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Biography

Carolyn Walters is a Trademark Agent with 20 years of experience in trademark law and significant experience advising clients on registering, protecting and managing trademarks in Canada, the USA and globally. She is adept at designing trademark filing strategies and assisting clients with creating internal policies and procedures related to trademarks. Carolyn is also experienced in addressing online infringements and has had great success acquiring pirated domain names through the domain name dispute process. Carolyn has been in both private practice as well as in-house, and brings this understanding to her clients. She has worked with clients in a range of industries, including energy, oil and gas, technology, retail, agriculture, entertainment, financial services, power and hospitality and tourism. 

Qualifications

  • Registered Canadian Trademark Agent
  • Qualified Practitioner before the United States Patent and Trademarks Office

Professional Activities

  • Trademark Agent Tutorial Course, Intellectual Property Institute of Canada, Instructor
  • Trademark Agent Tutorial Committee, Intellectual Property Institute of Canada, Chair
  • Intellectual Property Institute of Canada, Member
  • International Trademark Association, Member

Experience

Experience

  • Developed and executed strategic plans to register, maintain and enforce trademarks for an energy company with a large global trademark portfolio in a cost effective manner. This involved conducting a gap analysis and creating a customized and focused trademark filing strategy which resulted in a reduction of the trademark portfolio and reduced costs
  • Initiated and managed the transfer of almost 900 trademarks in over 70 countries that was required as a result of a large oil and gas merger
  • Provided support for the sale of a large subsidiary which involved the transfer and licensing of hundreds of marks, and implemented guidelines and processes to ensure proper care and control of the licensed marks and for reporting suspected infringements
  • Led investigations into counterfeit products in various countries including Russia, Turkey, Indonesia and China and worked with local counsel and authorities to combat the problem 
  • Coordinated, tracked, reported on and managed large international trademark portfolios
  • Prepared, filed and prosecuted applications for registration of trademarks in Canada and the USA
  • Gave opinions on the registrability of trademarks and conducted searches to see whether a likelihood of confusion might exist 
  • Drafted responses to objections, prosecuted opposition proceedings and presented appropriate evidence and arguments to convince the Registrar that the subject trademark was registrable
  • Advised and educated the business and other legal team members in the maintenance and protection of trademarks
  • Developed and implemented corporate policies and procedures related to trademarks
  • Provided training sessions on trademarks to clients and their employees
  • Ensured that use of trademarks was properly licensed to protect the distinctiveness and enforceability of the trademarks
  • Prepared and filed domain name disputes at the World Intellectual Property Office resulting in transfer of the domain name to the client
  • Developed response option guidelines for online infringements and created response templates and procedures which resulted in focused and efficient use of resources while allowing for optimal brand protection
Carolyn Walters, Lawson Lundell Photo
Calgary
t 403.218.7557
f 403.269.9494
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