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In a volatile environment, where the dynamics of law governs the outcome of judicial decisions, corporate legal executives must continuously remain proactively compliant and vigilant in all areas of legal management and regulatory revisions. In such a sphere, complacency results in high cost incurrence, corporate framework collapse and irreparable disrepute.

The Chief Litigation Officer Summit provides a revolutionary platform for senior in-house litigators to strategize on the litigation process, as they endeavor to provide augmented corporate defense and representation.

With the ever changing issues and regulations surrounding IP and Patents, managing the increasing complexities within IP Litigation and keeping within budget, along with successfully controlling brand crises, emerging triumphant from patent prosecution, keeping on top of licensing activities are all pertinent to the protection of the organizations IP and keeping your corporation out of the headlines.

The IP Law Summit discusses key strategies for managing your IP issues, forges new relationships and generates new business opportunities with a distinguished group of IP Counsels from a cross-section of Corporate America.

The most recent IP Law and Chief Litigation Officer Summits took place in Florida in September 2017 continuing a tradition of providing an intimate environment for legal executives and selected service providers to engage in a meaningful way.

Keynote speakers will discuss the monetization of IP, Cyber Security and Privacy, Ethics and Litigation Abuse and International IP at the upcoming IP Law Summit in March 2018. At the Chief Litigation Officer Summit, they will share insights on litigation management, labor and employment; recent developments and emerging trends, litigation prevention; assessing risk management strategies and the new administration’s impact on corporate legal departments.

As this is a co-located event, all attendees will have the opportunity to network and mingle between themselves maximising their time onsite.

The Vice President, Assistant General Counsel from Orthofix International N.V: “Provides companies with lots of opportunities and options to serve their legal needs. Loved the diversity of qualifications and background of outside counsel.”

The Associate General Counsel Products and IP Law from Informatica LLC comments: “The summit is an excellent networking opportunity and educational opportunity. I really appreciated the opportunity to exchange ideas with top in-house counsels.”

More information about the Chief Litigation Summit 2018 here.

More information about the IP Law Summit 2018 here.

Leyana Daccache

Media & PR Executive

Leyanad@marcusevanscy.com

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Trademarks and service marks are essential and valuable assets of a company.  They are used to identify the source of a particular good or service to the consuming public and are an indicator of the quality of the goods or services provided.  A protected mark for a specific good or service helps a business increase its recognition and consumer loyalty.  Additionally, an owner’s right in the mark continues to grow through use in commerce.

In the United States, a mark can be registered at either the state or federal level; however, prior to selecting a particular mark for a product or service, a trademark-screening search should be performed on all state and federal registered marks as well as pending marks.  Based on the results of the search, a determination on whether to seek federal registration for the trademark can be made.

In America, trademark rights exist in both traditional and non-traditional marks. Words, phrases, symbols, logos and/or designs are all examples of traditional trademarks.  In addition, to these traditional marks, exclusive rights can also exist for a particular color, sound, scent and/or any combinations of these.  For the purpose of this article, we will focus specifically on non-traditional trademarks.

The Trademark Act of 1946, known as the Lanham Act, governs trademark matters in the United States.  In the Supreme Court decision Qualitex Co. v. Jacobson Products Co, the Court ruled that non-traditional trademarks could be protected (514 U.S. 159).  In order to protect a non-traditional mark, the Court required a finding of “secondary meaning.” “Secondary meaning” exists when the relevant consumers identify a particular mark for a certain product or service. This is typically due to an extended period of use of a mark for a specific service or good. This can be proved by submitting evidence that the mark has acquired distinctiveness through proof of sales success, advertising and promotional expenditures. This substantiates the length and exclusivity of use. Evidence can also include unsolicited media coverage confirming this fact, statements in the form of affidavits from industry leaders recognizing the mark as a source identifier as well as consumer studies and surveys substantiating this fact.

  • Colors

For trademark protection in a particular color, the color must “act as an indicator of source” and not serve any function.  A few prominent examples of protected colors include: Home Depot’s “orange” color for “retail home improvement stores” (Reg. No. 4,300,027); Tiffany’s particular shade of blue used on its bags, boxes and catalogue for “Jewelry” (Reg. No. 4,804,204); Owens-Corning’s “pink” insulation for “foam insulation for use in building and construction” (Reg. No. 2,090,588); and, United Parcel Service’s (U.P.S.) “chocolate brown” as applied to the entire surface of its vehicles and employees’ uniforms for “transportation and delivery of personal property by air and motor vehicle” (Reg. No. 2,901,090). These protected colors have achieved secondary meaning, as the consuming public associates the protected color with the services provided by those companies.  To protect a “color,” it is essential that the “color” is only used for promoting the brand’s identity without affecting the goods or services’ functionality.

  • Sounds

Trademark rights may also exist in a particular sound that is distinctive and is describable in words.  For example, a common telephone ring cannot become a registered trademark; however, a unique sound or musical arrangements utilized to indicate the source of specific goods or services can be protected.   Examples of protected sounds include: NBC Universal’s chimes, described as “a sequence of chime-like musical notes which are in the key of “C” and sound the notes “G,” “E,” “C,” the “G” being the one just below middle “C,” the “E” just above middle “C,” and the “C” being middle “C” for “the broadcasting of television programs” (Reg. No. 916,522); MGM Studio’s “lion roaring” for “motion picture films and prerecorded video tapes” (Reg. No. 1,395,550); and, AFLAC insurance’s protected “sound of a duck quacking the word ‘AFLAC’” for “Insurance underwriting services in the fields of dental, health, life, cancer, hospital intensive care, accident and disability, hospital indemnity, hospital confinement indemnity, Medicare supplement, sickness, home healthcare, long-term healthcare, and convalescent health care” (Reg. No. 2,607,415).

  • Scents

Finally, a unique scent can also be protected as long as evidence exists that the scent has acquired distinctiveness for the listed goods or services and is not a functional part of a product.  Examples of trademarked scents include: The Eddy Finn Ukulele Company’s “piña colada” scented ukuleles (Reg. No. 4,144,511); Brazilian company, Grendene’s “bubble gum” scented “shoes, sandals and flip flops” (Reg. No. 4,754,435); and, Lactona Corporation’s “strawberry” scented toothbrushes (Reg. No. 3,332,910).  However, a particular perfume scent, such as “Chanel No. 5,” is unable to be registered due to the functionality requirement.  Unlike many of the other forms of non-traditional trademarks, scent marks are extremely rare in the United States. This is due to the fact that the USPTO requires “substantial” evidence to prove distinctiveness (Trademark Manual of Examining Procedure § 1202.13).  If an applicant is unable to demonstrate that a scent has acquired distinctiveness, the scent can only be registered on the Supplemental Register (Trademark Manual of Examining Procedure § 1202.13).

The use of traditional and non-traditional trademarks by a company is necessary for a business to distinguish themselves from their competitors.  Without them, companies would be susceptible to similar products or services mimicking the successful aspects of the their brand.  By extending protection to non-traditional, unique identifiers of a particular good or source, brands are able to fully protect the distinctive aspects that make their company’s unique services and products.

This article is not intended as legal advice as a professional specializing in the field, such as an attorney, should be consulted.

© 2017 The Jacobson Firm, P.C.

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Entertainment and media attorney at The Jacobson Firm, P.C.
Justin M. Jacobson is an entertainment and media attorney in New York City.
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On 6 July 2017, New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme. Under the GPPH, an applicant can speed up examination of its application in a GPPH-participating country if claims of a corresponding application have been allowed in another GPPH-participating country.

Over 20 countries are now in the GPPH including Australia, Canada, Germany, the United Kingdom, Japan, Korea, Singapore and the USA.

In order to expedite examination under the GPPH in New Zealand based on another application in a GPPH-participating country:

  • the applications in both countries must share the same earliest filing date or priority date;
  • at least one claim in the other application must have been found to be patentable in the GPPH-participating country;
  • the claims of the New Zealand application must sufficiently correspond to (be identical, similar, or narrower than) the patentable claim(s).

Expediting examination under the GPPH does not guarantee acceptance. While expediting examination of an application would result in the Patent Office of the GPPH-participating country examining the application sooner, the Patent Office would still examine the application in accordance with its local patent law.

The addition of New Zealand to the GPPH allows patent attorneys to expedite and minimise the cost of multi-national patent examination.

Further reading:

Nigel Pereira – Principal

Network & Telecommunications Engineer and Patent Attorney

WADESON

Level 27, 101 Collins Street, Melbourne VIC 3000, Australia

+61 3 9819 3808

Author information
Principal; Mechanical Engineer & Patent Attorney at Wadeson
Ben is a patent expert with real-world experience as an engineer in manufacturing.
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