INTABulletin
The Voice of the International Trademark Association
April 15, 2011 Vol. 66 No. 8
AssociationNews
INTA Brief Urges U.S. Court to
Reconsider Aesthetic Functionality,
Copyright in Betty Boop Battle
An opinion in the U.S. Circuit Court of Appeals for the Ninth Circuit in a clash over a
cartoon character has drawn widespread
criticism and prompted INTA to file an
amicus brief urging the court to rehear the
case, which could have far-reaching consequences for brand owners. INTA’s brief was
filed March 21, 2011 in Fleischer Studios,
Inc. v. A.V.E.L.A., Inc., DBA Art & Vintage
Entertainment Licensing Agency, et al., No.
09-56317 (9th Cir. Feb. 23, 2011).
based on vintage posters featuring Betty
Boop’s image that it has restored.
The case concerns the character Betty
Boop, created by Max Fleischer and featured
in cartoon films beginning in 1930. Today,
both plaintiff and defendants license the
Betty Boop image for use on merchandise.
Fleischer claims an exclusive copyright to
the character, while AVELA’s copyrights are
INTA’s brief argued that the court erred first in
applying the “aesthetic functionality” doctrine
of International Order of Job’s Daughters
v. Lindeburg & Co., 633 F.2d 912 (9th Cir.
1980), and concluding that Fleischer “is not
The U.S. District Court for the Central
District of California dismissed Fleischer’s
claims for trademark and copyright infringement on summary judgment, finding
that Fleischer had proved neither a valid
copyright nor trademark and thus lacked
standing to sue. Over a dissent, a threejudge Ninth Circuit panel affirmed.
Continued on page 2
In This Issue
Features
Study on the Overall
Functioning of the
European Trademark
System
Page 7
AssociationNews
INTA Amicus Brief
Lefkowitz Moot Court Competition
USPTO Notice on Design Marks
Volunteer Spotlight
Karen Fong
Christopher P. Bussert
Trademark
Considerations of
Non-Profit
Organizations
Page 10
Law&Practice
1
1
2
6
Canada
European Union
United Kingdom
13
12
15
AssociationNews
University of
Louisville Prevails
in 2011 Lefkowitz
Moot Court
Competition
On March 26, 2011, INTA held the National
Finals of the Saul Lefkowitz Moot Court Competition in Washington, DC, at the U.S. Court
of Appeals for the Federal Circuit.
The competition was based on the fictional
case of Chance Chase, f/k/a Chauncey
Chaste v. Eden Motors Corporation and Samuel Roberts. The problem explored whether
trademark rights attached to the plaintiff’s
use of the mark THE CHASE CAR and the
design of his racecar in the virtual world
known as SPEEDWORLD and, if so, whether
the defendants’ sale, offering for sale and
marketing of automobiles that incorporated
the trade dress of the virtual Chase Car and
marketing of the same under the name THE
CHASE CAR infringed the plaintiff’s trademark rights.
The issues raised related to the extent to
which trademark rights attach to a mark that
is used only in a virtual-world, rather than
real-world, setting; the functionality of the
trade dress; and whether the likelihood-ofconfusion survey was biased based on the
line of the questions. This year’s competition
included a total of 76 participating teams.
“The students who participate in this
academic program commit themselves to
another challenge on top of their already
demanding school workload,” said INTA Executive Director Alan Drewsen. “I was in the
Finals audience and can attest that all the
students prepared and delivered high-caliber
arguments, and I congratulate the students
and volunteers who made possible such
a terrific 2010–2011 Saul Lefkowitz Moot
Continued on page 3
AssociationNews
INTA Betty Boop Brief
using Betty Boop as a trademark, but instead
as a functional product.” The functionality defense allows competitors to copy useful product
features, while the concept of “aesthetic functionality” considers whether purely aesthetic
features might be considered “functional” because of a perceived competitive need to copy
an ornamental (rather than utilitarian) product
feature. The aesthetic functionality doctrine
has been sharply criticized by commentators,
rejected by many courts, and severely limited by
the Ninth Circuit, including in Au-Tomotive Gold,
Inc. v. Volkswagen of America, Inc., 457 F.3d
1062 (9th Cir. 2006). INTA urged the court to
follow the Au-Tomotive Gold reasoning.
Second, INTA argued that the majority erred
Continued from previous page
in dictum that, when a copyrighted work falls
into the public domain, the owner of a trademark comprising that work cannot assert
trademark rights because that would prevent
the work “from ever entering the public domain.” The court’s statement is inconsistent
with decisions recognizing that trademark
and copyright are independent rights that
may coexist in the same product, and that
trademark protection may remain even after
a related copyrighted work has fallen into the
public domain. The error was compounded
by the majority’s reliance on Dastar Corp. v.
Twentieth Century Fox Film Corp., 539 U.S.
23 (2003). INTA urged the court to withdraw
that part of the decision, and hold instead
that trademark protection is not precluded
for images that also have been protected by
copyright.
The Association’s brief was prepared by Lawrence K. Nodine of Ballard Spahr, Susan J.
Hightower of Pirkey Barber, counsel of record
John W. Crittenden of Cooley, and subcommittee chair David H. Bernstein of Debevoise
& Plimpton. Other amicus briefs were submitted on behalf of the professional sports
leagues, the Motion Picture Association of
America, and Edgar Rice Burroughs, Inc.
Susan J. Hightower
Pirkey Barber LLP, Austin, Texas, USA
U.S. Amicus Subcommittee of the International
Amicus Committee
USPTO Issues Final Notice on Coding of Design Marks
On March 2, 2011, the U.S. Patent and Trademark Office issued a final notice that it will
discontinue the practice of coding newly registered trademarks that include a design element
with design mark codes based on the old paper
search designations. The USPTO will continue
to code all pending applications that contain a
design element using a numerical design code
INTA Bulletin Committee
To contact a member of the INTA Bulletin Committee, send an email to the
managing editor at
bulletin@inta.org.
Chair
Janice Housey, MH2 Technology Law
Group LLP
Vice Chair
Walter Palmer, Pinheiro Palmer Advogados
Association News
Marie Lussier, Chitiz Pathak LLP
Ken Taylor, Marksmen
Features
Valerie Brennan, Hogan Lovells
Alexander Klett, Reed Smith LLP
system modeled after the International Classification of the Figurative Elements of Marks.
INTA’s USPTO Subcommittee submitted comments to the USPTO earlier this year supporting this decision and noting that the newer
system is widely used and more specific. The
Association’s comments suggested that the
Law & Practice: Africa, Central Asia,
Eastern Europe & Middle East
Charles Sha’ban, Abu-Ghazaleh Intellectual Property
Law & Practice: Asia–Pacific
Barbara Sullivan, Henry Hughes Patent
& Trademark Attorneys
Law & Practice: Europe
Wiebke Baars, Taylor Wessing
Christoph Gasser, Staiger, Schwald &
Partner Ltd.
Law & Practice: Latin America &
Caribbean
John Murphy, Arochi, Marroquin &
Lindner S.C.
Law & Practice: United States &
Canada
Timothy Lockhart, Willcox & Savage PC
INTA Bulletin Staff
USPTO redirect the cost savings from discontinuing this old process to the Trademarks Next
Generation Program, an initiative to update
and improve the electronic processing of
trademark applications. The USPTO addressed
that comment in the notice by noting they will
be able to redirect the resources to the Trademark Next Generation Program.
Executive Director
Alan C. Drewsen
Director, Publishing
Randi Mustello
Managing Editor, INTA Bulletin
James F. Bush
Associate Editor, INTA Bulletin
Joel L. Bromberg
Manager, Marketing and
Brand Strategy
Devin Matthew Toporek
Designer
Jesse Riggle
INTA Officers & Counsel
President
Gerhard R. Bauer, Daimler AG
President Elect
Gregg Marrazzo, Estée Lauder Inc.
Vice President
Toe Su Aung, BATMark Ltd.
Vice President
Bret Parker, Elizabeth Arden, Inc.
Treasurer
Mei-lan Stark, Fox Entertainment Group
Secretary
Lucy Nichols, Nokia Corporation
Counsel
Dale Cendali, Kirkland & Ellis LLP
Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin relies on members of
the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin Editorial Board reserves the right to make, in its sole discretion, editorial changes to
any item offered to it for publication. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of
copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.
© 2011 International Trademark Association
2 April 15, 2011 Vol. 66 No. 8
AssociationNews
University of Louisville Prevails in 2011 Lefkowitz Moot Court Competition Continued from Page 1
Court Competition.”
The winners of the Regional Competition held
on February 12, 2011, were:
• East: University of New Hampshire School of
Law
• Midwest: University of Wisconsin Law School
• South: University of Louisville Louis D.
Brandeis School of Law
• West: Gonzaga University School of Law
judges that she “felt privileged to be the chair of
the 20th competition” and was “in awe to be in
the presence, and honor the efforts, of Dolores
Hanna, who is the reason for the existence of
the competition.” Ms. Lueders further recognized that the National Finals would never happen without the tireless efforts of Chris Foley
and the support of his firm, Finnegan, Henderson, Farabow, Garrett & Dunner. She added,
“Over 200 trademark attorneys, members of
All four regional winning teams then advanced
to the National Finals in Washington, DC,
where more than US $8,500 in prize money
was awarded. The teams argued before distinguished jurists from the Trademark Trial and
Appeal Board of the U.S. Patent and Trademark Office.
The National Finals winners were:
• Best Team Award: University of Louisville Louis
D. Brandeis School of Law
• Second Place Team Award: Gonzaga University
School of Law
• Best Oralist Team Award: University of Wisconsin Law School
• Second Place Oralist Team Award: University of
Louisville Louis D. Brandeis School of Law
• Dolores K. Hanna National Best Brief Award: UC
Hastings College of the Law
• Second Place Brief Award: Gonzaga University
School of Law
In her comments at the Finals, Committee Chair
Cathy Lueders (MasterCard International) told
the students and the distinguished panel of
Winning team members Whitney True (left) and
Marilyn Osborn (right) with Lefkowitz Committee
Chair Cathy Lueders.
the USPTO and federal and state judges volunteer their time to ensure that the competition
is one of the most well-run and respected moot
court competitions in the United States, and I
thank each and every one for their dedication to
the competition.”
Debbie Squiers (Cowan Liebowitz & Latman) will
be the chair of the competition for the 2011–
2012 year, with Katherine Basile (Novak, Druce
& Quigg) as vice chair. “Cathy was the perfect
Chair this past year—she ran this national event
flawlessly, and we are indebted to her for her
enthusiasm and dedication,” Ms. Squiers said.
“The Committee is already gearing up for the
2011-12 competition, and we are delighted
that Anthony Fletcher of Fish & Richardson has
agreed once again to be the principal author
of the moot court problem. We look forward to
another successful year.”
The competition, now embarking on its 21st
year, was established to introduce law students
to the challenging and varied issues involved
in trademark and unfair competition law. It
is named in honor of the late Saul Lefkowitz,
whose entire distinguished career was dedicated to the development of trademark and
unfair competition law. For over 30 years, Mr.
Lefkowitz was a member of the trademark
examining corps in the Trademark Office. He
was a member of the TTAB from its creation in
1958 and in 1975 was named its chairman. He
is most particularly and fondly remembered as
a mentor to young practitioners, helping them
develop an understanding of trademark law and
procedures.
Many students involved in the competition
go on to careers with INTA member organizations, as well as to leadership positions in the
Association. Firms involved with the Lefkowitz
Competition and many other INTA members
have hired new associates based partly on their
performance in the competition. ■
INTA Thanks Lefkowitz Competition
Committee Members, Volunteers and Sponsors
Cathy Lueders
Lefkowitz Committee Chair, 2010–2011
MasterCard International Incorporated
Deborah K. Squires
Lefkowitz Committee Vice-Chair, 2010–2011
Incoming Chair, 2011–2012
Cowan Liebowitz & Latman PC
Katherine Basile
Problem and Bench Memo Subcommittee
Chair, 2010–2011
Incoming Vice-Chair, 2011–2012
Novak Druce & Quigg LLP
Mark I. Feldman
Coordinating Competition Subcommittee Chair,
2010–2011
DLA Piper US LLP
Anthony L. Fletcher
Problem Author, 2010–2011
Fish & Richardson P.C.
Christopher P. Foley
National Finals Coordinator, 2010–2011
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
East Region
Coordinating Group
Alexandra DeNeve, Major League Baseball
Properties, Inc., Coordinating Committee Co-Chair
Roberta L. Horton, Arnold & Porter LLP,
Coordinating Committee Co-Chair
Jessica Rothstein, Goodwin Procter LLP,
Coordinating Committee Co-Chair
Stewart Bellus, Collard & Roe, P.C.
Vanessa Hew, Duane Morris LLP
Kevin Moss, Kramer Levin Naftalis & Frankel LLP
Continued on next page
3
AssociationNews
Lefkowitz Competition Committee Members, Volunteers and Sponsors Continued from page 3
Eric Osterberg, Fox, Rothschild LLP
Kimberly Sammons, CT Corsearch
Stephen Straub, Roylance, Abrams, Berdo &
Goodman, L.L.P.
Cynthia Walden, Fish & Richardson P.C.
Steven Warner, Fitzpatrick, Cella, Harper & Scinto
Brief Reading Judges
Andrew M. Abrams, Fish & Richardson P.C.
Beth Alquist, Day Pitney LLP
Keith Barritt, Fish & Richardson P.C.
Douglas Bria, Jackson Lewis LLP
Edward Gray, Jr., Fitch, Even, Tabin & Flannery
Irene Hudson, Fish & Richardson P.C.
Paul H. Kochanski, Lerner, David, Littenberg,
Krumholz & Mentlik
Eleanor Lackman, Lovells LLP
Joel D. Leviton, Fish & Richardson P.C.
Kristen McCallion, Fish & Richardson P.C.
Eric Osterberg, Fox Rothschild LLP
Gretchen Testerman, Qwest Communications
International Inc.
Cynthia Walden, Fish & Richardson
Brian Winterfeldt, Steptoe & Johnson LLP
Oral Argument Judges
Kathryn Grant Belleau, Pitney Bowes Inc.
Stephen Chin, von Simson & Chin LLP
James Coplit, MetLife
Dickerson M. Downing, Crowell & Moring, LLP
Steven R. Gustavson, Goodwin Procter LLP
Roberta L. Horton, Arnold & Porter LLP
Charles LeGrand, LeGrand LLC
Richard S. Mandel, Cowan, Liebowitz & Latman, P.C.
Lauren Mandell, Diageo North America Inc.
Theodore C. Max, Sheppard Mullin
Lauren Middlen, WWE, Inc.
Robert M. O’Connell, Goodwin Procter
Carrie Webb Olson, Day Pitney LLC
Kathryn Barrett Park, General Electric
Robert Powley, Powley & Gibson, P.C.
Susan M. Rosenfeld, Phillips Van Heusen Corp.
Steven Rosenthal, Revlon Consumer Products Corp.
Robert M. Wasnofski, Jr., Dorsey & Whitney LLP
Bailiffs
Carissa Alden, Cowan Liebowitz & Latman P.C.
Anna Bernardis, New York Law School
Jiwon Jeannine Choi, Benjamin N. Cardozo
School of Law
Stephanie Y. Grenald, St. John’s University
School of Law
Thomas Grove, Pace Law School
Patricia Maxwell, Arnold & Porter, LLP
Dana Nelson, New York Law School
Kaydi Osowski, New York Law School
Jillian Raines, New York Law School
4 April 15, 2011 Vol. 66 No. 8
Darren Shield, New York Law School
Linlin Tian, Benjamin N. Cardozo School of Law
Alan Veronick, Arnold & Porter LLP
Celadon Whitehurst, Benjamin N. Cardozo School
of Law
Amanda Willis, New Y ork Law School
Jenni Wiser, Pace Law School
Sponsors
Arnold & Porter LLP
Cowan, Liebowitz & Latman, P.C.
Goodwin Procter LLP
Kessler International
MasterCard International Inc.
Midwest Region
Coordinating Group
Sandra Pedersen, Coordinating Committee Chair,
DLA Piper US LLP
Joseph Nabor, Coordinating Committee Vice-Chair,
Fitch, Even, Tabin & Flannery
Marc Cooperman, Banner & Witcoff, Ltd.
Mark Feldman, DLA Piper US LLP
Brent Hawkins, McDermott, Will & Emery LLP
Julie Katz, Husch Blackwell LLP
Kristen Knecht, Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson
Linda Kuczma, Banner & Witcoff, Ltd.
Olivia Luk, Jenner & Block
Christina Martini, DLA Piper US LLP
Greg Schlenz, Banner & Witcoff, Ltd.
Alisa Simmons, Fitch, Even, Tabin & Flannery
Richard Stockton, Banner & Witcoff, Ltd.
Amy Ziegler, Greer, Burns & Crain, Ltd.
Brief Reading Judges
Danica Acosta, Wal-Mart Stores, Inc.
Jill Anderfuren, Marshall, Gerstein & Borun LLP
Heidi C. Constantine, MetLife Legal Affairs
Gina L. Durham, DLA Piper US LLP
Julianne M. Hartzell, Marshall, Gerstein & Borun LLP
J. Michael Hurst, Keating Muething & Klekamp PLL
John E. Lyhus, Fitch Even Tabin & Flannery
Casey Mangan, Allstate Insurance Co.
Lydia Wahlke, Kirkland & Ellis LLP
Suzanne M. Wallman, McDermott Will & Emery LLP
Uli Widmaier, Pattishall McAuliffe Newbury Hilliard
& Geraldson LLP
Myla Barefield Young, Re:Sources USA, a Publicis
Groupe Company
Oral Argument Judges
Honorable David G. Bernthal, U.S. District Court
for the Central District of Illinois
Honorable Gerald Cohn, U.S. District Court for the
Eastern District of California
Honorable Matthew F. Kennelly, U.S. District
Court for the Northern District of Illinois
Honorable Diane Larsen, Cook County Circuit Court
Honorable Michael P. McCuskey, U.S. District
Court, Central District of Illinois
Honorable Raymond W. Mitchell, Cook County
Circuit Court
Honorable James Murphy, Retired
Honorable Dan Pascale, Retired
Honorable Francis T. Wasielewski, Milwaukee
County Circuit Court
Daniel P. Albers, Barnes & Thornburg LLP
Carol Anne Been, SNR Denton
Nicole Chaudhari, DLA Piper US LLP
Larry Crain, Greer, Burns & Crain, Ltd.
David S. Fleming, Brinks Hofer Gilson & Lione
Michael R. Graham, Marshall, Gerstein & Borun LLP
Paul Juettner, Greer, Burns & Crain, Ltd.
Mark Liss, Leydig, Voit & Mayer, Ltd.
Edward D. Manzo, Husch Blackwell LLP
Douglas N. Masters, Loeb & Loeb LLP
Frederick W. Meyers, Ladas & Parry LLP
Mark Partridge, Partridge IP Law
Heather Steinmeyer, WellPoint, Inc.
Gerald O. Sweeney, Barnes & Thornburg LLP
Kevin A. Thompson, Davis McGrath LLC
Monica Thompson, DLA Piper US LLP
Matthew Walch, Latham & Watkins LLP
Bailiffs
Chief Bailiff, Daniel Hwang, Pattishall, McAuliffe,
Newbury, Hilliard & Geraldson, LLP
Jonathan Bedi
Nicole Chaudhari, DLA Piper US LLP
Sarah Dale, Norvell IP
Jasmine R. Davis, Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson, LLP
Colleen DeRosa, Jenner & Block, LLP
Andrew N. Downer, Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson, LLP
Rupen Fofaria, Loeb & Loeb LLP
Jennifer Garner, DLA Piper US LLP
Sabrina Guenther, Jenner & Block, LLP
Melissa Hinds, Jenner & Block, LLP
Ashly A. Iacullo, Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson, LLP
Nicole Little, Fitch, Even, Tabin & Flannery
Laura Pelanek, Jenner & Block, LLP
Kristin Rakowski, Jenner & Block, LLP
Jeremy Roe, Neal & McDevitt
Amanda Schmitz
Jennifer Senior, Jenner & Block, LLP
Selena Spritz, Fitch, Even, Tabin & Flannery
Christopher Swickhamer, Banner & Witcoff, Ltd.
Sponsors
DLA Piper US LLP
Fitch, Even, Tabin & Flannery
AssociationNews
Husch Blackwell LLP
McDermott Will & Emery
Lunch Sponsor
Intellectual Property Law Association of
Chicago (IPLAC)
South Region
Coordinating Group
Sheila Garber, Coordinating Committee Co-Chair,
Seyfarth Shaw LLP
Lauren Ralls, Coordinating Committee Co-Chair,
Kilpatrick Townsend & Stockton LLP
Brief Reading Judges
Linda K. DiSantis, CARE USA
Kristin Garris, Kilpatrick Townsend & Stockton LLP
Janet Shih Hajek, Greenberg Traurig LLP
Olivia Harris, Kilpatrick Townsend & Stockton LLP
Kerri A. Hochgesang, Smith, Gambrell & Russell, LLP
Sarah Anne Keefe, Womble Carlyle Sandridge &
Rice PLLC
David A. Reed, Sutherland Asbill & Brennan LLP
Marcy L. Sperry, Womble Carlyle Sandridge & Rice,
PLLC
Breen Sullivan, Kilpatrick Townsend & Stockton LLP
Brittany Summers, Seyfarth Shaw, LLP
Julia Sutherland, Seyfarth Shaw, LLP
Ashford Tucker, Kilpatrick Townsend & Stockton LLP
Katherine Wallace, Alston & Bird LLP
Oral Argument Judges
Jason Altman, Kilpatrick Townsend & Stockton LLP
Anita Bhushan, Finnegan, Henderson, Farabow,
Garrett & Dunner LLP
Joan L. Dillon, Joan Dillon Law, LLC
Winston T. Folmar, Ballard Spahr LLP
Honorable Hilton Fuller, Superior Court of DeKalb
County
Michael Landau, Professor, Georgia State University
College of Law
David Lilenfeld, Lilenfeld PC
Thomas C. Lundin, Jr., King & Spalding LLP
David Maxwell, Duane Morris LLP
William H. Needle, Ballard Spahr LLP
Lawrence K. Nodine, Ballard Spahr LLP
Sumner C. Rosenberg, Ballard Spahr LLP
Daniel Schulof, Kilpatrick Townsend & Stockton LLP
William B. B. Smith, Jones Day LLP
David L. Stewart, Alston & Bird LLP
Allen Wallace, Chambers of U.S. District Court Judge
Robert L. Vining, Jr.
Mitchell G. Weatherly, Weatherly Kerven LLC
Anne Yates, Arnall Golden Gregory LLP
Bailiffs and Other Volunteers
All from Kilpatrick Townsend & Stockton LLP
Jessica Ash
Nicki Chollet
Jimmy Faris
Richard Goldstucker
Allie Roach
Jaci Shanks
Sidney Simms Jr.
Katie Sullivan
Sabina Vayner
Wade Walker
Chiaman Wang
Jared Welsh
West Region
Coordinating Group
John C. Baum, Coordinating Committee Co-Chair,
Owen, Wickersham & Erickson, PC
Ryan Bricker, Coordinating Committee Co-Chair,
Kilpatrick Townsend & Stockton LLP
Jennifer D. Arkowitz, Kilpatrick Townsend &
Stockton LLP
Timothy R. Cahn, Kilpatrick Townsend & Stockton LLP
Megan M. Chung, Kilpatrick Townsend & Stockton LLP
Holly Gaudreau, Kilpatrick Townsend & Stockton LLP
Marc M. Gorelnik, Kilpatrick Townsend & Stockton LLP
John A. Hughes, Kilpatrick Townsend & Stockton LLP
Victor Tom, Kilpatrick Townsend & Stockton LLP
Brief Reading Judges
Tali Alban, Kilpatrick Townsend & Stockton LLP
Jennifer Arkowitz, Kilpatrick Townsend & Stockton LLP
H. Michael Brucker, Law Offices of H. Michael Brucker
Tim Cahn, Kilpatrick Townsend & Stockton LLP
Megan Chung, Kilpatrick Townsend & Stockton LLP
Gia Cincone, Kilpatrick Townsend & Stockton LLP
Alica Del Valle, Owen, Wickersham & Erickson, P.C.
John Donald, Apple Inc.
Oral Argument Judges
Honorable Steven Brick, Superior Court of
California, County of Alameda
Honorable John Herlihy, JAMS
Honorable Jamie Jacobs-May, JAMS
Honorable Elizabeth Lee, Superior Court of
California, County of San Mateo
Honorable Jared Moses, Superior Court of
California, County of Los Angeles
Honorable Donna Ryu, United States Magistrate
Judge for the Northern District of California
Katherine Basile, Novak Druce & Quigg LLP
Marcy Bergman, Bryan Cave LLP
Genevieve Burch, Cisco Systems
Robert Burlingame, Pillsbury Winthrop Shaw
Pittman LLP
Alica Del Valle, Owen, Wickersham & Erickson, P.C.
R.J. Heher, Fenwick & West
Steven Kipperman, Law Offices of Steven M.
Kipperman
Jeffrey Kobulnick, Foley & Lardner LLP
Mark LeHocky, Ross Stores, Inc.
Gale Peterson, Cox Smith Incorporated
Chetuan Shaffer, Apple Inc.
Lawrence Siskind, Harvey Siskind Jacobs LLP
Bailiffs
Annie Betinol, Whittier School of Law
Lisa Dornbach Flanagan, Kilpatrick Townsend &
Stockton LLP
Marge Fish, Kilpatrick Townsend & Stockton LLP
Jessica Hannah, Kilpatrick Townsend & Stockton LLP
Lisa Jeanetta, Kilpatrick Townsend & Stockton LLP
April Provins, Kilpatrick Townsend & Stockton LLP
Bernie Thurman, Kilpatrick Townsend & Stockton LLP
Lunch Sponsor
Thomson Reuters
National Finals
All from Finnegan, Henderson, Farabow, Garrett &
Dunner LLP
Coordinating Group
Christopher P. Foley, Partner, National Finals
Coordinator
Linda Clark
Mindy Dullea (bailiff)
Trish Hyland
Sydney Krell (bailiff)
Charles Jones
Patti Kelley
Mark Paul
Julianna Shin
Judy Valusek
Charlene Woods
Oral Argument Judges
All from the USPTO’s Trademark Trial and Appeal Board
Honorable Gerard Rogers, Chief Judge
Honorable Karen S. Kuhlke, Administrative
Trademark Judge
Honorable Ellen Seeherman, Administrative
Trademark Judge
Honorable James T. Walsh (Retired)
Andrew Baxley, Interlocutory Attorney
Robert Coggins, Interlocutory Attorney
Catherine Faint, Interlocutory Attorney
Christina J. Hieber, Associate Solicitor
Jennifer Krisp, Interlocutory Attorney
George C. Pologeorgis, Interlocutory Attorney
5
VolunteerSpotlight
on the Alternative Dispute Resolution (ADR)
Committee’s Outreach Subcommittee and—
as head of the “Awareness Task Force”—the
Anticounterfeiting Committee’s East Asia &
Pacific Subcommittee. In 2009, Karen acted
as a member of the President’s Pro Bono Task
Force. She is currently serving as vice chair of
the Law Firm Committee.
Karen Fong
According to Karen, the Association’s meetings
have helped her to strengthen the relationship
to clients as well as associates, with some
INTA acquaintances becoming very close
friends over the years. An interesting case she
worked on (an international arbitration involving mine-protected vehicles) started “through
a chance meeting in the ladies’ room at INTA
whilst putting on lipstick.”
Karen attended her first INTA meeting in
2006. Since that time, she has been active
As to what she considers to be the most important issue in trademark law today, Karen
points to the definition of trademark infringement under European law, which—owing to
some of the Court of Justice’s recent decisions’ “raising more questions than providing answers”—has become a rather opaque
issue. Her experience is that “practitioners
can already look back
upon nearly 20 years as a trademark lawyer. Her
career started in Singapore, where she came
across the field of IP during her pupilage at Drew
& Napier. Subsequently, she practiced in Hong
Kong and London, where she was appointed
Managing Partner at Rouse Legal in 2007.
Chris’s practice is primarily litigation oriented,
coupled with licensing, prosecution and
clearance work. Chris represents a number of
well-known franchise concepts as well as publishing and entertainment companies. When
not squaring off against adversaries in the
courtroom or across the table during a negotiation, he finds his opponents on the tennis
court: Chris played on the professional tennis
satellite circuit before entering law school.
Chris and his son Shaun at the U.S. National
Father/Son Clay Court Championships in 2009.
(They placed sixth!)
Christopher P. Bussert
is a
partner in the Atlanta, Georgia, USA, office
of Kilpatrick Townsend, the compilation of
two well-known “brands” in the legal world,
Kilpatrick Stockton LLP and Townsend and
Townsend and Crew. The firms merged effective January 1, 2011.
6 April 15, 2011 Vol. 66 No. 8
Since 1995, Chris has run the INTA Tennis
Tournament at the Annual Meeting, both
formally when sponsored by INTA and, more
recently, as a non-sponsored event that continues to attract 50 to 60 competitors. He has
developed many friendships across the nets at
INTA meetings, though we wonder if his friends
know of his accomplished tennis background!
Chris also has a musical background, and
played the string bass in a number of community orchestras early in his career. Occasionally
he comes out of retirement when asked to
play at church or school events. Chris’s current
extracurricular “project” is an effort to play
tennis at the national level in the “Men’s 55s,”
and he expects to end the year in the top 50
nationally in this category.
are finding it difficult to advise clients on
infringement issues, which in the past would
have been very clear.”
Asked to name one thing most people don’t
know about her, Karen readily volunteers
that she used to be a model during her time
at school and university, and that her son’s
father “tracked her down after seeing her on
the cover of a magazine.” Another hitherto
unknown fact is that she is currently working
part-time on a degree in theology and is training to become a lay minister. In order to avoid
any confusion, however, she quickly adds: “I
am not changing careers, just adding on something which I can do on Sundays.”
Aside from trademarks and theology, Karen
enjoys movies, yoga, rock climbing and wakeboarding, as well as spending time with her
20-year-old son.
Jan Gerd Mietzel and Elisa Leonesi Maluf
Felsberg & Partners Europe LLP,
Düsseldorf, Germany
INTA Bulletin Association News Subcommittee
Chris has been actively involved with INTA
for years. He was a chair of the 2004 Annual
Meeting in Atlanta. Currently the chair of the
ADR Committee’s Outreach Subcommittee,
he is a past chair of that committee’s Law
Firm Outreach Subcommittee. Chris also has
been a member of the editorial board of The
Trademark Reporter and a member of several
other committees. One of his most enjoyable
memories was speaking at INTA’s March 2009
Next Level Seminar in New York. Chris would
like to see the Association continue to devote
resources toward helping younger lawyers advance their practices through additional “Next
Level” seminars.
When asked for his perspective on the most
timely issues affecting trademark law, Chris
said that was a difficult question to answer,
but he feels that “brand owners continue
to be challenged in promoting themselves
and enforcing their marks effectively (and
efficiently) using new technology, for example,
the Internet and social media.”
Joseph J. Conklin
Coty Inc., New York, New York, USA
INTA Bulletin Association News Subcommittee
Features
Study on the Overall Functioning of
the European Trademark System
Kerstin Gründig-Schnelle
Lichtenstein, Körner & Partners, Stuttgart, Germany
report relating to the questions raised in the
European Commission’s invitation to tender in
November 2010.
Marek Lazewski
LDS Lazewski Depo & Partners, Warsaw, Poland
Legal Analysis
Both are members of the Trademark Office
Practices Committee’s OHIM Subcommittee
The Max-Planck-Institute for Intellectual Property and Competition Law, Munich, Germany,
presented its Study on the Overall Functioning of the European Trade Mark System to
the European Commission on February 15,
2011. The text of the study was made public
on March 8, 2011, and consists of 290 pages.
The European Commission as well as user
organizations—including INTA—are now in the
process of evaluating the study and the proposals put forward by the Max-Planck-Institute.
The European Commission is expected to present its draft legislative proposals for amendments to the Trade Mark Directive (TMD) and
the Community Trade Mark Regulation (CTMR)
in October this year.
The study contains a comprehensive legal
analysis of European trademark law, divided
into two main chapters: one on common issues for the TMD and CTMR, the other dealing
with the functioning of the CTM system, both in
substantive and procedural law.
Common Issues for
TMD and CTMR
Background
Signs capable of being registered
The study proposes that both Article 4 CTMR
and Article 2 TMD should be reformulated
so as to refer to capability to distinguish as
the essential criteria for protection. Graphical representability of the sign should be
removed from the basic definition. It should
be sufficient that a sign is represented in a
manner that satisfies requirements of the
registration system. Further details should
be left to the Implementing Regulation of
the CTM system, according to the study. This
proposal would allow for more flexibility, particularly in the field of nontraditional marks
like smell or sound.
Almost 15 years after the introduction of
both the CTM system and the, at least partly,
harmonized trademark law in Europe, the
European Commission has conducted an indepth assessment of the overall functioning
of the European trademark system in Europe
as a whole, both at the Community and at the
national level. The aim was to identify potential
areas for improvement, streamlining and future development of this system. In particular,
the study analyzed the level of harmonization
achieved and the need for further harmonization.
Shape-of-product and color marks
The study points out that protection of shapeof-product marks—like industrial design protection—bars others from making and offering the
same article on the market. In the case of a
trademark registration, that barring effect can
be maintained without any limitations in time.
In view of these particular circumstances, the
study proposes a more restrictive approach as
to registrability. Shape-of-product marks shall
only be registered if acquired distinctiveness is
established. The same shall apply to trademarks consisting of colors per se.
To that end, the Max-Planck-Institute conducted a survey among the users of the CTM
system and obtained information from national
European trademark offices regarding their
position and activities. INTA actively participated in that process, attending a hearing at the
MPI in June 2010 and submitting a detailed
Use requirement: multiple
registrations of similar marks
The judgment of the Court of Justice (CJ) in the
Bainbridge case has created doubts and uncertainties in the situation where a trademark
as used is invoked to maintain a registered
variation of the same mark and the used ver-
This article highlights some of the proposals
made by the Max-Planck-Institute that are of
interest to trademark owners.
sion is also separately registered. The study
suggests that Article 10 TMD and Article 15
(1) (a) CTMR should be amended to clarify that
the use of a trademark may be taken to satisfy
the use of a registered variant of that mark
even if the used version is also registered.
Well-known and reputation marks
The study describes in detail the protection
of well-known marks under the CTMR and the
TMD and finds that protection is far from being
harmonized. In particular, the study points out
that there is no possibility for owners of unregistered trademarks that are well known in the
Community to get access to the judicial system
established under the CTMR, a situation which
is not in compliance with the obligations incurred by the European Union under the TRIPS
agreement. It is therefore suggested to extend
the protection of well-known trademarks,
both under the TMD and the CTMR, also to
unregistered well-known trademarks having a
reputation in the relevant territory.
Likelihood of confusion
The study states that criticism has been
raised regarding the approach of the Luxembourg courts as regards the so-called
“neutralization” theory, and regarding the
inability to distinguish properly between weak
and strong marks. The study refers expressly
to the CJ decision FLEX/ FLEXI AIR, which is,
according to the study, out of line with the
general principles announced by the CJ in the
leading Canon case and other relevant case
law. The study proposes to address this issue
in the preamble, which could express among
others the following basic principles:
The trademarks with high degree of distinctiveness should receive more extensive protection
than those with a low degree of distinctiveness; that a high degree of distinctiveness
requires that the mark has become established on the market as a result of extensive
use; that where a trademark is composed of
or consists of an element which is not itself
registrable, a finding of likelihood of confusion
cannot be based on the fact that both marks
consist of or contain that element
Continued on next page
7
Features
Study on the Overall Functioning of the European Trademark System Continued from previous page
Harmonization of TMD and CTMR
The TMD and the CTMR should provide for the
same protection to trademarks. Accordingly,
the study recommends to align the structure
and the provisions as far as possible. In addition, several provisions that are currently
optional in the Directive should be made
mandatory (more on this below).
Infringement
As a requirement for infringement, the
sign must be used “as a mark.” The study
recommends to maintain the requirement
established by case law that use must be
made for the purpose of identifying and distinguishing the commercial origin of goods
or services. In addition, both the TMD and
the CTMR shall be amended to the effect
that registered trademarks are also protected against use made of the trademark
or a similar sign in the course of trade for
purposes other than to distinguish goods or
services, provided such use is likely to mislead the public about the existence of a commercial link between the proprietor of the
trademark and a third party, or is likely to be
detrimental to or take advantage of the distinctiveness or reputation of the trademark
in a manner contrary to honest practices in
industrial and commercial matters.
Goods in transit
The study recognizes that there is a need to
improve the present legal situation where
remedies for trademark infringement are
not available as long as the goods are not
brought into free circulation on the common
market. It is proposed to amend the present legislation to the effect that transit of
goods bearing an infringing trademark should
be considered as trademark infringement
provided that the goods are also infringing a
parallel right existing in the country of destination. The rule proposed shall be limited to
counterfeit goods as defined in footnote 14
(a) to Article 51 TRIPS, that is, goods bearing without authorization a trademark that is
identical to the trademark validly registered
in respect of such goods, or which cannot be
distinguished in its essential aspects from
such a trademark.
Defense of non-use
Under the CTMR, the proprietor of a later
trademark may invoke the defense of non-
8 April 15, 2011 Vol. 66 No. 8
use both in opposition proceedings and in
cancellation proceedings. Under the TMD,
on the other hand, non-use is a defense to a
cancellation, but the corresponding provision
dealing with the defense of non-use in opposition proceedings is optional so far. The study
proposes that the relevant Article 11 (2) TMD
shall become mandatory to make sure that
proprietors of later national trademarks enjoy
the same rights.
Functioning of the CTM System
The problems resulting from the territorial
divergence of the EU, its increasing geographical breadth and the tensions that
emerge against the principle of unitary
character of a CTM have been the hottest
political and professional issue in the EU in
the recent months.
Genuine use within the Community
The territorial aspect of genuine use is a major
issue, both within the MPI study and in the
general EU trademark environment. MPI’s
report emphasized the principle that CTMs
are unitary intellectual property rights for the
whole of the European Union; the study holds
that the number of countries in which a CTM
has been used is not an acceptable criterion in
order to determine genuine use. At the same
time, the study stresses that this does not
mean that the conditions for “genuine use”
of national marks and of CTMs are exactly
the same. In view of the size of the European
Union it may well be, according to the study,
that the courts apply stricter standards as
to what constitutes “genuine use” when a
CTM is involved than when a national mark is
involved.
Coexistence with subsequent marks
The study describes that a CTM registration, if the mark is genuinely used, can be
maintained by use in only a small part of the
European Union. The owner may oppose or
invalidate later trademarks also in member
states where the CTM, even after a long
time, has not been used and a conflict on the
market would be “hypothetical.” The study
suggests to restrict, under certain circumstances, the rights of the proprietor against
later trademarks if the proprietor has not extended the use of the CTM across other parts
of the European Union beyond those that are
sufficient for genuine use.
It is proposed that registration and use of
subsequent national trademarks shall be
allowed in a member state remote from the
part of the Community where a conflicting
earlier CTM, which has been registered for
a period of at least 15 years, was used,
provided that the later mark was applied for
in good faith. Such registrations should coexist with the earlier CTM that continues to be
valid and enforceable and may also be used
in that member state. According to the study,
it should be explicitly set out in the rule that
it only applies to CTMs if only minimal use
of the CTM has been made in a part of the
Community that is distant from the relevant
member state.
Acquired distinctiveness
The study points out that the principle
that distinctiveness through use must be
acquired in those parts of the Community
where it is lacking should be maintained.
However, the study acknowledges that this
may lead to situations in which it is virtually
impossible to demonstrate acquired distinctiveness. It is therefore suggested that, for
example, in the case of marks consisting
of shapes or colors, acquired distinctiveness should be considered to be present if
distinctiveness can be shown for the majority of the markets making up the respective
territory.
Scope of protection in conflicts
involving marks with a reputation
The study agrees with the rules laid down
by the CJ in the PAGO judgment that, where
a trademark has a well-established reputation in one member state, the requirement
of reputation “in the Community” is fulfilled.
The study recognizes that, as a matter of
principle, it should be left to the case law
of the CJ to develop rules for the protection
of CTMs with reputation. Nevertheless, the
study proposes to amend the preamble of
the TMD to the effect that an earlier CTM
should prevail only when all conditions of
protection are fulfilled in the respective
member state, so that, for example, an earlier CTM with a reputation in one part of the
Union could not be detrimentally affected
in another part of the Union where no such
reputation is present.
Features
Further Harmonization
The study proposes that the scope of harmonization of the trademark law among member
states be taken much further than the current
scope of the Directive.
Substantive law
The study suggests some areas for further
substantive harmonization:
•Marks with reputation. The study
proposes making extended protection of
such marks an obligatory provision of the
Directive.
•Trademarks as objects of property. The
study endorses harmonizing the rules and
requirements for transfers and licenses
and security interests, including their
recordal.
•Protection of non-registered signs. The study
encourages harmonization of various forms
of protection for non-registered marks, as
these tend to influence protection of registered marks.
Remedies
The current system whereby remedies available in cases of infringement are generally
left to national law (with international private
law intervening) is regarded as limiting the
effect of harmonization and inconsistent with
the principle of unitary character. It is therefore proposed that remedies be covered in
the Regulation and that analogous provisions
be introduced into the Directive. This should
involve in particular not only implementing
the Enforcement Directive into the CTMR
but also reviewing enforcement tools, for example, with respect to availability of declaratory actions. The study also suggests that
actions based on threatened infringement be
regulated in the CTMR and not deferred to
national law.
Harmonizing procedures and practicalities
The study identifies lack of harmonized procedures as one of the most important aspects
limiting the impact of the Directive and CTM
system. The fact that harmonized substantive laws operate in very divergent procedural
and general legislative environments reduces
the efficiency of harmonization. Therefore,
the following areas were proposed for further
harmonization:
•classification rules (see below)
•cost awards enforcement—obligating member states to designate an enforcement
authority
•availability of post-grant opposition and nonuse defense in opposition throughout the EU
•filing requirements regarding filing date,
representation, and other matters
•common platform to access the different
systems
Classification: preventing congestion
The issue of congestion of the register
should, in accordance with the study, be
primarily addressed by appropriate rules on
genuine use.
The study devotes much space to the issue of
classification of goods. The study tries to analyze whether the lack of extra fees for claiming
three classes and the ease (and consequences) of using class headings in applications
result in the choice of new marks becoming
more difficult and the costs of clearing them
rising. There seems to be no clear evidence.
Nevertheless, the study does recommend a
separate fee for each class, abandoning the
current three-for-the-price-of-one principle. The
study also recommends departing from the
most recent practice of assuming that use of
class headings amounts to designation of all
the goods in the particular class. Instead, a
more flexible approach is proposed whereby
only for those classes where the headings
clearly encompass all goods as a general
denomination will claiming class headings be
considered equivalent to claiming “all goods in
that class.” OHIM and members states are to
decide which classes have that characteristic.
Roles of OHIM and the
National Trademark Offices
What the study identifies as an important
challenge is the evolving role of the trademark
offices. Several trends were identified as
relevant, including the competition between
national offices and OHIM for applications,
perceived benefits of maintaining the dual
system, as well as the pressures to broaden
the mandate of the offices, coupled with the
financial issues (including the OHIM surplus).
As a result, several recommendations were
made to preserve choice and balance and offer better service to applicants.
The study is careful on these very political and
tricky issues. It is emphasized that the national
offices (and national systems) are an important element of the overall system and should
be preserved to maintain the choice. It is
emphasized that offices are already intensively
cooperating and further activities in terms of
developing software platforms, coordinating
guidelines and training are advocated.
Some consideration is given to the concept
of expanding the offices’ mandate to include
enforcement. The study acknowledges the
concept of strengthening the role of offices
(including OHIM) in enforcement based on
the logical argument that the offices in fact
sell to the applicant the promise of protection and should also work to guarantee its
effect to some extent. There are however
very divergent opinions on the topic, and
legislative changes would be required. The
study is therefore not very specific on the
desired outcome.
Finally, the issue of redistribution of renewal
fees to national offices is addressed. The
study proposes a dual system whereby half of
the fees to be distributed would be divided in
equal amounts among member states and the
other half would be distributed in accordance
with the number of trademark applications in
that country (including Madrid designations).
Where the office is not financially independent,
appropriate measures should be introduced
to preserve the use of the funds for the predetermined purposes.
Conclusions
The authors of the study should be congratulated on their efforts. They have comprehensively analyzed a vast amount of data, from
various fields of IP and general private (including international) law to the very practical issues facing users of the system, and they have
suggested numerous areas for improvement
and consideration.
The resulting text reflects the complexity of the
subject matter. It does achieve its purpose of
forming a solid basis for reform and furthering
the economic goals that trademark protection
harmonization and efficiency brings to the EU
market. INTA will stay focused on the study and
legislative work that is to follow. ■
9
Features
Trademark Considerations of Non-Profit Organizations
Mona Lee
DW Partners, Seoul, Korea
What is the world of trademarks like for the
non-profit sector? A few of our INTA colleagues
share their experiences and insights in this
community of trademark owners.
What is a non-profit organization?
The goal of a non-profit organization is typically
to further a social or public cause; examples
include charities, trade unions and academic
associations. That is not to say that non-profit
organizations do not generate any surplus
funds as a result of their operations. Rather,
any such funds, instead of being distributed
to the organization’s members, are reinvested
into the organization itself to further its goals.
For this reason, it might be argued that a
non-profit organization’s trademark is even
more important than the trademark of a forprofit corporation, because the trademark of
a non-profit organization generally embodies
its single most valuable asset—its goodwill. A
non-profit organization relies on this goodwill
to attract donations, maintain its credibility
and send its message out to the world.
What does the goodwill of a nonprofit organization consist of?
In the case of the Association of American
Medical Colleges, its goodwill takes the form of
“earning and keeping the public’s trust for the
role we play in improving the nation’s health,”
explains Amber Sterling, Senior Intellectual
Property Specialist of the Association of American Medical Colleges (AAMC).
The AAMC represents all 133 accredited U.S.
and 17 accredited Canadian medical schools,
approximately 400 major teaching hospitals and
health systems (including 68 Department of
Veteran Affairs medical centers) and nearly 90
academic and scientific societies. Through these
institutions and organizations, the AAMC represents 125,000 faculty members, 75,000 medical students and 106,000 resident physicians.
In the case of an international non-profit organization, both the message and reach can be
broader. For Rotary International the message
is, simply, “Service above Self.” That message
is expressed through the organization’s work
in “combating hunger, improving health and
sanitation, providing education and job training, promoting peace, and eradicating polio,”
according to Jomarie Fredericks, Deputy
General Counsel, Chief Intellectual Property
Counsel, of Rotary International. These noble
goals are pursued through 33,000 clubs
worldwide consisting of over 1.2 million
members located in over 200 countries and
territories.
Some non-profit organizations can be said to
be in a category all of their own when considering the circumstances of their formation and
the message they wish to convey, as in the
case of Cotton Incorporated, whose “Seal of
Cotton” trademark is seen globally on a full
range of cotton products—from apparel and
home textiles to non-wovens such as cotton
swabs and wipes.
“Cotton Incorporated is a not-for-profit corporation established pursuant to the Cotton
Research and Promotion Act of 1966, 7
U.S.C. §2101, et seq. At the direction of the
U.S. Congress and on behalf of cotton growers, importers of cotton and cotton containing
products, and U.S. cotton product manufacturers, Cotton Incorporated has been carrying
out a continuous and visible program of
marketing, promotion, and research specifically for the purpose of strengthening the
competitive position of cotton and cotton
products,” explains Colleen Sullivan, Director,
Intellectual Property & Contracts of Cotton
Incorporated. For this non-profit organization,
the message can be said to be “cotton is the
first choice among consumers in apparel and
home products.”
Are there any special trademark
considerations?
Budget issues are more intense
For the most part, many of the trademark issues that non-profit organizations face are the
same as those that for-profit companies face,
but certain issues can be more intense for
non-profit organizations.
INTA’s Online Topic Portal
Access INTA research and policy materials on a variety of trademark topics. The Topic Portal is available to all
inta.org site visitors and includes links to:
•
•
•
•
•
Searchable online databases, fact sheets and other Global Trademark Research information.
Recent INTA Bulletin articles.
Resolutions of INTA’s Board of Directors.
Policy resources, including amicus briefs, reports and more.
Links to intergovernmental and nongovernmental organizations.
Visit www.inta.org/topicportal
10 April 15, 2011 Vol. 66 No. 8
Features
Not surprisingly, budget allocation for a trademark practitioner at a non-profit organization
can be far more challenging than for counterparts at for-profit corporations, due to the
relatively smaller size of the budget.
“With 200 countries to protect and limited
resources, many times we’re reactive rather
than proactive, depending on which area
of the world has the greatest problems
or threatens the greatest exposure,” says
Jomarie. “On a limited budget, the challenge
is always to be as aggressive as necessary
to protect against infringers and dilution, but
absolutely no more so, because that money
could instead be spent on eradicating polio or
alleviating world hunger. It puts a lot of things
into perspective.”
Colleen agrees. “It is important to focus on
your business needs and try to find business
appropriate solutions. Non-profits have limited
resources and limited funds; therefore you
have to focus on what really matters and let
the rest go.”
Nevertheless, for some, this challenge actually serves to increase job satisfaction. One
of the most rewarding aspects of working for
a non-profit organization is “being innovative and creative to accomplish more with
less,” remarks Sabine Schmidt, Trademark
Paralegal with Financial Planning Standards
Board Ltd.
“Customers” and even members may believe
they have a right to “infringe.”
While there are many similarities between the
trademark practice of a non-profit organization
and that of a for-profit corporation, there are
a few aspects of trademark practice that are
relatively unique to non-profit organizations.
faces in terms of trademark protection. “It
is not only difficult to convince lay people
that a service mark deserves protection as
a source identifier, it is even harder when
those lay people are in countries where the
concept of ‘intellectual property’ is both literally and figuratively ‘foreign’ and, perhaps,
utterly elusive.”
For example, “in the case of a non-profit orgaWhat is on the “wish list” of trademark pracnization representing those in the educational,
titioners in the non-profit sector?
public service, and/or religious sectors, it is
Beyond wishing for a bigger budget or lower
not unusual for the organization’s ‘customers’
costs, Colleen says, “It would be great if
to believe that they have a right to utilize the
there were more sessions at conferences
organization’s trademark as they see fit withthat devoted some time to issues for nonout asking permission,” says Amber. “Many
have the best intentions, which makes drafting profits. Recently, a non-profit discussion
group was created within INTA. Those discuscease and desist letters quite difficult.”
From January through March, several sions
INTA member
organizations
will host
have been
far more helpful
than many
Pre-Annual
Meeting
Receptions.
We
encourage
you
to
attend
and
bring
attended
One common example of how well-intentioned of the conference sessions I havecolleagues
past.Meeting,
It wouldorbe
nice
to see
this disin with
the area
who have
never attended in
anthe
Annual
who
want
to learn
misuse occurs
non-profit,
membershipcussion
group develop
into something
a little
based associations
is where
modifygathering
more about
INTAmembers
and the largest
of trademark
professional
worldwide.
more formal.”
the association’s logo by merging it with
their own. This
practice at
haseach
the potential
Attendees
receptionofwill:
Peg Reardon,
Manager,
INTA Membership
diluting the association’s
mark. Thus,
theand success
• Exchange valuable
insight
stories about
the Annual
Meeting
Development comments, “It is good to know
association is put in the unenviable position
• Network and meet new professionals with a common interest in trademark law
that members are benefiting from the discusof having to send a cease and desist letter
• Mingle with friends and peers over hors d’oeuvres and cocktails
sion group and see value in taking it further.
to one of its own members requesting that
• Enter
a raffle
to win a free
Annual Meeting
registration
While the
group has quarterly calls and meets
the member not
use the
association’s
logo
in person at INTA’s Annual Meeting, there is
in a manner that could adversely affect the
still much to be done. Anyone interested in
trademark owner.
learning more about this group and how to get
involved may contact me (preardon@inta.org)
Along those lines, Jomarie sees the prevenor Amber (asterling@aamc.org), who chairs
tion of infringement through “educating the
the group.” ■
membership” as the biggest difficulty she
The Trademark Reporter seeks contributions from trademark
professionals and is particularly looking to expand its coverage of
international issues by international writers.
Contact the Managing Editor at tmr@inta.org or visit www.inta.org/tmr
11
Law&Practice
Consumer Perceptions of Sub-brands
EUROPEAN
UNION Considered in ANN TAYLOR LOFT Case
The General Court handed down its decision
in Annco, Inc. v. OHIM (Case T-385/09, Feb.
17, 2011), in which a CTM application for ANN
TAYLOR LOFT in Classes 18, 25 and 35 was
opposed based on an earlier French trademark
registration for LOFT in Classes 18 and 25.
Both the Opposition Division and the First
Board of Appeal of OHIM held that the appliedfor mark ANN TAYLOR LOFT was confusingly
similar to the prior-registered mark LOFT
for goods in Classes 18 and 25. In finding a
likelihood of confusion, the Board of Appeal
determined that the ANN TAYLOR LOFT mark
would be perceived as a first name, a middle
name and a surname. It further found—relying on the Court of First Instance’s decision in
Harman International Industries, Inc. v. OHIM
– Becker (Case T-212/07 (Dec. 2, 2008)),
which was subsequently criticized by AdvocateGeneral Cruz Villalón and the Court of Justice—
that LOFT, as a surname, was the dominant
element in ANN TAYLOR LOFT. (It should be
noted that the Court of Justice has since set
aside the judgment in Harman and remitted
Trademarks vs.
other IP rights?
TM or ®?
Trademarks at
EU level
and beyond?
To register
or not to
register?
Sounds, colors
or smells as
trademarks?
the case to the General Court, with some criticisms. Case C-51/09 (June 24, 2010).)
On appeal, the General Court found, first, that
LOFT was a common descriptive word and that
it would not be perceived by French consumers
as a surname, and, second, that ANN TAYLOR
was far more distinctive than LOFT when the
ANN TAYLOR LOFT mark was considered overall. Therefore, the overall similarities between
the marks at issue were weak.
In determining the likelihood of confusion, the
General Court took into account the marketing
methods in the fashion sector, and particularly
that it is common in the clothing sector for the
same mark to be configured in various ways
and for a single clothing manufacturer to use
sub-brands (signs that derive from a principal mark and that share with it a common
dominant element) in order to distinguish its
various clothing lines from one another.
Taking into account that ANN TAYLOR was the
most distinctive element of the mark ANN
It remains to be seen whether this decision will
be appealed to the Court of Justice, and also
whether the findings regarding sub-brands
and secondary lines will be extrapolated with
regard to other goods and services. In the
meantime, this case provides a reminder
that there will not always be a likelihood of
confusion where a later composite mark wholly
incorporates an earlier registered one.
Contributor: Bill Ladas
SJ Berwin LLP, London, United Kingdom
Verifier: James Tumbridge
Gowlings, London, United Kingdom
Both are members of the INTA Bulletin Law &
Practice—Europe Subcommittee.
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12 April 15, 2011 Vol. 66 No. 8
TAYLOR LOFT, the weak similarities between
the marks and that it was “normal for a ‘house
brand’ to vary its own mark by adding to it an element that characterises a secondary line,” the
court held there was no likelihood of confusion.
Law&Practice
CANADA Dispute Resolution Policy for .ca Domain Names to Change
Based on input received during last year’s
public consultation, the Canadian Internet
Registration Authority (CIRA), operator of
Canada’s .ca country code top-level domain,
has announced proposed changes to its CIRA
Domain Name Dispute Resolution Policy
(CDRP). CIRA expects that the changes will be in
effect as early as late spring or early summer of
this year. The proposed changes will make the
CDRP more consistent with the Uniform Domain
Name Dispute Resolution Policy (UDRP), notably
expanding the bad-faith criteria factors.
Brand owners wanting to challenge a .ca
domain name under the current CDRP must
demonstrate three factors:
•The .ca domain name is confusingly similar
to a mark in which the complainant had
prior rights;
•The registrant registered the .ca domain
name in bad faith; and
•The registrant has no legitimate interest in
the .ca domain name.
CIRA’s proposed changes refine each element
of this three-part test:
1. Confusing similarity will be a narrow test.
Instead of the broader traditional confusion
test from trademark law that some decision
makers have used in the past, all decision
makers will be required to use the narrow
“resemblance” test in comparing the domain
name with the complainant’s trademark.
Moreover, the new CDRP will no longer narrowly prescribe what “rights” or “use” of a
mark are required to qualify for protection.
2. Expansion of bad-faith factors. The CDRP
currently contains a closed list of circumstances that constitute “bad faith.” The
proposed changes will make this list nonexhaustive, and the use of a domain name
for commercial gain will be added to the
list of bad-faith examples.
3. Expansion of legitimate-interest factors.
The proposed changes will also make the list
of legitimate-interest factors non-exhaustive.
A related change will eliminate the requirement for a registrant to have used a generic
or descriptive domain name to establish a
legitimate interest in such a domain name.
Other proposed changes include a postdecision implementation period shortened
from 60 days to 30 days. Also, CIRA will
permit domain names to be transferred
to the complainant in case of an early
settlement (previously, a pending CDRP case
would prevent any transfers, including to
the complainant). In addition, e-filing will be
possible, and CIRA will make a searchable
index of past cases available on its website.
CIRA is now seeking further input on proposed
changes to the procedural CDRP rules. One
proposed change is on the topic of fees.
CIRA is considering staging fees so that a
complaint can be initiated with payment of a
small fee only, with a larger fee due later in
the proceeding if necessary. As part of the
proposed staging, the initial complaint and
response would need only to set out basic
preliminary information instead of all the
submissions as is currently required. CIRA is
also seeking input on a proposal to provide
complainants with the option of receiving, in
cases of uncontested complaints, either a full
decision or a lower-cost summary decision.
CIRA’s proposed changes aim to achieve a
better balance of the interests of brand owners
and domain-name registrants. The expansion
of bad-faith factors should provide flexibility in
addressing the evolving nature of cybersquatting,
and the closer alignment of the CDRP to the
UDRP should make available a large body of
UDRP jurisprudence relating to the bad-faith
and legitimate-interest elements. However, the
eligibility requirements for initiating a CDRP
complaint will remain unchanged—CIRA’s
Canadian Presence Requirements will still need
to be met by a proposed complainant.
More information about the consultation
results, proposed policy and rule changes,
and the invitation for further input is available
on the CIRA website at www.cira.ca/CDRPConsultation-Conclusions.
Contributors: Yuri Chumak and R. Scott
MacKendrick
Cameron MacKendrick LLP, Toronto, Ontario
Verifier: Neil Melliship
Clark Wilson LLP, Vancouver, British Columbia
Mr. KacKendrick and Mr. Melliship are members of
the INTA Bulletin Law & Practice—United States &
Canada Subcommittee
EUROPEAN UNION OHIM’s New Online Filing for Oppositions
On March 1, 2011, OHIM introduced a new
online-filing service for opposition purposes.
This new e-filing solution was designed based
on users’ feedback. The new design is harmonized with other online services such as CTM
and RCD e-filings.
The new features are as follows:
•The complete opposition online form is
displayed in one single page. All sections are
always visible, and attachments can be uploaded at the click of a button at any time.
•New features and automatic action buttons
ensure that data are smoothly inserted and
imported.
•Automatic checks make sure that the opponent provides the correct data to facilitate
admissibility.
•The data regarding the challenged opposition and the basis of the opposition can be
directly loaded from OHIM’s database.
•An action button allows the user to preview
the form in a PDF file that is marked as
“DRAFT” to avoid any confusion and indicate
that the form has not been submitted yet.
This draft can be printed.
•The opposition notice submission and automatic generation of a receipt by OHIM are
much faster. The receipt can be printed or
saved in the opponent’s database.
For more information, see Alicante News, February 2011, at http://oami.europa.eu/ows/
rw/pages/OHIM/OHIMPublications/newsletter/1102/EBUSINESS/ebis1.en.do.
Contributor: Michaela Huth-Dierig
Boehmert & Boehmert, Munich, Germany
Verifier: Wiebke Baars
Taylor Wessing, Hamburg, Germany
Ms. Huth-Dierig is a member of and Ms. Baars
is co-chair of the INTA Bulletin Law & Practice—
Europe Subcommittee.
13
Law&Practice
UNITED KINGDOM Comparative Advertising: What Is Permissible Use of a Mark?
In Kingspan Group Plc v. Rockwool Ltd.
([2011] EWHC 250 (Feb. 21, 2011)), the High
Court examined the scope of permissible
comparative advertising and, in particular,
how misleading statements can deprive a
defendant of a potentially valuable defense to
trademark infringement.
The Facts
Rockwool manufactures mineral wool used in
insulation and fire protection. In 2007, Rockwool developed a range of promotional materials that emphasized the fire-resistant nature of
its goods compared with other products made
with plastic foams.
Rockwool arranged for its products and those
of Kingspan to be lab tested, with the aim of
comparing the performance of Rockwool’s
incombustible “fire safe” products and Kingspan’s combustible products (some, but not
all, of which were labeled “fire safe” in accordance with applicable EU and local-law requirements for its products). These test results were
shown to potential customers at road shows in
two forms: (1) in a video identifying Kingspan’s
products by reference to Kingspan’s UK and
Community trademarks and (2) in another
video that did not refer to Kingspan’s trademarks but did use footage showing a product
that could be recognized as one of Kingspan’s
products. These videos all showed Kingspan’s
products catching fire rapidly, while Rockwool’s
products performed significantly better.
Kingspan objected to the ads and brought an
action for trademark infringement. Rockwool
relied on the permission to advertise comparatively provided by European Directive
2006/114/EC. For a party to avail itself of this
defense under the Directive, the comparison
cannot be misleading.
The Decision
Having heard expert evidence, the High Court
found that the test and the specific Kingspan
products used in the test gave a misleading
impression of the risks in a fire. Therefore,
Rockwood’s advertising was not permissible
under the Directive. Further, Rockwool had
made misleading statements. Accordingly, the
court found trademark infringement and held
that the use of the trademarks was without
due cause and took unfair advantage of, or
was detrimental to, the distinctive character
or repute of the marks, contrary to Article 5(2)
of the European Trade Marks Directive and
Article 9(1)(c) of the CTM Regulation.
Importance
Notwithstanding the judgment of the Court
of Justice in Intel Corp. Inc. v. CPM United
Kingdom Limited (Case C-252/07 (Nov. 27,
2008) (requiring evidence of a change in the
economic behavior of the average consumer to
support a claim that detriment to distinctiveness or repute has occurred)), the High Court
found that Kingspan did not need to demonstrate “actual and present injury; it is enough
that the proprietor... demonstrates that there
is a serious risk that such injury will occur in
the future.” This therefore lowers the test to
arguments based on risk of harm, rather than
requiring an identifiable change in economic
behavior for a claim to be successful.
Contributor: James Tumbridge
Gowlings, London, United Kingdom
Verifier: Christopher Morcom
Hogarth Chambers, London, United Kingdom
Mr. Tumbridge is a member of the INTA Bulletin Law
& Practice—Europe Subcommittee.
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June 20–July 1
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