Fundamentals of Trademark Law in the Global Marketplace 2016
|
|
- Ruby Bruce
- 5 years ago
- Views:
Transcription
1 INTELLECTUAL PROPERTY Course Handbook Series Number G-1278 Fundamentals of Trademark Law in the Global Marketplace 2016 Co-Chairs Lynn S. Fruchter Jeffery A. Handelman Anne Hiaring Hocking To order this book, call (800) 260-4PLI or fax us at (800) Ask our Customer Service Department for PLI Order Number , Dept. BAV5. Practising Law Institute 1177 Avenue of the Americas New York, New York 10036
2 3 Fundamentals of Trademark Law in the Global Marketplace Adam D. Resnick Mosaic Legal Group, PLLC If you find this article helpful, you can learn more about the subject by going to to view the on demand program or segment for which it was written. 115
3 116 Practising Law Institute
4 FUNDAMENTALS OF TRADEMARK LAW IN THE GLOBAL MARKETPLACE Practising Law Institute Presented by: Adam D. Resnick Mosaic Legal Group, PLLC Washington, DC Date: July 12,
5 What is a Trademark? Trademarks are words, names, symbols, designs, or other distinctive items which serve to identify the source of goods or services and distinguish them from those sold by others. Fundamentals of Trademark Law in the Global Marketplace 2 118
6 What is a Trademark? Trademarks symbolize goodwill Trademarks are important advertising tools Trademarks aid consumers Trademarks are exclusive rights Fundamentals of Trademark Law in the Global Marketplace 3 119
7 Items Which Can Serve as Trademarks Words Names Symbols Combinations of words and designs (i.e., logos) Fundamentals of Trademark Law in the Global Marketplace 4 120
8 Items Which Can Serve as Trademarks Trade dress, e.g., package designs and product configurations Sounds Scents Colors Fundamentals of Trademark Law in the Global Marketplace 5 121
9 Fundamentals of Trademark Law in the Global Marketplace 6 122
10 Fundamentals of Trademark Law in the Global Marketplace 7 123
11 Fundamentals of Trademark Law in the Global Marketplace 8 124
12 Types of Marks Trademarks Service marks Certification marks Collective marks Fundamentals of Trademark Law in the Global Marketplace 9 125
13 Fundamentals of Trademark Law in the Global Marketplace
14 Fundamentals of Trademark Law in the Global Marketplace
15 Fundamentals of Trademark Law in the Global Marketplace
16 Fundamentals of Trademark Law in the Global Marketplace
17 Creation of Trademark Rights Trademark rights can be based on common law, state statute, or the federal Trademark Act of 1946 (as amended), also known as the Lanham Act Federal registration is not a prerequisite for trademark rights, although registration confers key benefits and rights Fundamentals of Trademark Law in the Global Marketplace
18 Creation of Trademark Rights Trademark rights can be acquired without registration, under the common law and Section 43(a) of the Lanham Act (which deals with unfair competition), by using a mark in commerce as a trademark However Geographic limitations Lack of federal statutory presumptions and other benefits Fundamentals of Trademark Law in the Global Marketplace
19 Creation of Trademark Rights Federal registration after use enhances common law rights already acquired and provides additional rights, such as a nationwide right of priority as of the filing date Contingent trademark rights can be acquired prior to use by filing an application to federally register the mark stating an intent to use the mark Fundamentals of Trademark Law in the Global Marketplace
20 Creation of Trademark Rights The filing of the application constitutes constructive use and confers a nationwide right of priority The applicant must have a bona fide intent to use the mark in commerce The application must be followed by use in commerce, unless registration is based on a foreign or International Registration Fundamentals of Trademark Law in the Global Marketplace
21 Creation of Trademark Rights Rights based on an intent-to-use application cannot be enforced until the mark is registered, except to block or oppose registration of a later-filed mark Rights are extinguished if the application does not mature to registration, except that any common law use-based rights will remain Fundamentals of Trademark Law in the Global Marketplace
22 US Rights Based On Foreign Rights The Paris Convention Trademark rights (and a registration) can be acquired without use by basing a US application on a previously filed foreign application or registration under Section 44 of the Lanham Act, which implements the Paris Convention trademark treaty. A foreign applicant can base a U.S. application on a pending application in a foreign country, provided the U.S. application is filed within six months of the filing of the foreign application. Fundamentals of Trademark Law in the Global Marketplace
23 US Rights Based On Foreign Rights The Paris Convention The foreign filing date becomes the effective U.S. filing date, rather than the actual, later U.S. filing date. An application can also be based on a foreign registration that has already issued. In both cases, the application must allege a bona fide intent to use the mark in the U.S., however, no use of the mark in the U.S. is necessary in order for the application to mature into a registration (although it will be vulnerable to later attack on grounds of abandonment and/or nonuse). Fundamentals of Trademark Law in the Global Marketplace
24 US Rights Based On Foreign Rights The Madrid Protocol U.S. trademark rights can also be acquired based on an International Registration pursuant to the Madrid Protocol, under Section 66 of the Lanham Act. A foreign applicant can utilize the Madrid Protocol in the United States if the applicant is domiciled in a country which is a member of the Protocol. Fundamentals of Trademark Law in the Global Marketplace
25 Determining Priority In general, the first to file a federal trademark application in good faith achieves nationwide priority over all except a prior user in its region of use and anticipated region of expansion. A filing based solely on an intent to use must be perfected via use and registration to maintain and enforce the priority rights. If neither party has filed, and both rely upon the common law, then there will be a comparison of the dates of first use. Fundamentals of Trademark Law in the Global Marketplace
26 Determining Priority A filing based on a pending foreign application under the Paris Convention, or on a combination of the Paris Convention and the Madrid Protocol, may achieve a priority date up to six months earlier than the actual U.S. filing date. If the home country or basic application matures into a registration, the applicant does not need to use the mark in the U.S. in order to obtain a U.S. registration. Fundamentals of Trademark Law in the Global Marketplace
27 Determining Priority Even if the foreign application does not mature into a registration, if the applicant asserts an additional basis for registration, such as intent-to-use in the U.S., and fulfills that basis, the applicant can drop the foreign basis for the application and the registration will issue with the priority filing date preserved. Fundamentals of Trademark Law in the Global Marketplace
28 Determining Priority Example I: Company X files for a mark on January 1, 2016, based on intent to use. Company Y begins using a confusingly similar mark on February 1, Company X then begins using its mark on March 1, Who has priority? Fundamentals of Trademark Law in the Global Marketplace
29 Determining Priority Company X. However, if, for some reason, X cannot perfect its priority date by getting a registration, then Y will prevail, because it has prior use. Fundamentals of Trademark Law in the Global Marketplace
30 Determining Priority Example II: Company X begins using a mark on January 1, 2016, and files an application the same day. Company Y, an Italian company, files an application for a confusingly similar mark on February 1, 2016, based on intent to use, and also based on an application filed in Italy on December 31, Company Y begins using its mark on January 1, 2016, drops its Italian application as a basis for U.S. registration, and now seeks a U.S. registration based solely on use. Who has priority? Fundamentals of Trademark Law in the Global Marketplace
31 Determining Priority Company Y, by one day. The Paris Convention affords Y a constructive U.S. filing date of December 31, 2015, based on the Italian filing date. Even though Y eventually dropped the Convention as a basis for U.S. registration, the priority date survives. Serious implications when evaluating trademark clearance searches Fundamentals of Trademark Law in the Global Marketplace
32 Trademark Protection Under State Law Common Law Registration Fundamentals of Trademark Law in the Global Marketplace
33 Trademark Protection in Foreign Countries Trademark rights are territorial No single international protection or registration system Each system has its own laws and registration system In most countries, unlike the U.S., rights are heavily dependent upon registration, and use prior to registration is not required Fundamentals of Trademark Law in the Global Marketplace
34 Trademark Protection in Foreign Countries Paris Convention Madrid Protocol, Madrid Agreement European Union EUTM system Fundamentals of Trademark Law in the Global Marketplace
35 Benefits of Federal Registration Nationwide right of priority as of the application filing date Constructive notice of trademark rights as of the registration date Registration certificate is evidence of the registrant s rights Incontestability Fundamentals of Trademark Law in the Global Marketplace
36 Benefits of Federal Registration Use of the symbol Blocks importation of goods bearing infringing/counterfeit trademarks via recordation with the U.S. Customs Service Basis for foreign registration under the Paris Convention and the Madrid Protocol Fundamentals of Trademark Law in the Global Marketplace
37 Strength of Marks: The Spectrum of Distinctiveness Coined or fanciful marks Arbitrary marks Suggestive marks Descriptive marks Can be protected upon acquisition of distinctiveness Generic terms Fundamentals of Trademark Law in the Global Marketplace
38 Strength of Marks: The Spectrum of Distinctiveness Acquisition of distinctiveness ( secondary meaning ) for descriptive marks via use and promotion Presumption of distinctiveness if used substantially exclusively and continuously for five years - Lanham Act Section 2(f) Distinctiveness can be acquired earlier in certain cases Declarations as to use, promotion, advertising, sales, website hits, etc. Consumer declarations Recognition in press Ability to date the acquisition of distinctiveness can be critical in priority battles Rights may be geographically limited if only common law-based Fundamentals of Trademark Law in the Global Marketplace
39 Product Configurations and Trade Dress Must be distinctive and nonfunctional A design feature is functional if it has a utilitarian purpose, i.e., a purpose other than to identify the source of the item. Under two key Supreme Court cases in this area, if the trade dress is the configuration of the product itself: The claimant must show that is has acquired distinctiveness. It cannot be considered inherently distinctive. If the design feature was once the subject of a utility patent, there will be a strong presumption that the feature is functional and not protectable trade dress. Fundamentals of Trademark Law in the Global Marketplace
40 Special Trademark Species Colors Sounds Scents Internet Domain Names Prone to infringement problems because names confusingly similar to trademarks are not automatically blocked Problem is likely to be exacerbated due to newly introduced gtlds Fundamentals of Trademark Law in the Global Marketplace
41 Fundamentals of Trademark Law in the Global Marketplace
42 Fundamentals of Trademark Law in the Global Marketplace
43 Fundamentals of Trademark Law in the Global Marketplace
44 Fundamentals of Trademark Law in the Global Marketplace
45 Fundamentals of Trademark Law in the Global Marketplace
46 Fundamentals of Trademark Law in the Global Marketplace
47 Fundamentals of Trademark Law in the Global Marketplace
48 Fundamentals of Trademark Law in the Global Marketplace
49 Fundamentals of Trademark Law in the Global Marketplace
50 Fundamentals of Trademark Law in the Global Marketplace
51 Trademark Conflicts Infringement occurs when someone uses a name or mark which is so similar to the trademark of a senior trademark owner for related goods so as to cause a likelihood of confusion, mistake or deception as to the source of goods or services Fundamentals of Trademark Law in the Global Marketplace
52 Trademark Conflicts Actionable in: The U.S. Patent and Trademark Office The Courts ADR For internet domain names: The Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) Fundamentals of Trademark Law in the Global Marketplace
53 Trademark Conflicts Likelihood of Confusion Factors Similarity of Marks Strength of Marks Relatedness of Goods or Services Channels of Trade Fundamentals of Trademark Law in the Global Marketplace
54 Trademark Conflicts Likelihood of Confusion Factors Type of Consumers Cost of Goods or Services Intent Actual Confusion Fundamentals of Trademark Law in the Global Marketplace
55 Dilution of famous marks is actionable Famous trademarks are protected from dilution (weakening) under Section 43(c) of the Lanham Act (this section was substantially overhauled in October, 2006) The meaning of dilution: Dilution by blurring Dilution by tarnishment Relief is available if there is a likelihood of dilution of the plaintiff s mark A likelihood of confusion need not be shown Fundamentals of Trademark Law in the Global Marketplace
56 Dilution of famous marks is actionable The mark must be famous to qualify Fame means widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark s owner Factors for determining fame are listed in the statute Federal registration not required (but helpful) Fundamentals of Trademark Law in the Global Marketplace
57 Fundamentals of Trademark Law in the Global Marketplace
58 Fundamentals of Trademark Law in the Global Marketplace
59 Fundamentals of Trademark Law in the Global Marketplace
60 Fundamentals of Trademark Law in the Global Marketplace
61 Fundamentals of Trademark Law in the Global Marketplace
62 Dilution of famous marks is actionable Injunctive relief available; damages available only if willfulness is proved USPTO will deny or cancel registration of a mark likely to cause dilution of a famous mark upon successful challenge by the owner of the famous mark in an opposition or cancellation proceeding. Fair use, use in news reporting or commentary, and noncommercial use of a famous mark are not actionable Fundamentals of Trademark Law in the Global Marketplace
63 Dilution of famous marks is actionable State dilution statutes Available in approximately 38 states State registration usually not required Distinctiveness usually required, but fame required in only about 12 states Fundamentals of Trademark Law in the Global Marketplace
64 Loss of Trademark Rights Duration of rights Abandonment Failure to prosecute infringers Licensing without quality control Genericide e.g., ASPIRIN (Bayer AG), ESCALATOR (Otis Elevator), THERMOS (Thermos GmbH), YO-YO (Duncan Yo-Yo), and others. Fundamentals of Trademark Law in the Global Marketplace
65 NOTES 178
Trademark Law. Prof. Madison University of Pittsburgh School of Law
Trademark Law Prof. Madison University of Pittsburgh School of Law A growing glossary of trademark law terms and concepts: 1. The mark, as a general concept (vs. symbol, vs. brand) 2. The mark in a particular
More informationTRADEMARK REGISTRATION BASICS
TRADEMARK REGISTRATION BASICS HB Litigation Conferences presents Trademark Selection, Protection & Litigation: A Crash Course for Associates December 10, 2009 Janet Marvel Pattishall, McAuliffe, Newbury,
More informationUK Trade Marks A Brief Guide for Clients
UK Trade Marks A Brief Guide for Clients March 2016 v Obtaining Trade Marks in the United Kingdom A summary of the procedures and costs involved in obtaining a trade mark in the UK What is a trade mark?
More informationINTELLECTUAL PROPERTY ISSUES OF THE STARTUP VENTURE. TEIGE P. SHEEHAN, Ph.D.
INTELLECTUAL PROPERTY ISSUES OF THE STARTUP VENTURE by TEIGE P. SHEEHAN, Ph.D. Heslin Rothenberg Farley & Mesiti, P.C. Albany, NY 203 204 Intellectual Property Issues of the Startup Venture Teige P. Sheehan,
More informationIN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION
Case 3:10-cv-01979-L Document 1 Filed 09/30/10 Page 1 of 12 PageID 1 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION TRS QUALITY, INC., Plaintiff, v. YELL ADWORKS,
More informationSupported by. Yearbook 2014/2015. A global guide for practitioners. Fish & Richardson PC
Supported by Yearbook 2014/2015 A global guide for practitioners Fish & Richardson PC 24 Anti-counterfeiting 2014 A Global Guide Special focus Think globally, act globally: legal considerations for developing
More informationCase 1:16-cv Document 1 Filed 06/10/16 Page 1 of 16 IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
Case 1:16-cv-04333 Document 1 Filed 06/10/16 Page 1 of 16 CITIGROUP INC. 388 Greenwich Street New York, NY 10013, v. Plaintiff, AT&T INC. 208 South Akard Street Dallas, TX 75202; IN THE UNITED STATES DISTRICT
More informationSouth Korea. Contributing firm Kim & Chang. Authors Gene Kim Senior Partner In H Kim Foreign Legal Counsel
South Korea Contributing firm Kim & Chang Authors Gene Kim Senior Partner In H Kim Foreign Legal Counsel 313 South Korea Kim & Chang 1. Legal framework Trademarks, service marks and other marks may be
More informationTrademark Law Aspects of Distribution Contracts
Trademark Law Aspects of Distribution Contracts INTERNATIONAL SALES AND DISTRIBUTION Negotiating and Managing International Sales, Agency and Distributorship Contracts Seminar organised by UIA June 29,
More informationPharmaceutical Trademarks
Published by Pharmaceutical Trademarks 2012 United States Contributing firm Third Edition United States Contributing firm Authors Nick de la Torre and Jennifer Theis Selection, clearance and registration
More informationCalifornia Business Law PRACTITIONER
California Business Law PRACTITIONER Volume 22 / Number 1 Winter 2007 International Trademark Protection: An Overview of the Options by Michelle R. Watts Michelle R. Watts is an associate with Pillsbury
More informationWORLD INTELLECTUAL PROPERTY ORGANIZATION GENEVA STANDING COMMITTEE ON THE LAW OF TRADEMARKS, INDUSTRIAL DESIGNS AND GEOGRAPHICAL INDICATIONS
E WIPO SCT/1/3 ORIGINAL: English DATE: May 14, 1998 WORLD INTELLECTUAL PROPERTY ORGANIZATION GENEVA STANDING COMMITTEE ON THE LAW OF TRADEMARKS, INDUSTRIAL DESIGNS AND GEOGRAPHICAL INDICATIONS First Session
More informationTRADEMARK MATTERS IN THAILAND. Trademark Act (No.3) B.E (Become into effect since July 28, 2016)
TRADEMARK MATTERS IN THAILAND LEGISLATION: Trademark Act (No.3) B.E. 2559 (Become into effect since July 28, 2016) Marks Eligible for Registration: Trademark is a distinctive sign used in distinguishing
More informationProtecting Your Entertainment Client s Intellectual Property. Law Offices Of Kimberly Kolback
Protecting Your Entertainment Client s Intellectual Property Law Offices Of Kimberly Kolback TRADEMARKS Understand your client s trademarks and trademark use Music Lounge All rights reserved Kerven Dorcinvil
More informationWorld Trademark Review. Brinks Hofer Gilson & Lione. Pharmaceutical Trademarks 2013/2014. A Global Guide. Fourth Edition
World Trademark Review Pharmaceutical Trademarks 2013/2014 A Global Guide Fourth Edition United States Contributing firm Authors Nicholas de la Torre and Jennifer Theis Selection, clearance and registration
More information2012 APAA Trademark Committee Special Topics
2012 APAA Trademark Committee Special Topics "Protection of well-known marks from different perspectives" ISSUE 1: Finding of recognition of well-known marks Is there any possibility of finding a mark
More informationMONGOL Law of Mongolia on Trade Marks and Geographical Indications May 2, 2003 ENTRY IN FORCE: May 2, 2003
MONGOL Law of Mongolia on Trade Marks and Geographical Indications May 2, 2003 ENTRY IN FORCE: May 2, 2003 TABLE OF CONTENTS CHAPTER ONE General Provisions Article 1. Purpose of the Law Article 2. Legislation
More informationWinning with Trademarks. Copyright 2005, 2008, 2009 by Catherine Cary, Esq., LL.M. All rights reserved.
Winning with Trademarks Copyright 2005, 2008, 2009 by Catherine Cary, Esq., LL.M. All rights reserved. Winning with Trademarks By Catherine Cary ABOUT THE AUTHOR Catherine Cary, Esq., LL.M. is a certified
More informationDECISION. The grounds for the present Opposition are as follows:
NBA PROPERTIES, INC., } Inter Partes Case No. 3693 Opposer, } Opposition to: } } Serial No. : 70791 -versus- } Date Filed : February 7, 1990 } Trademark : LAKERS } Goods : Men s briefs & t-shirts HERIBERTO
More informationINTA s Comments on the Modernisation of the trade part of the EU - Chile Association Agreement Introduction
INTA s Comments on the Modernisation of the trade part of the EU - Chile Association Agreement (EU-Chile Free Trade Agreement), EU s Textual Proposal for an Intellectual Property Chapter April 2018 Introduction
More information2012 APAA Trademark Committee Special Topics
2012 APAA Trademark Committee Special Topics "Protection of well-known marks from different perspectives" ISSUE 1: Finding of recognition of well-known marks Is there any possibility of finding a mark
More informationSummary Report. Question Q214. Protection against the dilution of a mark
Summary Report Question Q214 Protection against the dilution of a mark The purpose of this question is to examine national and international legislation and case law in respect of protection against trademark
More informationLAW OF MONGOLIA ON TRADE MARKS AND GEOGRAPHICAL INDICATIONS
2 nd May 2003 Ulaanbaatar city LAW OF MONGOLIA ON TRADE MARKS AND GEOGRAPHICAL INDICATIONS CHAPTER ONE General Provisions Article 1. Purpose of the Law 1.1. The purpose of this law shall be to ensure the
More informationUNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ECF CASE DEFENDANTS ANSWER AND COUNTERCLAIMS
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK CITIGROUP INC., v. Plaintiff, AT&T SERVICES, INC.; AT&T INTELLECTUAL PROPERTY LLC; and AT&T INTELLECTUAL PROPERTY II, L.P., CASE NO. 1:16-CV-04333-KBF-RLE
More informationDECISION. "1. The approval of Application Serial No is contrary to Section 4(d) of Republic Act No. 166, as amended.
WILFRO P. LUMINLUN, } INTER PARTES CASE NO. 3704 Opposer, } Opposition to: } Application Serial No. 70197 -versus- } Filed: November 29, 1989 } Trademark: "Bar Design (with the } Colors Blue, Red, } and
More informationIP DUE DILIGENCE. Mark I. Feldman DLA Piper US LLP (312)
IP DUE DILIGENCE Mark I. Feldman DLA Piper US LLP (312) 368-7084 mark.feldman@dlapiper.com Mark I. Feldman Mark I. Feldman is a partner at the Chicago office of DLA Piper US LLP where he was the national
More informationInternational Centre for Dispute Resolution. New gtld String Confusion Panel EXPERT DETERMINATION
International Centre for Dispute Resolution New gtld String Confusion Panel Re: 50 504 00245 13 < Neustar, Inc.>, OBJECTOR and < Charleston Road Registry >, APPLICANT String: The parties EXPERT
More informationARIZONA STATE UNIVERSITY COLLEGE OF LAW INTERNATIONAL INTELLECTUAL PROPERTY LAW 691 FINAL EXAMINATION. 24-Hour Take Home. Fall 2004 Model Answer
ARIZONA STATE UNIVERSITY COLLEGE OF LAW INTERNATIONAL INTELLECTUAL PROPERTY LAW 691 FINAL EXAMINATION 24-Hour Take Home Fall 2004 Model Answer Instructions RELEASABLE X EXAM NO. This examination consists
More informationIntellectual Property and the Franchising Business Model
Intellectual Property and the Franchising Business Model Recipe For Success Franchising is a proven route to rapid expansion by taking a successful business in one location and replicating it across multiple
More informationTrademark registrations
Trademark registrations General information Trademark legislation in the Trademark registration - (non) Registrable trademarks - Applicant - Requirements for filing - Examination for registration - Appeal
More informationBREXIT INTA Position on Intellectual Property Rights Issues October 2017
14B rue de la Science, 1040 Brussels, Belgium Tel: +32 2 880 3720 Fax: +32 2 808 8464 inta.org BREXIT INTA Position on Intellectual Property Rights Issues October 2017 The International Trademark Association
More informationQUESTION PAPER REFERENCE FC5 MARKS AWARDED 77. a) At the EUIPO, or at a national office of an EU member state.
QUESTION PAPER REFERENCE FC5 MARKS AWARDED 77 Question 1 a) At the EUIPO, or at a national office of an EU member state. b) A request for registration. Information identifying the applicant. A representation
More informationTrademarks Law. Chapter 1 General Provisions
Draft April 24, 2013 Draft Amendments are in Track Changes Trademarks Law Chapter 1 General Provisions The Basis Article 1: This law has been enacted in the light of the provisions of Article 11 of the
More informationNOT RECOMMENDED FOR PUBLICATION File Name: 15a0138n.06. No UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT ) ) ) ) ) ) ) ) ) ) )
NOT RECOMMENDED FOR PUBLICATION File Name: 15a0138n.06 UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT NETJETS INC.; COLUMBIA INSURANCE COMPANY, v. Plaintiffs-Appellants, INTELLIJET GROUP, LLC, dba
More informationProtection against the dilution of a trade mark. The Groups are invited to answer the following questions under their national laws:
Question Q214 National Group: The Philippines Title: Protection against the dilution of a trade mark Contributors: Aleli Angela G. Quirino John Paul M. Gaba Maria Isabel M. Llave Maria Bienvenida Angelica
More informationInfringement of trademarks by goods in transit. Ethan HORWITZ
Question Q230 National Group: United States Title: Infringement of trademarks by goods in transit Contributors: Maria SCUNGIO Ethan HORWITZ Reporter within Working Committee: Maria Scungio Date: 20 June
More informationFundamentals of Trademark
Fundamentals of Trademark Categories of IP Rights Intellectual Properties Patent Trade Mark Industrial Design Copyrights Intangible assets Monopolistic right ( to make, sell or otherwise deals with) Limited
More informationRE: INTA Comments on the WHO Framework Convention on Tobacco Control
Jean-Philippe Mochon Legal Affairs Department Permanent Representation of France to the EU Place de Louvain 14 B-1000 Brussels, BELGIUM 5 November 2008 RE: INTA Comments on the WHO Framework Convention
More informationInternational Trademark Filing Strategies
International Trademark Filing Strategies IIPLA 2 nd Annual Meeting San Jose, CA October 9 & 10, 2017 David M. Silverman, Partner Davis Wright Tremaine LLP Washington, D.C. DavidSilverman@ Filing Bases
More informationGray Market Goods and Recording with U.S. Customs
Gray Market Goods and Recording with U.S. Customs BESIDES SECTION 526, WHAT ARE THE ALTERNATIVE MEASURES FOR TRADEMARK ENFORCEMENT D. BERYL GARDNER, ESQ. MARCH 26, 2010 UNIVERSITY OF BALTIMORE SCHOOL OF
More informationNon-Registered Marks as a Base for Oppositions in Bulgaria
Non-Registered Marks as a Base for Oppositions in Bulgaria Introductory Notes The Right to Oppose Bulgaria is a Member State of the European Union since 1 January 2007 and its legislation is generally
More informationREGISTERING YOUR TRADE-MARK... SOMETHING TO THINK ABOUT
REGISTERING YOUR TRADE-MARK... SOMETHING TO THINK ABOUT CATHERINE BERGERON * LAWYERS, PATENT AND TRADE-MARK AGENTS It is well known that the value of a trade-mark may sometimes be greater than the value
More informationTrademark Basics Explained In Plain English. Sarah F. Hawkins Attorney at Law
Trademark Basics Explained In Plain English Sarah F. Hawkins Attorney at Law http://sarafhawkins.com/trademark-laws-faq/ What is a trademark? Generally, a trademark is a word, phrase, logo, symbol, or
More informationOur congratulations go also to the other Officers of the Conference.
OPENING STATEMENT BY THE REPRESENTATIVE OF THE INTERNATIONAL TRADEMARK ASSOCIATION (INTA) TO THE DIPLOMATIC CONFERENCE FOR THE ADOPTION OF A NEW ACT OF THE LISBON AGREEMENT ON APPELLATIONS OF ORIGIN AND
More informationMARQUES BREXIT POSITION PAPER
Executive Summary MARQUES BREXIT POSITION PAPER Brexit has the potential to be a material threat to the interests of the significant number of businesses that own and/or rely on valuable trade mark, design
More informationIntellectual Property
Hedge The Fund LAW REPORT hedge fund law and regulation Intellectual Property Names: What a Manager Should Do Before It Starts Using a Name By David Nissenbaum and Scott M. Kareff, Schulte Roth & Zabel
More informationNINTENDO COMPANY LIMITED IPC 3592 Opposer, - versus - Opposition to: TM Application No (Filing Date: 12 September 1987) CHONG KOH TENG,
NINTENDO COMPANY LIMITED IPC 3592 Opposer, - versus - Opposition to: TM Application No. 62765 (Filing Date: 12 September 1987) CHONG KOH TENG, Respondent-Applicant. TM: SUPER MARIOBROS x-----------------------------------------------x
More informationx x Decision No DECISION
TOTAL S.A., IPC 14-2007-00074 Opposer, - versus - Opposition to: TM Application No. 4-2004-003869 (Filing Date: 29 April 2004) COMET OIL PHILIPPINES, INC., Respondent-Applicant. TM: LUNAR x-----------------------------------------------x
More informationUnited Arab Emirates. Contributing firm Al Shaali & Co Advocates and Legal Consultants IP Division
United Arab Emirates Contributing firm Al Shaali & Co Advocates and Legal Consultants IP Division Author Rawan Sunna Legal framework In the United Arab Emirates, trademark protection is governed by Law
More information1 Typology of Acts of Infringement of Trademark Rights by Country
1 Typology of Acts of Infringement of Trademark Rights by Country The purpose of the trademark system of Japan is to protect business confidence that is embodied in registered trademarks. Several revisions
More informationEXPERT DETERMINATION LEGAL RIGHTS OBJECTION AC Webconnecting Holding B.V. v. United TLD Holdco Ltd Case No. LRO
ARBITRATION AND MEDIATION CENTER EXPERT DETERMINATION LEGAL RIGHTS OBJECTION AC Webconnecting Holding B.V. v. United TLD Holdco Ltd Case No. LRO2013-0006 1. The Parties The Objector/Complainant is AC Webconnecting
More informationIN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
Case 1:99-mc-09999 Document 189 Filed 04/29/11 Page 1 of 14 PageID #: 17184 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE COASTAL SUPPLY COMPANY, INC., v. Plaintiff, Civil Action No.
More informationInvestment Management Institute 2017
CORPORATE LAW AND PRACTICE Course Handbook Series Number B-2310 Investment Management Institute 2017 Volume Two Co-Chairs Barry P. Barbash Paul F. Roye To order this book, call (800) 260-4PLI or fax us
More informationA new approach to generic marks in Portugal The Law Firm of Gonçalo Moreira Rato
A new approach to generic marks in Portugal The Law Firm of Gonçalo Moreira Rato This text first appeared in the IAM magazine supplement 'Brands in the Boardroom 2007' April 2007 Feature Portugal A new
More informationUSPTO ISSUES FINAL RULES TO IMPLEMENT THE MADRID PROTOCOL FOR MULTINATIONAL TRADEMARK AND SERVICE MARK REGISTRATION
USPTO ISSUES FINAL RULES TO IMPLEMENT THE MADRID PROTOCOL FOR MULTINATIONAL TRADEMARK AND SERVICE MARK REGISTRATION October 27, 2003 The U.S. Patent and Trademark Office ("USPTO") has published final rule
More informationIntellectual Property Series: Cases of Beer Recent Intellectual Property and Litigation Developments in the Craft Beer and Distillery Industries
Intellectual Property Series: Cases of Beer Recent Intellectual Property and Litigation Developments in the Craft Beer and Distillery Industries lommen.com 800.752.4297 MN / WI / NY PANEL JEFF O BRIEN,
More informationJPO TRADEMARK PRACTICE
JPO TRADEMARK PRACTICE >Fist File, First Register Trademark Act is designed based on the philosophy, First File, First Register. Under the framework of Trademark Act, mere fact of prior use of a trademark
More informationPUBLIC CONSULTATION ON THE POSSIBLE REVISION OF THE TOBACCO PRODUCTS DIRECTIVE 2001/37/EC
PUBLIC CONSULTATION ON THE POSSIBLE REVISION OF THE TOBACCO PRODUCTS DIRECTIVE 2001/37/EC The Association Internationale Pour la Protection de la Propriété Intellectuelle ( AIPPI ) would like to offer
More informationReseller Agreement TeraByte Unlimited ( TeraByte )
TeraByte Unlimited ( TeraByte ) PLEASE READ THIS RESELLER AGREEMENT CAREFULLY BEFORE SELLING, RESELLING, DISTRIBUTING, TRANSFERRING, OR OFFERING FOR SALE OR RESALE ANY PACKAGED SOFTWARE PRODUCTS FROM TERABYTE.
More informationRomania Roumanie Rumänien. Report Q195. in the name of the Romanian Group by Alexandra VOICU, Gheorghe BUCSA and Eduard PAVEL
Romania Roumanie Rumänien Report Q195 in the name of the Romanian Group by Alexandra VOICU, Gheorghe BUCSA and Eduard PAVEL Limitations of the Trademark Protection Questions Note: the following topics
More informationInsurance Coverage for PATENT Disputes: A QUICK HIT. Presented By Caroline Spangenberg Kilpatrick Stockton LLP December 16, 2010
Insurance Coverage for PATENT Disputes: A QUICK HIT Presented By Caroline Spangenberg Kilpatrick Stockton LLP December 16, 2010 Overview Coverage Under Commercial General Liability Policies Advertising
More informationP1: GDZ Chap14 CY564-Unctad-v1 November 29, :51 Char Count= 0. 14: Trademarks
14: Trademarks Article 15 Protectable Subject Matter 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall
More informationPlain Packaging Questionnaire
Plain Packaging Questionnaire Introduction 1) In view of the Australian plain packaging legislation and similar legislative initiatives in a number of other jurisdictions, and following the workshop Plain
More informationDECISION. The grounds of the opposition are as follows:
DOW AGROSCIENCES L.L.C, } Inter Partes Case No. 14-2008-00194 Opposer, } Case Filed: 28 August 2008 } Opposition to: } -vs- } Appl n. Serial No. : 4-2007-012186 } Date Filed: 05 November 2007 } Trademark:
More informationOFFICE OF THE DIRECTOR GENERAL DECISION
Republic of the Philippines INTELLECTUAL PROPERTY OFFICE OFFICE OF THE DIRECTOR GENERAL S. V. MORE PHARMA CORP., Appeal No. 14-2013-0023 Respondent-Appellant, IPC No. 14-2010-00198 -versus- Opposition
More informationFastTrack Partner Program for Overland Storage Tandberg Data
FastTrack Partner Program for Overland Storage Tandberg Data FastTrack Partner Program Terms and Conditions This FastTrack Partner Program Terms and Conditions (this Agreement ) sets forth the terms and
More informationFamous marks doctrine in the US and UK Arnold & Porter LLP
in the US and UK This text first appeared in the IAM magazine supplement Brands in the Boardroom 2008 April 2008 Feature Famous marks doctrine Famous marks doctrine in the US and UK By Roberta L Horton,
More informationThe Madrid Protocol. Lynne G. Beresford Commissioner for Trademarks June 2007
The Madrid Protocol at the USPTO Lynne G. Beresford Commissioner for Trademarks June 2007 USPTO statistics Estimated 376,000 classes to be filed in FY 2007 Filings at 9% above previous year First action
More informationHow to Read Financial Statements 2015
CORPORATE LAW AND PRACTICE Course Handbook Series Number B-2157 How to Read Financial Statements 2015 Chair Chad Rucker To order this book, call (800) 260-4PLI or fax us at (800) 321-0093. Ask our Customer
More informationEuropean Community Trademark: Two Tracks - One Destination
European Community Trademark: Two Tracks - One Destination - "European Community Trademark: Two Tracks-One Destination," Trademark World, April 11, 2004 Author(s): Max Vern Introduction In late June 2004,
More informationNOTICE OF DECISION. -versus- Atty. ~~A~"lo ~G Director Ill Bureau of Legal Affairs. CHANEL SARL, Opposer, } } } } } } } } }
CHANEL SARL, Opposer, -versus- BEE YOUNG GO, Respondent-Applicant. )( -------------------------------------------------- )( IPC No. 14-2010-00082 Opposition to: Ap.pln. Serial No. 4-2009-003319 Date Filed:
More informationLEGAL OPINION REGARDING THE USE OF GREEN DOT MARK
www.ecopartners.bg office@ecopartners.bg LEGAL OPINION REGARDING THE USE OF GREEN DOT MARK This Opinion is prepared solely and specifically for own use, and should not be disseminated without the consent,
More informationAGREEMENT BETWEEN THE GOVERNMENT OF AUSTRALIA AND THE GOVERNMENT OF THE ARGENTINE REPUBLIC ON THE PROMOTION AND PROTECTION OF INVESTMENTS
Agreement between the Government of Australia and the Government of the Argentine Republic on the Promotion and Protection of Investments, and Protocol (Canberra, 23 August 1995) Entry into force: 11 January
More informationJP IDN REGISTRATION POLICY
. 食品 JP IDN REGISTRATION POLICY Your application, maintenance or renewal of a. 食品 Domain Name means you accept the terms and conditions of this. 食品 Registration Policy ( Policy ). We may change or revise
More informationInternational Protection for Trademarks
2 International Protection for Trademarks Debbie Lee Attorney-Advisor Office of the Deputy Commissioner for Trademark Examination Policy Session on International Protection Trademark Protection Outside
More informationNovember 21, 2012 Draft Amendments in Track Changes. Trademarks Law
November 21, 2012 Draft Amendments in Track Changes Trademarks Law Chapter 1 General Provisions The Basis Article 1: This law has been enacted in the light of the provisions of Article 11 of the Constitution
More informationInvestment Management Institute 2017
CORPORATE LAW AND PRACTICE Course Handbook Series Number B-2309 Investment Management Institute 2017 Volume One Co-Chairs Barry P. Barbash Paul F. Roye To order this book, call (800) 260-4PLI or fax us
More informationProtection against Bad Faith Trademark Filings in Japan and JPO s Initiatives towards International Cooperation. December 4, 2015
Protection against Bad Faith Trademark Filings in Japan and JPO s Initiatives towards International Cooperation December 4, 2015 Hirofumi AOKI Director of the Trademark Division Japan Patent Office Contents
More informationBrexit & Trade Marks. The UK is leaving the EU, Marks & Clerk is not
Brexit & Trade Marks The UK is leaving the EU, Marks & Clerk is not On 29 March 2017 the United Kingdom gave formal notice of its intention to leave the European Union, in keeping with the result of the
More informationJP IDN REGISTRATION POLICY
. 家電 JP IDN REGISTRATION POLICY Your application, maintenance or renewal of a. 家電 Domain Name means you accept the terms and conditions of this. 家電 Registration Policy ( Policy ). We may change or revise
More informationAMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION. Comments on Deferred Examination for Patent Applications 74 Federal Register 4946 (January 28, 2009)
AIPLA AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION 241 18 th Street, South, Suite 700, Arlington, VA 22202 Phone: 703.415.0780 Fax: 703.415.0786 www.aipla.org The Honorable John Doll Acting Under Secretary
More informationBEFORE THE SOLE ARBITRATOR MR.D.SARAVANAN.IN REGISTRY (NATIONAL INTERNET EXCHANGE OF INDIA) Disputed Domain Name:
BEFORE THE SOLE ARBITRATOR MR.D.SARAVANAN.IN REGISTRY (NATIONAL INTERNET EXCHANGE OF INDIA) Disputed Domain Name: www.brandfactory.in M/s.Pantaloon Retail (India) Limited Rep. by its Chief Financial Officer
More informationConcurrence in Trade mark usage- Concern, not for the Honest
2014] F-35 Concurrence in Trade mark usage- Concern, not for the Honest Kanisshka Tyagi* and Isha Mehta** The article analyses the provisions relating to the concurrent use of one Trade mark by two or
More informationBUSINESS IN SPAIN Corporate and Tax advantages.
BUSINESS IN SPAIN Corporate and Tax advantages www.net-craman.com ABOUT US International Planning Set up companies International Taxation Agreement Negotiation Industrial and Intellectual Property Visa
More informationDECISION. (f) Is identical with, or confusingly similar to, or constitutes a
STARBUCKS CORPORATION, } IPC No. 14-2005-00089 Opposer, } Opposition to: } -versus- } Serial No. 4-2001-003674 } Date Filed: 28 May 2001 PT EXELSO MULTI RASA, } Respondent-Applicant. } Trademark: FRAPPIO
More informationIP Strategies for International Businesses Trade Marks. 8 May 2017
IP Strategies for International Businesses Trade Marks 8 May 2017 2 Agenda What is a trade mark? The protection conferred to a trade mark Maximising the value of your trade marks: global filing strategies
More information* * RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA
To: Subject: Sent: Sent As: Big Canoe Company, LLC (ipatl@alston.com) TRADEMARK APPLICATION NO. 78945130 - BIG CANOE - N/A 10/25/2006 4:11:50 PM ECOM103@USPTO.GOV Attachments: Attachment - 1 Attachment
More informationNetherlands Pays Bas Niederlande. Report Q195
Netherlands Pays Bas Niederlande Report Q195 in the name of the Dutch Group by W. A. HOYNG, A. A. HIRSCHFELD, B. J. BERGHUIS VAN WOORTMAN, J. B. C. W. VAN DIJK, M. H. L. HEMMER, J. K. VAN HEZEWIJK, W.
More informationAMICUS BRIEF INTERNATIONAL TRADEMARK ASSOCIATION
Case file No. Court: A40-73286/10-143-625 Arbitrazh Court of Moscow Claimants: Richemont International S.A.; Vacheron & Constantin S.A. Defendant: Russian Patent and Trademark Office ("Russian PTO") Third
More informationFiling a Federal Trademark Application
Resource ID: w-013-9729 Filing a Federal Trademark Application PRACTICAL LAW INTELLECTUAL PROPERTY & TECHNOLOGY, WITH MICHAEL J. SCHWAB, MORITT HOCK & HAMROFF LLP Search the Resource ID numbers in blue
More informationASIAN PATENT ATTORNEYS ASSOCIATION PAKISTAN GROUP REPORT. Ms. Khushnum Muncherji President, APAA Recognised Group of Pakistan
ASIAN PATENT ATTORNEYS ASSOCIATION PAKISTAN GROUP REPORT By Ms. Khushnum Muncherji President, APAA Recognised Group of Pakistan Submitted before the 62nd APAA Council Meeting at Hanoi, Vietnam ---------------------------------------------------------------------------------------------
More informationNEUROSCIENCE PRODUCT RESALE AGREEMENT
373 280 th Street, Osceola, WI 54020 Phn 1-715-294-2144 Fax 1-715-294-3921 Toll-free 1-888-342-7272 neuroscienceinc.com NEUROSCIENCE PRODUCT RESALE AGREEMENT THIS PRODUCT RESALE AGREEMENT ( Agreement )
More informationMarketing and Advertising Injuries Are You Covered? January 22, 2014 Los Angeles, California. Sponsored by K&L Gates LLP
[add logo of sponsor] Marketing and Advertising Injuries Are You Covered? January 22, 2014 Los Angeles, California ed by K&L Gates LLP Panelists: Seth A. Gold and David P. Schack #IHCC12 1 Panelists Seth
More information2017 Copyright The Sequoia Project. All rights reserved.
Exhibit 1 Carequality Connection Terms As used herein, Organization refers to the Carequality Connection upon which these Carequality Connection Terms are binding and Sponsoring Implementer refers to the
More informationreporter 2017 Analysis ON PTAB contested proceedings introduction
edition 3 no. reporter NEW SURVEY 2017 Analysis ON PTAB contested proceedings postgranthq.com fitzpatrick, cella, harper & scinto introduction Fitzpatrick, Cella, Harper & Scinto undertook this Report
More informationARTICLE 16 DURATION AND TERMINATION
ARTICLE 16 DURATION AND TERMINATION I. This Agreement shall remain in force for a period of twenty (20) years and shall continue in force thereafter for similar period or periods unless, at least one year
More informationCanada. Bereskin & Parr LLP Susan J Keri, Meghan Dillon and Ainslie Parsons. Pharmaceutical Trademarks 2018/2019. A Global Guide
Canada Bereskin & Parr LLP Susan J Keri, Meghan Dillon and Ainslie Parsons Pharmaceutical Trademarks 2018/2019 A Global Guide IP Lawyers, Patent and Trademark Agents Canada Bereskin & Parr LLP Authors
More informationOne would suspect anti-gay prejudice except that Laval's career really suggests that's not what is happening.
915-932; supp 135-146 Recent decision... Hot off the press (but hardly surprising): Consumers do not have standing to bring actions for false advertising under the Lanham Act. Made in the USA Foundation
More informationNewsletter. UAE Receives Applications for.abudhabi & Issue 26 May 2018
Newsletter Issue 26 May 2018 UAE Receives Applications for.abudhabi & Domain Name ابوظبي. IN THIS ISSUE: UAE Receives Applications for ابوظبي. &.abudhabi Domain Name ICANN Files Legal Action in Germany
More informationStudy Guidelines Study Question. Registrability of 3D trademarks
Study Guidelines by Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK Assistants to the Reporter General Introduction
More information