Legal Alert: Summary of Selected Sessions from International Trademark Association's 2006 Annual Meeting

Transcription

1 Legal Alert: Summary of Selected Sessions from International Trademark Association's 2006 Annual Meeting June 29, 2006 Last month, the International Trademark Association (INTA) hosted its annual meeting in Toronto, Canada. The meeting is a great opportunity to catch up with old friends, and perhaps meet new ones, and is considered the one must-attend event in the intellectual property industry. Sutherland Asbill & Brennan hosted a brunch at CN Tower, which we hope you were able to attend. The weather was beautiful and the views from the world s tallest building were great. Because not all of our clients and friends can attend INTA s Annual Meeting, and even those who do take part in the event can only attend a few of the sessions, we wanted to send a summary of certain selected seminars and workshops of general interest to our clients and others. This year, five of our intellectual property attorneys attended the meeting and prepared summaries of the topics presented below. Table of Contents 1. USPTO/TTAB Electronics Procedures Taking the Fear Out of Electronic Filing 2. International Online Filing and Procedures 3. Passport to International Filing Strategy 4. Are We Speaking the Same Language? A Comparison of Canadian, U.S., and Community Trademark Laws 5. What U.S. Trademark Lawyers Should Know About Anticounterfeiting, Customs, and Crossing the Border 6. IP Audits: The What, Why, Who and How on this Important Process 7. Internet Hot Topics 8. Using the Internet for Trademark Enforcement Identifying Infringers on the Internet This article is for informational purposes and is not intended to constitute legal advice. 1

2 USPTO/TTAB Electronics Procedures Taking the Fear Out of Electronic Filing Representatives from the United States Patent and Trademark Office (USPTO) presented the latest procedures and newest forms for e-filing. The USPTO currently offers 21 online forms as well as 3 forms relating to international filings under the Madrid Protocol. Currently, more than 93% of applications are filed through the USPTO s Trademark Electronic Application System (TEAS). Craig Morris, USPTO TEAS Project Manager, advised that the USPTO is in the process of developing forms that will accept pdf attachments and potentially WAV/MP3 file formats. Modifications to the Statement of Use form are in the design stage and will include a Petition to Divide. Mr. Morris provided an actual demonstration of filing an electronic application and entertained questions from the audience based on their own experience with TEAS. Two practical tips from the seminar include: (1) avoid formatting problems by saving a Word document and then converting to text format when cutting and pasting information into a TEAS or ESTTA online form; and (2) send an to TMIDSUGGEST@uspto.gov with any suggested additions or deletions to the Trademark Manual of Examining Procedure. J. David Sams, Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board, provided attendees with an overview of the Electronic System for Trademark Trial & Appeals (ESTTA). Mr. Sams noted that ESTTA is not directly part of TEAS but can be accessed from the TEAS front page of online forms. As of the end of April, approximately 94% of extensions of time to oppose are e-filed and automatically processed through ESTTA. The ESTTA system accepts pdf and tif file types and is widely utilized by trademark practitioners with 75% of Notices of Opposition filed online. Mr. Sams highlighted that ESTTA now permits parties to file confidential papers online and to submit online payment for counterclaims. Lastly, Mr. Morris noted that the USPTO s overall goal is to improve the functionality of existing forms and to increase the level of usage. International Online Filing and Procedures An international panel of speakers discussed the electronic filing of applications and other e-commerce services available in the Office of Harmonization in the Internal Market (OHIM) and the Canadian Intellectual Property Office (CIPO). This article is for informational purposes and is not intended to constitute legal advice. 2

3 OHIM recently implemented online electronic renewal since 10-year renewals are now coming due. Vincent O Reilly of OHIM stated that online renewal is simple and relatively easy to use. OHIM provides a Registrant with an immediate reply acknowledging receipt of the renewal. OHIM is in the process of developing online access to trademark files, and Mr. O Reilly indicated that once completed, OHIM would provide free access to trademark file records, similar to the USPTO s Trademark Document Retrieval (TDR) system. Mr. O Reilly could not provide attendees with a rollout target date for the free service. Nathalie La Fountaine of CIPO advised that approximately 85% of applications are now filed online. Although the application filing system for Canada may be navigated with relative ease, only Applicants or Trademark Agents may use the system. Ms. La Fountaine also provided an actual demonstration of filing an application. Passport to International Filing Strategies An international panel of speakers discussed the different filing strategies used around the world for trademark registration with a special emphasis placed on emerging issues and the interrelationships between the systems. The panelists discussed registration of trademarks through national/local trademark offices and the following international filing systems: SYSTEM Benelux Community Trade Mark Madrid International System African Regional Industrial Property (ARIPO) OAPI (African Union Territories) COUNTRIES Belgium, Netherlands, and Luxembourg Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, United Kingdom, Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia, and Slovakia Centralized filing system with 78 member countries Benin, Burkina Faso, Cameroon, Central Africa, Congo, Cote d'ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, and Togo Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia, and Zimbabwe To create a cost-effective and comprehensive international filing strategy, one must consider the availability of the international treaties and filing systems listed above, and identify core markets based on population, purchasing power, and piracy countries. Recommended This article is for informational purposes and is not intended to constitute legal advice. 3

4 factors that should be taken into account include projected marketing plans and license and distribution agreements. Once a country list has been compiled, it is best to determine costs by obtaining fee schedules for searches, initial trademark application filing, and renewal and maintenance. Costs for investigation of high piracy countries and customs enforcement policies should be considered as well. In this regard, it was noted that the top 10 piracy countries based on a software piracy study conducted by the Business Software Association of Australia include Vietnam, China, Ukraine, Indonesia, Zimbabwe, Russia, Nigeria, Algeria, Pakistan and Paraguay. This information is crucial for evaluating the pros/cons of the various filing systems in order to create a practical and effective trademark protection strategy. The discussion then focused on the interrelationships between the systems and the emerging issues that influence the type of international system used in order to craft an effective and comprehensive trademark filing strategy to maximize cost savings. Are We Speaking the Same Language? A Comparison of Canadian, U.S., and Community Trademark Laws An international panel of speakers discussed differences in trademark registration laws in the United States, Canada, United Kingdom, and the European Union. The generalized standards for registrability are outlined in the table below. 3D marks Color marks Slogans Smell marks Sound marks Non-English marks UNITED STATES CANADA UNITED KINGDOM EUROPEAN UNION Provided it is distinctive of If it is functional, it is not Must differ considerably Must differ considerably the products or services. from product and have from product and have Color alone is registrable if it has acquired distinctiveness, and it is used in a specific shape or design. Slogan is registrable if it is not descriptive, laudatory, or informational. Smell mark is registrable if it is not functional. Songs are not registrable, but if tune has acquired distinctiveness and can be described, then it is Mark must be translated and transliterated. Exceptions are allowed for dead Color alone not Slogan must be used on the product. Smell mark is not Sound mark is not Likelihood of confusion is measured trifold: French speakers, English acquired distinctiveness. Color alone not Slogan is registrable if it is not descriptive. In principle it is registrable, but it is difficult. In principle it is registrable, but it is difficult. Law and practice still being determined but generally registration acquired distinctiveness. Color alone not Difficult to register, and it must be used as a trademark. In principle it is registrable, but it is difficult. In principle it is registrable, but it is difficult. Mark deemed descriptive in any EU country is rejected. But, the rule is This article is for informational purposes and is not intended to constitute legal advice. 4

5 languages and obscure languages. The doctrine of equivalents applies mark in one language is deemed to be the same mark in English. speakers, and bilingual speakers. A finding of likelihood of confusion in one will deem the mark un For marks in other languages, the measure is against that language. will only be objected to if the consumer would recognize the foreign term as generic. not retroactive to existing marks when new countries/languages are added. What U.S. Trademark Lawyers Should Know About Anticounterfeiting, Customs, and Crossing the Border This panel provided practical advice for U.S. companies whose products cross the border. The panel discussed the duty of the U.S. Customs and Border Protection (CBP) agency to enforce the laws that provide for the enforcement of trademarks, 15 U.S.C (the Lanham Trademark Act). CBP s task is to prohibit the entry of merchandise that copies or simulates trade names or registered trademarks. To enlist the assistance of CBP, a U.S. trademark registrant must record its trademark or trade name rights with the CBP. However, with the vast number of products that cross our borders, it is impossible for Customs officials to search every container for trademark violations. To assist CBP, the panel recommended a two-tier Customs Alert program: 1. Education. The first step is to educate the Customs officials on the particulars of the product that has or may be imported illegally. U.S. Customs officials benefit greatly by being given a list of authorized manufacturers, the correct U.S. shipping address, and distinguishing features of the product itself (such as the material or labeling.) 2. Access. The second step is to provide ready access to the company or its representative when issues arise. The use of a hotline allows the company to immediately respond to the Customs officials and to its consumers. IP Audits: The What, Why, Who, and How on this Important Process This panel provided a useful overview of the nuts and bolts of IP audits: WHY conduct an IP Audit? There are many reasons to conduct an IP audit. An audit can be used to help complete a transaction, for valuation purposes, and to cultivate and implement a strategy for the organization This article is for informational purposes and is not intended to constitute legal advice. 5

6 to maximize and leverage its IP assets. To make the best use of its resources in this important process, a company should conduct its IP audit with a view toward the future. WHO should be involved in the IP Audit process? When putting together an audit team, there are a number of important considerations. First, it is imperative to have people on the team who are familiar with the company s IP assets, corporate history, and infrastructure. Secondly, it is important to ensure that the people on the team are able to implement the action items which will be necessary to carry out the audit successfully. Finally, the legal personnel who generally handle the organization s IP portfolio are a vital part of a successful audit team. HOW should a company go about conducting an IP Audit? An IP audit can be as simple or complex as the organization sees fit. The first step in any successful IP audit is identifying the goals, timeline, and budget for the audit. Below are a number of audit tools which could be used separately or together to conduct a successful IP audit. Status and Title. A review to ensure that all statutory requirements have been met with regard to any patents, trademarks, and copyrights. This review should also investigate the chain of title for each IP asset. The audit should also address the action items necessary to maintain the status of the IP assets into the future and the costs of such maintenance. Review of the File History. In order to understand the nature of the IP asset, it may be necessary to review the registration or prosecution history. Agreements. A review of any license or assignment agreements in order to ensure compliance with the terms of the agreements and statutory compliance. (Potential) Litigation. This includes a review of legal opinions related to the asset, any challenges to the asset as well as an examination of the company s enforcement of the rights associated with each IP asset. IP Notices. A review of the organization s labels, products, web site, etc., in order to ensure that the proper statutory markings are being used. Trademark Use. This is a two-fold review to ensure (1) consistent use that strengthens the marks; and (2) that unregistered marks are not being used without clearance. Third-Party Rights. Aimed at understanding whether third parties own patents or trademarks which the organization may have some interest in acquiring. This article is for informational purposes and is not intended to constitute legal advice. 6

7 Hidden IP Assets. Determining whether the organization has assets it is unaware of or underutilizing or whether there are plans on the horizon which will require IP attention. Underperforming IP Assets. A review of the IP assets to ensure that is worth maintaining. Some Suggestions from an In-House Perspective everything the organization owns 1. Know the right people in your organization. To conduct an IP Audit, the team member(s) will need to have the following contacts: Business or Technical Contacts; Corporate Governance Contacts; Mergers & Acquisitions Team; Marketing/Advertising Departments; Web Master/Web Team; and Domain Name Administrator. 2. Know your IP software. It is best to use one docketing system for all IP in order to keep matters simple. Keeping the software up-to-date will provide you with top-of-the-line functionality. In addition, whenever conversions take place, it is important to ensure that the data is properly converted. It is also useful to know the invoicing and labeling systems in order to have an accurate idea of how the IP is being used. 3. Know your IP. In addition to knowing the status and title of the company s patents, trademarks, domain names, trade secrets and copyrights, you should evaluate Confidentiality Agreements, Inter-Company Licensing Agreements, Third-Party Licensing Agreements, and Settlement Agreements/Concurrent Use/Consents. Hot Internet Topics This informative and spirited panel discussion centered on the current trademark policies of Google and Yahoo! Representatives from Google and Yahoo! sought to articulate their companies current policies concerning use of third-party trademarks as paid search engine keywords on the Google and Yahoo! search engines. Yahoo! s representative indicated that the Yahoo! trademark policy prohibits the sale of trademarks as search engine keywords to parties that are not affiliated with, or approved by, the trademark owner. Upon receipt of notice from the trademark owner or its legal representative, Yahoo! will discontinue any such keyword sales to unaffiliated parties. Google s trademark policy differs substantially from Yahoo! s policy. Google will sell trademarks as search engine keywords to parties that are not affiliated with the trademark owner as long as the trademark does not appear in the heading or text of the advertisement that is displayed. However, Google will require the purchasing company to remove the trademark from This article is for informational purposes and is not intended to constitute legal advice. 7

8 the heading and text of the advertisement upon receipt of notice of such use from the trademark owner or its legal representative. Notably, Google s trademark policy outside of the United S tates and Canada is identical to Yahoo! s policy, i.e., any third-party use of trademarks as paid search engine keywords is prohibited. Google s representative on the panel acknowledged that Google is presently defending a number of trademark infringement lawsuits challenging the legality of its policy. Using the Internet for Trademark Enforcement Identifying Infringers on the Internet An international panel of speakers discussed the latest Internet tools available for identifying trademark infringers on the Internet and recording evidence of infringing use. Summaries of some of the more useful tools appear below. (We provide these summaries for information only, without recommendation, and cannot vouch for the quality of the services provided at any of these sites.) Copyscape ( allows a user to input a domain name to determine whether other web sites have copied content from the user s site. After a user inputs a domain name, Copyscape searches the Internet for web pages that contain content that is identical to that which appears on the user s site. Although finding all instances of online copyright infringement requires more investigation than the use of this site, it may be a helpful starting point. The basic version of Copyscape is available for free on its web site. DomainTools Domain History service ( has been archiving Whois records for more than five years and provides users with access to those records for a subscription fee. This service may be useful in those instances where a user needs a record of when an infringer registered an infringing web site. (The usual Whois information provides the date on which a record for a domain name was created in the Whois database, but does not specify whether the record was created by the current registrant of the domain name or by a previous registrant.) HTTrack ( is a free tool that allows a user to download a web site and store the site on the user s computer in the same configuration as the site appears on the Internet. The copy of the site contains the same directory configuration and includes all images and other files that appear on the active Internet site. The links on the copied site perform with the same functionality as the links on the active Internet site. Thus, a user who notices the unauthorized use of the user s trademark on an infringing site can use HTTrack to download and store a copy of the entire site. This tool can be especially helpful when infringing material appears on This article is for informational purposes and is not intended to constitute legal advice. 8

9 multiple pages within a site or when the linking structure between web pages on the site is relevant to understanding the scope of the infringement. The Internet Archive ( is a non-profit organization that offers free access to a vast collection of cached web pages. The collection for each web site contains a series of snapshots of how the site appeared on given dates. After inputting a web address, a user can retrieve the snapshots to see how the web site has changed over time. This tool may be helpful when a user wants to see how an infringer has used an infringing site or domain name in the past, in order, for example, to determine whether the infringer had bad faith intent when the infringer registered the domain name. If you are interested in more information about the subjects discussed in these summaries, or any other intellectual property matter, please contac t one of the attorneys below or the attorney you frequently work with in Sutherland s Intellectual Property Group. Elisabeth A. Langworthy elisabeth.langworthy@sablaw.com Patricia Bayer Cunningham patricia.cunningham@sablaw.com James H. Johnson james.johnson@sablaw.com David E. Weslow david.weslow@sablaw.com Bradley E. Prendergast brad.prendergast@sablaw.com This article is for informational purposes and is not intended to constitute legal advice. 9