Trademark Enforcement Outside the Courtroom: Customs, Watches, and Leveraging Online Platform Solutions
Exploring Options for Early, Effective, and Budget-Conscious Strategies

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Monday, December 2, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide IP counsel on enforcing trademark rights outside of litigation. The panel will discuss use of the U.S. Customs and Border Protection (CBP), trademark watch services, online infringement, and modern trademark clearance to amplify the strength of a brand and protect against infringement.
Faculty

Ms. Ciotola concentrates her practice on counseling, protecting and enforcing trademark, trade dress, copyright, and related IP rights, as well as counseling clients in unfair competition, internet, advertising, and promotions law. She assists clients in the development and exploitation of their trademark portfolios, including clearance of marks; prosecution of trademark applications before the USPTO; and identifying important overseas jurisdiction and filing or coordinating with local counsel for protection and enforcement of marks in those jurisdictions. Ms. Ciotola develops strategies for the enforcement of her clients’ IP rights, including preparing demand letters, negotiating settlement agreements, handling opposition and cancellation actions before the TTAB, and coordinating and overseeing litigation with local counsel around the world. She also develops strategies for enforcement of her clients’ IP rights online, including handling Uniform Domain Name Dispute Resolution Policy proceedings. Ms. Ciotola attends and speaks at the world’s leading trademark industry association gatherings, including the INTA, MARQUES, the European brand owner association, European Communities Trade Mark Association and the Asociancion InterAmericana de la Propriedad Intelectual (ASIPI). She also talks about trademarks on her podcast, IP Obsessed.

Ms. Caless assists clients with trademark clearance, prosecution, monitoring, and enforcement. She advises clients in both U.S. and foreign portfolio development and management. Ms. Caless is involved in drafting settlement agreements to resolve trademark disputes. She also provides assistance with other intellectual property agreements including assignments, licenses, and consent agreements. Ms. Caless also has experience in copyright matters and domain name disputes, including arbitrations under the Uniform Domain Name Dispute Resolution Policy.

Description
The prevalence of online marketplaces and social media platforms present increased challenges for brand owners. It is critical for brand owners to have a program in place that utilizes tools and approaches that will ensure vigilant protection of trademarks from infringement.
Brand owners can leverage the CBP as a tool to block importation of infringing and counterfeit goods. There are some constraints, including the mark must be registered on the Principal Register. If the requirements are met, the brand owner can record its trademark registration with the CBP so the CBP can actively monitor shipments and stop goods that violate the trademark rights.
Strategically utilizing watch services to monitor trademark applications and domain names is a vital tool for enforcement--alerting brand owners and allowing early action that may avert the need for more formal litigation.
Listen as our authoritative panel examines how IP counsel can enforce their clients' marks outside of litigation. The panel will discuss use of the CBP, trademark watch services, online infringement, and modern trademark clearance to amplify the strength of a brand and protect against infringement.
Outline
- U.S. Customs and Border Protection
- Trademark watch services
- Modern trademark clearance
- Best practices for enforcing marks outside the courtroom
Benefits
The panel will review these and other key issues:
- How can brand owners utilize the processes of the CBP to protect against infringement?
- What steps should businesses take to detect alleged trademark infringement on a social media site?
- What practical steps should counsel take to protect against infringement outside of litigation?
Unlimited access to premium CLE courses:
- Annual access
- Available live and on-demand
- Best for attorneys and legal professionals
Unlimited access to premium CPE courses.:
- Annual access
- Available live and on-demand
- Best for CPAs and tax professionals
Unlimited access to premium CLE, CPE, Professional Skills and Practice-Ready courses.:
- Annual access
- Available live and on-demand
- Best for legal, accounting, and tax professionals
Related Courses

2025 China Trademark Litigation and Enforcement Update: Landmark Cases, Legal Shifts, Trade War Implications
Tuesday, May 20, 2025
1:00 p.m. ET./10:00 a.m. PT

Trademark Infringement Monetary Remedies: Protecting IP Rights and Overcoming Challenges
Wednesday, May 7, 2025
1:00 p.m. ET./10:00 a.m. PT

Comparative Advertising: Avoiding Trademark Infringement, Disparagement
Friday, April 11, 2025
1:00 p.m. ET./10:00 a.m. PT

Demonstrating Use in Commerce for Trademark Registration and Enforcement
Tuesday, April 15, 2025
1:00 p.m. ET./10:00 a.m. PT
Recommended Resources
Getting the Most Out of BARBRI Resources
- Learning & Development
- Business & Professional Skills
- Talent Development
Transforming CLE from a Requirement to a Career Advantage
- Learning & Development
- Career Advancement
- Talent Development