The Internet is addressed in many of the sessions at INTA this year, whether it’s gTLDs, social media or fluid marks. But the Internet is also making a big difference to the resources that INTA offers to its members, providing guides and advice on trademark practice around the world. Two new online launches, and one move to electronic format, have demonstrated this recently.
Most INTA members will be familiar with the Global Trademark Research section of the INTA website. This is divided into two parts, open access and members-only information, of which the latter is by far the larger. “Access to the online resources is one of the most valuable benefits that Association membership provides,” says James Bush, INTA’s Director of Publishing and Online Resources. “Anyone who works at a member organization can get a username and password, and should explore our unique offerings.” If Members who haven’t visited for a while will see two new squares—one red and one purple—for the Practitioners’ Checklists and Industry Perspectives.
The former is a management tool aimed at helping practitioners unfamiliar with an area of work to go systematically through the process, and not miss any crucial stages. It is a valuable addition to products such as INTA’s Country Guides, which provide a lot of information on local law and practice, but don’t necessarily address the management side of the trademark function.
There are six checklists so far, providing procedures such as trademark clearance, due diligence, proving a mark is well known and quality control for licensors. Others are due to be added soon.
Industry Perspectives, on the other hand, so far includes an article on trade dress in the food and beverage industries—by Mark Hiddleston of Elkington and Fife and Richard Young of Quarles & Brady. It gives specific advice on the issues that are faced by both manufacturers and retailers, deliberately taking turns to look at the issues from both points of view. The question of lookalike products, for example, is different depending on which side you are coming from.
Other industry perspectives in the works include one on logos in apps and games, and on hallmarking.
Filling niches
Both the Checklists and the Industry Perspectives were driven by the same aim to provide niche, practical information that wouldn’t necessarily be covered elsewhere. “There are quite a few topics that don’t require book-length treatment. That are more suited to short, online guides such as those we now have on INTA’s Global Trademark Research,” says Michael Lisi of Honigman Miller Schwartz and Cohn, the chair of INTA’s Publications Committee.
Lisi wrote the Practitioners’ Checklist on licensor’s quality control, alongside Kevin Collette of Ryan Swanson & Cleveland in Seattle. He uses this as an example of a topic that would never get full treatment elsewhere. “But it is an important topic. It tries to go through all the issues that you should consider when drafting a license agreement, if you’re concerned about quality control in particular control in particular, and making sure the licensee is using the trademark for goods and services that meet your standards.
“This is a critical issue in the US, especially given our doctrine of naked licensing,” says Lisi. “If you don’t exercise control over quality and use of your mark, you risk losing it.”
Aiming high
Several themes run through all the information INTA provides online. One of them, Lisi says, is an unstinting commitment to quality. “I don’t want to sound immodest, but we think the online publications we provide are the best in the world in terms of quality. We take that standard and apply it to everything. We believe that if someone in the world needs to provide these resources to global in-house counsel, it should be us.”
Many resources obviously work far better online. The Quick-Start Trademark Chart, for example, provides basic answers to 18 questions across more than 120 jurisdictions. It tells members how long the grace period for renewal is, or the oppositions period, and clicking on either the country or the question will bring up a much more manageable table that displays those specific answers. Users can click through to more detailed information in other products, such as Country Guides.
The US State Trademark Law resource, on the other hand, provides similar depth of information but is the result of transferring a two-volume book previously produced by INTA onto the website. It provides information such as registration procedures and franchising arrangements across all 50 US states, plus Puerto Rico.
Most of the content available in INTA’s Global Trademark Resources is as widely international in scope as the Quick-Start Chart and Country Guides, which are the most popular resources. Finding contributors to provide the best advice consistently over time can be a challenge, but INTA draws on the expertise of its worldwide network of trademark professionals.
“It’s a big undertaking,” says Lisi, who is also the US contributor for the Trademark Cancellations resource. “For the cancellations section I have to review my copy every year, to make sure it is up to date. And there’s no rotation of the position—as they say, it’s an appointment for life.”
This doesn’t make it easy to find the right authors, but Lisi doesn’t have that responsibility: the Publications Committee deals largely with new products and ideas; once the resources are up and running, they are handed over to separate project teams. And the Publications Committee’s liaisons on the INTA staff—Mary McGrane, Liz Hanellin and Vincent Raval—play a crucial role in creating, developing and managing the resources.
“Good writers are always welcome, for any of the INTA resources,” he says. “And one of the Publications Committee’s jobs at the Annual Meeting is to review everything we produce, to see if there’s anything new we can provide. So do come and tell us if you have any ideas.”
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Other resources
Don’t miss these other resources on www.inta.org:
• Topic Portal—gateway to INTA information—including policy resources, like Board of Directors Resolutions and amicus briefs—organized by subject.
• Trademark Basics—publicly available resources to teach staff and clients about trademarks. Includes Fact Sheets, Presentations, a glossary and brochures. Produced by the Online Reference Committee.
• INTA Bulletin — biweekly newsletter reporting on Association news and policy and trademark law and practice. Log on to search online archives go back to 2000. Produced by the INTA Bulletin Committee.
• The Trademark Reporter—peer-reviewed journal exploring theoretical aspects of trademark law as well as practice-oriented matters. Produced by The Trademark Reporter Committee.
