Robert Frank's Relevant Experience - Prior Testimony - Professional Experience
Trademark Publications & Presentations - Educational Publications & Presentations

RELEVANT EXPERIENCE

With more than 25 years experience in the trademark research field, Dr. Frank brings an unmatched wealth of knowledge to cases involving dilution, generic and descriptive trademarks. His research and expert witness services have been used for matters at the U.S. Patent and Trademark Office as well as District Courts in the United States. Having founded, in 1983, CORSEARCH, Inc. (currently known as CT-CORSEARCH), Dr. Frank has personally completed over 5,000 trademark research reports, has trained over 50 trademark researchers, has developed materials used to train over 100 additional trademark researchers and has reviewed an estimated 45,000 trademark searches. (The purpose of a trademark search report is to identify marks that are potentially confusingly similar to a proposed mark. Trademark research reports are one of the primary methods used by trademark practitioners to identify third-party uses of a mark.) Dr. Frank has personally designed, developed, configured and maintained proprietary databases specifically intended for searching and retrieving information related to trademarks.

In addition to his work at CORSEARCH, Dr. Frank has been an active member of the International Trademark Association (INTA) since 1985. He has attended more than 40 seminars, conferences and workshops on trademark-related issues sponsored primarily by INTA as well as organizations such as the Bar Association of the City of New York, The New York State Bar Association, the New Jersey Bar Association and the Dallas Bar Association. He has served as the co-chair of INTA's Patent and Trademark Office Automation Committee and INTA's Domain Name Task Force. He also has served as a member of the INTA Internet Registration Practice and DNS Administration Subcommittee and the INTA Internet Committee, Online Use Sub-Committee and Internet Fraud Working Group. He has served as a member of the INTA Famous and Well-Known Marks Committee and was Chair of that committee's Data Trends and Analysis Task Force. He has testified and/or reported as an expert witness on trademark-related issues in infringement cases and neither his testimony nor his reports have been excluded.

Click here for a copy of Robert Frank's current bio.

Prior 4 Years Testimony

U.S. District Courts:

  • Bobrick Washroom Equipment, Inc. v American Specialties, Inc., (10cv6938) United States District Court Central District of California, Western Division. Retained by the Plaintiff. Services included Internet research, preparation of an Expert’s Report, deposition and courtroom testimony.
  • E. & J. Gallo Winery v Proximo Spirits, Inc. et al., (10cv00411) United States District Court for the Eastern District of California, Fresno Division. Retained by the Defendant. Services included site visits, preparation of an Expert’s Report and deposition testimony.
  • Council on American-Islamic Relations Action Network, Inc. v. Deborah K. Schlussel et al., (11cv10061) United States District Court, Eastern District of Michigan, Southern Division. Retained by Defendant. Services included research and the preparation of an Expert’s Report.

U.S. Patent and Trademark Office:

  • Trademark Oppositions at the U.S. Patent and Trademark Office against the marks BORN STRONGER (Serial Number 77782211), BORN STRONG (Serial Number 77782195) and BE STRONG (Serial Number (Serial Number 77782193). Retained by the Opposer. Services included research and the production of Expert’s Reports.
  • Trademark Opposition at the U.S. Patent and Trademark Office against the mark MY (Serial number 85058346) and MyBody (Serial Number 85135592). Retained by Applicant. Services included research and the production of an Expert’s Report.
  • Trademark Opposition at the U.S. Patent and Trademark Office against the mark KATNISS EVERDEEN (Serial number 85163636). Retained by Opposer. Services included research and the production of an Expert’s Report.

Non-U.S. Trademark Matters:

  • Israeli Trademark Office. Petition for Cancellation of Isreali Trademark Registration No. 187385 (Class 16) and Israeli Trademark Registration No. 187386 (Class 42) for the trademark GHI. Retained by the Petitioner. Services included research and the production of an Expert Declaration and courtroom testimony.
  • Hong Kong Trademark Office. In the Matter of Trademark Application No 301366542 for “GHI” in Classes 16, 36 and 42 in the name of Gemology Headquarters, LLC (the “Applicant”) and in the Matter of an Opposition thereto by Gemological Institute of America, Inc. (the “Opponent”). Retained by the Opposer. Services included research and the preparation of an Expert’s Report.
  • Canadian Trade-Mark Office, In the Matter of an Opposition to Application Number 1,446,354 for the mark GIH and Application Number 1,348,637 for the mark GHI GEMOLOGY HEADQUARTERS INTERNATIONAL & Design. Retained by the Opposer. Services included research and the production of Expert’s Reports.
  • China Trademark Office, In the Matter of an Opposition to Application Number 7585421 for the mark GIH. Retained by the Opposer. Services included research and the production of an Expert’s Report.

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PROFESSIONAL EXPERIENCE

Illuminor LLC
President
      Great Falls, Virginia
2005-present
Bluespan, Inc.
Founder and CEO
      Austin, TX
2001-2006
MSI Holdings / Aperian, Inc.
Chief Operating Office and Executive Vice President
      Austin, TX
1999 - 2000
Corsearch, Inc.
Founder, CEO and President
      New York, NY
1983 - 1998
Ithaca College
Adjunct Professor
      Ithaca, NY
1982 - 1983
Cornell University
Research Associate and Associate Professor
      Ithaca, NY
1979 - 1981
University of Missouri-Columbia
Teaching and Instructional Associate
      Columbia, MO
1977-1979
Southern Boone County Schools
Secondary Social Studies Teacher
      Ashland, MO
1975-1977

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TRADEMARK PUBLICATIONS AND PRESENTATIONS

  • Report of the Internet Fraud Working Group, presented to the International Trademark Association’s Internet Committee, October, 2011.
  • Using the Internet and Online Databases in Likelihood of Confusion, Generic, Descriptive or Dilution Cases, presented at the International Trademark Association Annual Meeting, May, 2011.
  • Using Expert Witnesses in Likelihood of Confusion, Dilution and Genericness Disputes, presented to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, August 3, 2010.
  • Report of Tests Conducted to Uncover Instances of Front-Running on the Internet, Presented to the International Committee—Registration Practice & DNS Administration at the Annual Meeting of the International Trademark Association, May 20, 2008.
  • Using Expert Witnesses in Trademark Infringement Litigation, Presented to the Dallas Area Paralegal Association, January 18, 2008.
  • Cybernames-Domain Name Issues and Conflicts in Cyberspace, Patent and Trademark Institute of Canada, Canadian Intellectual Property Review, Vol. 12, No. 2, August, 1996.
  • Final Report--Phase I Report of the INTA Internet Task Force (co-author), The International Trademark Association, July, 1995.
  • Much Ado About the Internet (A Primer) An INTA Bulletin Special Report (co-author), The International Trademark Association, February, 1995.
  • "Trademarks: Managing Risk and Asset Value," presented at Intellectual Property Management: Developing a Corporate Intellectual Property Strategy, April 6-7, 1998, New York, NY.
  • "The Evolution and Future of Internet Domain Names", American Bar Association Annual Meeting, ABA/YLD Division, August 4, 1996; New York State Bar Association, Intellectual Property Law Section, September 14, 1996.
  • "Current Status of Problems Involving Internet Domain Names and Trademark Conflicts", The New Jersey Trademark Circle, Bayonne, New Jersey, February 14, 1996; New York State Bar Intellectual Property Law Association, February 16, 1996.
  • "Domain Names and Trademark Infringement", National Science Foundation Conference (Internet Names, Numbers and Beyond; Issues in the Coordination, Privatization, and Internationalization of the Internet), The Kennedy School at Annenberg Program Offices, Washington, D.C., November 20, 1995.

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EDUCATIONAL PUBLICATIONS AND PRESENTATIONS

  • Frank, Robert M. What I REALLY Learned in College (Commencement Address, University of Missouri-St. Louis College of Education, December 17, 2006)
  • Frank, Robert M. Life Skills (This paper was presented at the 2006 University of Missouri-St. Louis College of Education Alumni Association Awards Banquet, May 5, 2006)
  • Frank, Robert M. Attribute and Attitude Assessment of Community College Graduates and Leavers, 1983. (This article was presented at the Annual Meeting of the American Educational Research Association, 67th Annual Meeting, Montreal, Canada)
  • Frank, Robert M. Preparing IEPs for CBVE Programs, Vocational Aspects of Education, V34 n89 p83-87, Dec. 1982. ERIC #EJ 279011
  • Frank, Robert M. Individualizing Vocational Education, Vocational Aspects of Education: V33, n84, p1-4, April, 1981. ERIC #EJ 250807.
  • Frank, Robert Instructional Planning. Final Report. ISSOE Managing Student Progress, 1981. Cornell Institute of Occupational Education, Cornell University, Ithaca, NY ERIC # ED 217177.
  • Dunn, James A., Frank, Robert M. ISSOE: Managing Student Progress. Field Test. Phase I, Final Report, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199527.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis. Managing ISSOE Programs. Administrative Issues: Technical Report Number One, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 194747.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Developing Student Profiles. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199517.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret Planning Student Progress. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199518.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Reporting Student Progress. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199519.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Student Decision Making. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199520.
  • Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, System Overview. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199521.
  • Beuke, Vernon; Frank, Robert. ISSOE Student Guidance and Development of Personalized Occupational Education Programs. Findings and Recommendations, 1979. Cornell Institute of Occupational Education, Cornell University, Ithaca, NY ERIC # ED 181241.

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