Speakers at yesterday’s session on Trolling (right) identified three types of trademark enforcement that can be considered improper. Traditional trolls—like the infamous Leo Stoller—seek to profit from trademarks that they have seldom or never used. It is estimated that trademark owners have spent more than US$24 million defending suits brought by Stoller. Nontraditional trolling occurs when a party claims that it “owns the unownable,” according to Adam Cohen of Kane Kessler, PC. This happens when a party asserts rights in things like descriptive marks or phrases that reflect cultural movements. Finally, many trademark professionals are concerned about being accused of overly aggressive enforcement of unarguably legitimate rights. Before sending a cease-and-desist letter in such instances, said Mark A. Finkelstein of Jones Day, consider whether you’d be completely comfortable making your arguments in court and whether you would care if the letter was posted online.
Trademark clearance doesn’t always stop with the trademark office. In many regulated industries, practitioners must be familiar with the rules and processes of agencies such as the Food and Drug Administration in the U.S. and ANVISA in Brazil, to obtain full approval for a particular mark or advertisement. Speakers at yesterday’s session on dealing with restrictions on trademarks and advertising in regulated industries discussed the law in the U.S. and Brazil, and in-house counsel from Mars and Pernod Ricard explained the steps they take to ensure they obtain the proper clearance without compromising their ability to promote and protect their brands.
Protecting just five trademarks in the sunrise periods for only 150 of the expected 2,000 new gTLDs could cost nearly $200,000, according to Stacey King of Richemont (above), speaking at yesterday’s Cyberspace session. She urged brand owners to audit the list of strings approved “and use your audit list as a sanity check,” adding that trademark owners will have to change the way they enforce. Speakers on the panel agreed that the gTLD growth could transform the Internet, search engines and the way companies and consumers interact. But King urged brand owners not to panic: “It’s both not as terrible, and also much more terrible, than you think.”
A session on the relationship between in-house and external counsel saw attendees given examples to discuss in small groups. The prosecution example involved a request to search for 10 marks across 20 countries over a weekend. The bill? US$250,000. The litigation example, involving a rival using a similar label, seemed cheap at US$150,000. But then, all you got for that was some over-zealous preparation work by an associate. “Being in-house, I don’t want to say it’s all about the money, but it’s all about the money,” said speaker Warren L. Zeserman of Hanesbrands Inc.
In a session on indigenous rights and their interaction with traditional IP, the audience was shown a video about one of the speakers, Phil Fontaine, former National Chief of the Assembly of First Nations in Canada. Fontaine was then interviewed by session chair Keri Johnston of Johnston Wassenaar. Explaining the difficulties in knowing which word to use for aboriginal peoples—Indian, First Nation, aboriginal, indigenous—Fontaine recalled that when he first went to talk to the Inuit peoples in northern Canada, he used the term “Inuit” because he wanted “to be as sensitive as possible.” But his hosts corrected him, saying they were Eskimos, despite that being the name given to them by European settlers, like “Indian” in the rest of Canada.
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