Beth M. Goldman

Intellectual Property

Beth M. Goldman, a partner in Orrick’s San Francisco office, is a member of the Intellectual Property Group. Her practice focuses on trademark and copyright law, licensing, Internet law and advertising clearance. She has been assisting clients in the selection and creation of brands, as well as their protection, for more than 20 years. Her experience includes worldwide prosecution and policing of trademarks, dispute resolution, UDRP proceedings and litigation before the Trademark Trial and Appeal Board. Her clients cover a variety of industries, including alternative energy, biotechnology, clothing, computer services, consumer products, credit card services, food and beverages, medical equipment, pharmaceuticals, software, and telecommunications.

She has spoken on trade dress for the Practising Law Institute on intellectual property, and on domain name and other issues for the International Trademark Association. She has served on various INTA committees.

Beth Goldman
  • "Litigation Alternatives and Hot Topics in the U.S. and Abroad," Fundamentals of Trademark Law in the Global Marketplace 2015, Practising Law Institute, June 2015
  • "From Dot Coms to 'Not Coms': Protecting Marks, Enhancing Brands, Valuing & Transferring Rights," The State Bar of California, April 2015
  • "Trademark Infringement: Demonstrating Irreparable Harm to Obtain an Injunction, Navagating Inconsistent Court Treatment, Proving Harm With and Without Survey Evidence," Stafford Publications, January 2015
  • "IP Trademark, Copyright & Licensing Counsel Forum 2014," ALM, October
  • "Litigation Alternatives and Hot Topics in the U.S. and Abroad," Fundamentals of Trademark Law in the Global Marketplace 2014, Practising Law Institute, July 2014
  • “The Basics of Trademark and Copyright Law,” Understanding IP Law for In house Counsel & Non IP Lawyers, Bridgeport Continuing Education, December 2013.
  • “Foreign Trademark Filings,” Practical Strategies in International Trademark Filing Webinar, The State Bar of California, International Law Section, August 2013.
  • “Litigation Alternatives and Hot Topics in the U.S. and Abroad,” Fundamentals of Trademark Law in the Global Marketplace 2013, Practising Law Institute (July).
  • Roundtable on WIPO Trademark Registration Strategies and Updates from Geneva, The State Bar of California, 2013 (March).
  • “Special Issues in Copyright and Trademark Law,” IP Issues in Business Transactions 2013, Practising Law Institute (February).
  • “Litigation Alternatives and Hot Topics in the U.S. and Abroad,” Understanding Trademark Law in the Global Marketplace 2012, Practising Law Institute (July).
  • Panelist at the 2nd Annual Madrid Protocol Seminar, State Bar of California IP Section and International Law Section, 2012 (February).
  • “Hot Topics, Recent Cases & Litigation Alternatives,” Understanding Trademark Law in the Global Marketplace 2011, Practising Law Institute (July).
  • “Handling Complex Prosecution Issues,” Host of INTA Roundtable, 2011 (April).
  • “International Law Committee In-Person Roundtable: WIPO Trademark Registration Strategies and Updates from Geneva,” The State Bar of California, November 2010.
  • “Policing Trademarks on the Internet and the Web 2.0,” Host of INTA Roundtable, 2010 (January).
  • “Breaking Up Is Hard To Do - The Ethics of Trademark Client Disengagement,” AIPLA 2009 Spring Meeting (May).
  • “Intellectual Property for Business Lawyers,” CEB presentation, 2009 (May).
  • “Proper Trademark Use,” Host of INTA Roundtable, 2009 (February).
  • “Internet Domain Names: A Trademark Practitioner’s Point of View,” Host of INTA Roundtable, 2008 (April).
  • “Developments in Fraud Upon the U.S. Patent and Trademark Office,” Host of INTA Roundtable, 2006 (April).
  • “Trademark Dilution Act,” Host of INTA Roundtable, 2007 (April).
  • “Legal Issues Related to Advertising,” Annual presentation to AAAA Northern California Institute of Advanced Advertising Studies, 1999 through 2006.
  • “Trademark Enforcement and Pre-Litigation Strategies,” Host of INTA Roundtable, 2004 (October).
  • “Protection of Famous Marks in North America,” Moderator for INTA Annual Meeting Table Topic, 2003 (May).
  • "Business Law Recent Developments,” CEB presentation, 2003 (March).
  • “A Comparison of CTM and Madrid Protocol TM Applications,” Host of INTA Roundtable, 2004 (January).
  • “Complexities of Multi-Jurisdictional Protection,” INTA Basics of U.S. Trademark Law Forum, 2003 (February).
  • “Trade Dress,” SFIPLA presentation 2002 (April).
  • “International Trademark Prosecution: Considerations and Tactics for U.S. Filers,” Host of INTA Roundtable, 2002 (September).
  • “Trade Dress,” Continuing Education of the Bar presentation, 2002 (May).
  • “Trade Dress,” Practising Law Institute presentation, 2001 (November).
  • “Unconventional Trademarks,” Host of INTA Roundtable, 2000 (October).
Select Publications
  • Co-author, "Offensive But Not Unregistrable: Fed. Cir. Alters TM Law," Expert Analysis, Law360, January 2016
  • Co-author, "Proving Harm in Trademark Cases Post-Herb Reed," Expert Analysis, Intellectual Property, Law360, April 16, 2014
  • Co-author, "New Trademark Clearinghouse an Important Tool for Trademark Owners as New Generic Top-Level Domains Prepare to Launch," March 2013
  • Co-author, "Seeing Red: When It's a Trademark and When It's Not," October 2012
  • Co-author, "ICANN Publishes List of Applications in gTLD Expansion Program," July 2012
  • Co-author, "The Fourth Circuit Says, 'Not So Fast,' to Google and Revives Rosetta Stone's Direct and Contributory Trademark Infringement and Dilution Claims in Closely Watched AdWords Case," April 2012
  • Co-author, “The Latest (And Greatest?) Case In The AdWords Saga,” Expert Analysis, Intellectual Property, Law360: Litigation, Policy & People News, August 2011
  • Co-author, “Insurance Coverage for Trademark Matters,” Chapter 33, McCarthy on Trademarks and Unfair Competition, Fourth Edition.
  • Co-author, Trademark Section, Antitrust Counterattack in Intellectual Property Litigation Handbook, American Bar Association, April 2010.
Admitted In
  • California
Court Admissions
United States District Court
  • Northern District of California

  • J.D., University of California, Berkeley School of Law
  • Ph.D., English Literature and Language, University of California, Berkeley
  • B.A., magna cum laude, State University of New York
  • Ranked in California for prosecution and strategy in the World Trademark Review 1000
  • Named a leading practitioner in the "Guide to the World's Leading Women in Business Law" by ExpertGuides (2013)
  • Listed for trademark in The World's Leading Trademark Professionals 2012 (World Trademark Review 1000)
  • Listed for trademark work in WHO'S WHO LEGAL's 2009 California directory
  • Recognized as one of the "World's Leading Lawyers" for trademark law in Legal Media Group's Expert Guides
  • "Trademark Insider Award" for her U.S. trademark activity by NameProtect in 2003 and 2004
  • Named among the BTI Consulting Group's 2002 Law Firm Client Service All-Star Team, based on a survey of client service and satisfaction
  • American Bar Association
  • Intellectual Property Section, State Bar of California
  • Bar Association of San Francisco
  • Chair of the Trade Dress Image Library Subcommittee of the Online Reference Committee, INTA (2012-2014)

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