling/Global Portfolio Management:
  • Digicel strengthens global brand protection and enforcement of its digital communications and entertainment products and servicesJones Day serves as primary outside global trademark counsel to Digicel Group, the premier Caribbean based digital operator delivering digital communications and entertainment products and services in over 30 markets worldwide, regarding global intellectual property strategy for adoption, clearance, registration and enforcement of its trademarks, including managing the company’s global trademark portfolio and enforcement activities worldwide, and advising on intellectual property aspects of transactional matters affecting the Digicel companies.
  • Hudson's Bay Company sells Gilt Groupe K.K. to Gladd Inc.Jones Day advised Hudson's Bay Company in the sale of its subsidiary, Gilt Groupe K.K., to Gladd Inc.
  • PTC Therapeutics obtains advice on global trademark strategy for pharmaceutical productsJones Day provides strategic counseling to PTC Therapeutics, Inc. with respect to the worldwide adoption, clearance, registration, and enforcement of trademarks and manages the client's international trademark portfolio.
  • Peregrine Pharmaceuticals obtains advice on global trademark strategy for pharmaceutical productsJones Day provides strategic counseling to Peregrine Pharmaceuticals, Inc. with respect to the worldwide adoption, clearance, registration, and enforcement of trademarks and manages the client's international trademark portfolio.
  • CPL Limited obtains advice on global trademark strategy in field of sportsJones Day provides strategic counseling to CPL Limited with respect to the worldwide adoption, clearance, registration, and enforcement of trademarks in connection with the sport of cricket and manages the Company's international trademark portfolio.
  • Pancreatic Cancer Action Network obtains advice on global intellectual property strategy for pancreatic cancer association servicesJones Day advises Pancreatic Cancer Action Network with respect to trademark and copyright matters and manages its international trademark portfolio.
  • Marine Polymer obtains advice on global intellectual property strategy for medical productsJones Day advises Marine Polymer Technologies, Inc. with respect to trademark matters and manages the company's international trademark portfolio.
  • Brightstone Capital Partners obtains advice on global intellectual property strategy for real estate investment services and financial servicesJones Day advises Brightstone Capital Partners LLC with respect to trademark matters and manages the trademark portfolio of the company.
  • M.I.C. Industries advised on worldwide intellectual property mattersJones Day advises M.I.C. Industries, Inc. regarding the adoption, clearance, registration and enforcement of trademarks worldwide for mobile factories and manages the Company's international trademark portfolio.
  • CBS advised on intellectual property strategy for the Westinghouse brand in ChinaJones Day advised CBS Corporation regarding the adoption, clearance, registration and enforcement of trademarks for the Westinghouse brand in China.
  • Transactional Experience:
  • Active Media Services advised in connection with international joint venturesJones Day advised Active Media Services, Inc. regarding the intellectual property aspects of two international joint ventures and drafted and negotiated the definitive agreements in connection with same.
  • Bristol-Myers Squibb divests and sells Clairol Inc. to Procter & GambleJones Day managed the intellectual property aspects of the corporate divestiture of Clairol, Inc. to Procter & Gamble.
  • Grameen Bank and Fundación Luis Carlos Sarmiento Angulo form joint venture in ColombiaJones Day managed the intellectual property aspects of a joint venture established in Colombia between Grameen Trust, a nonprofit organization that uses microcredit as a tool for fighting poverty, and Fundación Luis Carlos Sarmiento Angulo.
  • Grameen Bank and Fundación Carlos Slim form joint venture in MexicoJones day managed the intellectual property aspects of the formation of Grameen Carso, S.A. de C.V. SOFOM, E.R., an approximately 50:50 joint venture between Grameen Bank and Fundación Carlos Slim of Mexico.
  • Meadowlands Xanadu advised on licensing and sponsorship agreementsJones Day provided intellectual property advice and strategy and negotiated licensing and sponsorship arrangements on behalf of Meadowlands Xanadu, a $2.5 billion entertainment, sports and retail complex located in Northern New Jersey.
  • Reynolds America acquires Conwood Tobacco Companies for $3.5 billionJones Day managed the intellectual property aspects of the $3.5 billion acquisition of a holding company that owned Conwood Tobacco Companies, the nation's second largest manufacturer of smokeless tobacco products.

  • 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.

    • View All

    January 2022 Alert

    New Year, New Trademark Proceedings

    July 2021 Commentary

    Playing by New Rules: Ten Considerations for Universities Implementing NIL Policies

    February 2020 Alert

    E-File or You'll Have to Refile: Trademark Filings Gone Digital

    February 2020 Podcast

    JONES DAY TALKS®: Women in IP - USPTO's Trademark Filings Go Digital

    November 2019 Commentary

    When Innovation Creates: Additional Developments in Artificial Intelligence at the U.S. Patent and Trademark Office

    November 2019 Alert

    NCAA Paves Way for College Athletes to Receive Benefits for Name, Image, and Likeness Rights

    October 2019 Podcast

    JONES DAY TALKS®: Game Changer? California’s Fair Pay to Play Act and the Future of College Sports

    May 2019 Alert

    "Rejection" of a Trademark License in Bankruptcy Is a Breach, Not a Rescission

    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

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