Trademark Considerations of Non-Profit OrganizationsPage 10

FeaturesStudy on the Overall Functioning of the European Trademark SystemPage 7

INTABulletinThe Voice of the International Trademark Association

On March 26, 2011, INTA held the National Finals of the Saul Lefkowitz Moot Court Com-petition 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 Sam-uel 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 trade-mark 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-of-confusion 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 Ex-ecutive 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

AssociationNews

University of Louisville Prevails in 2011 Lefkowitz Moot Court Competition

In This Issue

Law&Practice Canada 13European Union 12United Kingdom 15

AssociationNews INTA Amicus BriefLefkowitz Moot Court CompetitionUSPTO Notice on Design MarksVolunteer Spotlight Karen Fong Christopher P. Bussert

1126

April 15, 2011 Vol. 66 No. 8

Continued on page 2

Continued on page 3

An opinion in the U.S. Circuit Court of Ap-peals 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 conse-quences 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).

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

based on vintage posters featuring Betty Boop’s image that it has restored.

The U.S. District Court for the Central District of California dismissed Fleischer’s claims for trademark and copyright in-fringement on summary judgment, finding that Fleischer had proved neither a valid copyright nor trademark and thus lacked standing to sue. Over a dissent, a three-judge Ninth Circuit panel affirmed.

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

AssociationNews

INTA Brief Urges U.S. Court to Reconsider Aesthetic Functionality, Copyright in Betty Boop Battle

April 15, 2011 Vol. 66 No. 82

AssociationNews

INTA Bulletin CommitteeTo contact a member of the INTA Bul-letin Committee, send an email to the managing editor at bulletin@inta.org.

ChairJanice Housey, MH2 Technology Law Group LLPVice ChairWalter Palmer, Pinheiro Palmer Advo-gadosAssociation NewsMarie Lussier, Chitiz Pathak LLPKen Taylor, MarksmenFeaturesValerie Brennan, Hogan LovellsAlexander Klett, Reed Smith LLP

Law & Practice: Africa, Central Asia,Eastern Europe & Middle EastCharles Sha’ban, Abu-Ghazaleh Intel-lectual PropertyLaw & Practice: Asia–PacificBarbara Sullivan, Henry Hughes Patent & Trademark AttorneysLaw & Practice: EuropeWiebke Baars, Taylor WessingChristoph Gasser, Staiger, Schwald & Partner Ltd.Law & Practice: Latin America & CaribbeanJohn Murphy, Arochi, Marroquin & Lindner S.C.Law & Practice: United States & CanadaTimothy Lockhart, Willcox & Savage PC

INTA Bulletin StaffExecutive DirectorAlan C. DrewsenDirector, PublishingRandi MustelloManaging Editor, INTA BulletinJames F. BushAssociate Editor, INTA BulletinJoel L. BrombergManager, Marketing and Brand StrategyDevin Matthew ToporekDesignerJesse Riggle

INTA Officers & CounselPresidentGerhard R. Bauer, Daimler AGPresident ElectGregg Marrazzo, Estée Lauder Inc.Vice PresidentToe Su Aung, BATMark Ltd.Vice PresidentBret Parker, Elizabeth Arden, Inc.TreasurerMei-lan Stark, Fox Entertainment GroupSecretaryLucy Nichols, Nokia CorporationCounselDale 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

INTA Betty Boop Brief Continued from previous page

using Betty Boop as a trademark, but instead as a functional product.” The functionality de-fense allows competitors to copy useful product features, while the concept of “aesthetic func-tionality” considers whether purely aesthetic features might be considered “functional” be-cause 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

in dictum that, when a copyrighted work falls into the public domain, the owner of a trade-mark comprising that work cannot assert trademark rights because that would prevent the work “from ever entering the public do-main.” 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 Law-rence K. Nodine of Ballard Spahr, Susan J. Hightower of Pirkey Barber, counsel of record John W. Crittenden of Cooley, and subcom-mittee chair David H. Bernstein of Debevoise & Plimpton. Other amicus briefs were sub-mitted on behalf of the professional sports leagues, the Motion Picture Association of America, and Edgar Rice Burroughs, Inc.

Susan J. HightowerPirkey Barber LLP, Austin, Texas, USAU.S. Amicus Subcommittee of the International Amicus Committee

On March 2, 2011, the U.S. Patent and Trade-mark Office issued a final notice that it will discontinue the practice of coding newly regis-tered 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

system modeled after the International Classifi-cation of the Figurative Elements of Marks.

INTA’s USPTO Subcommittee submitted com-ments to the USPTO earlier this year support-ing this decision and noting that the newer system is widely used and more specific. The Association’s comments suggested that the

USPTO redirect the cost savings from discon-tinuing 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 Trade-mark Next Generation Program.

USPTO Issues Final Notice on Coding of Design Marks

3

AssociationNewsUniversity 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

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 distin-guished jurists from the Trademark Trial and Appeal Board of the U.S. Patent and Trade-mark 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 Wiscon-

sin 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

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 recog-nized that the National Finals would never hap-pen without the tireless efforts of Chris Foley and the support of his firm, Finnegan, Hender-son, Farabow, Garrett & Dunner. She added, “Over 200 trademark attorneys, members of

the USPTO and federal and state judges volun-teer 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 dedi-cated 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 organiza-tions, 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. ■

Cathy LuedersLefkowitz Committee Chair, 2010–2011MasterCard International Incorporated

Deborah K. SquiresLefkowitz Committee Vice-Chair, 2010–2011Incoming Chair, 2011–2012Cowan Liebowitz & Latman PC

Katherine BasileProblem and Bench Memo Subcommittee Chair, 2010–2011Incoming Vice-Chair, 2011–2012Novak Druce & Quigg LLP

Mark I. FeldmanCoordinating Competition Subcommittee Chair, 2010–2011DLA Piper US LLP

Anthony L. FletcherProblem Author, 2010–2011Fish & Richardson P.C.

Christopher P. FoleyNational Finals Coordinator, 2010–2011Finnegan, Henderson, Farabow, Garrett & Dunner LLP

East RegionCoordinating GroupAlexandra DeNeve, Major League Baseball

Properties, Inc., Coordinating Committee Co-ChairRoberta L. Horton, Arnold & Porter LLP,

Coordinating Committee Co-ChairJessica Rothstein, Goodwin Procter LLP,

Coordinating Committee Co-ChairStewart Bellus, Collard & Roe, P.C.Vanessa Hew, Duane Morris LLPKevin Moss, Kramer Levin Naftalis & Frankel LLP

INTA Thanks Lefkowitz Competition Committee Members, Volunteers and Sponsors

Continued on next page

Winning team members Whitney True (left) and Marilyn Osborn (right) with Lefkowitz Committee Chair Cathy Lueders.

April 15, 2011 Vol. 66 No. 84

AssociationNewsEric Osterberg, Fox, Rothschild LLPKimberly Sammons, CT CorsearchStephen Straub, Roylance, Abrams, Berdo &

Goodman, L.L.P.Cynthia Walden, Fish & Richardson P.C.Steven Warner, Fitzpatrick, Cella, Harper & Scinto

Brief Reading JudgesAndrew M. Abrams, Fish & Richardson P.C.Beth Alquist, Day Pitney LLPKeith Barritt, Fish & Richardson P.C.Douglas Bria, Jackson Lewis LLPEdward Gray, Jr., Fitch, Even, Tabin & FlanneryIrene Hudson, Fish & Richardson P.C.Paul H. Kochanski, Lerner, David, Littenberg,

Krumholz & MentlikEleanor Lackman, Lovells LLPJoel D. Leviton, Fish & Richardson P.C.Kristen McCallion, Fish & Richardson P.C.Eric Osterberg, Fox Rothschild LLPGretchen Testerman, Qwest Communications

International Inc.Cynthia Walden, Fish & RichardsonBrian Winterfeldt, Steptoe & Johnson LLP

Oral Argument JudgesKathryn Grant Belleau, Pitney Bowes Inc.Stephen Chin, von Simson & Chin LLPJames Coplit, MetLifeDickerson M. Downing, Crowell & Moring, LLPSteven R. Gustavson, Goodwin Procter LLPRoberta L. Horton, Arnold & Porter LLPCharles LeGrand, LeGrand LLCRichard S. Mandel, Cowan, Liebowitz & Latman, P.C.Lauren Mandell, Diageo North America Inc.Theodore C. Max, Sheppard MullinLauren Middlen, WWE, Inc.Robert M. O’Connell, Goodwin ProcterCarrie Webb Olson, Day Pitney LLCKathryn Barrett Park, General ElectricRobert 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

BailiffsCarissa Alden, Cowan Liebowitz & Latman P.C.Anna Bernardis, New York Law SchoolJiwon Jeannine Choi, Benjamin N. Cardozo

School of LawStephanie Y. Grenald, St. John’s University

School of LawThomas Grove, Pace Law SchoolPatricia Maxwell, Arnold & Porter, LLPDana Nelson, New York Law SchoolKaydi Osowski, New York Law SchoolJillian Raines, New York Law School

Darren Shield, New York Law SchoolLinlin Tian, Benjamin N. Cardozo School of LawAlan Veronick, Arnold & Porter LLPCeladon Whitehurst, Benjamin N. Cardozo School

of LawAmanda Willis, New Y ork Law SchoolJenni Wiser, Pace Law School

SponsorsArnold & Porter LLPCowan, Liebowitz & Latman, P.C.Goodwin Procter LLPKessler InternationalMasterCard International Inc.

Midwest RegionCoordinating GroupSandra Pedersen, Coordinating Committee Chair,

DLA Piper US LLPJoseph Nabor, Coordinating Committee Vice-Chair,

Fitch, Even, Tabin & FlanneryMarc Cooperman, Banner & Witcoff, Ltd.Mark Feldman, DLA Piper US LLPBrent Hawkins, McDermott, Will & Emery LLPJulie Katz, Husch Blackwell LLPKristen Knecht, Pattishall, McAuliffe, Newbury,

Hilliard & GeraldsonLinda Kuczma, Banner & Witcoff, Ltd.Olivia Luk, Jenner & BlockChristina Martini, DLA Piper US LLPGreg Schlenz, Banner & Witcoff, Ltd.Alisa Simmons, Fitch, Even, Tabin & FlanneryRichard Stockton, Banner & Witcoff, Ltd.Amy Ziegler, Greer, Burns & Crain, Ltd.

Brief Reading JudgesDanica Acosta, Wal-Mart Stores, Inc.Jill Anderfuren, Marshall, Gerstein & Borun LLPHeidi C. Constantine, MetLife Legal AffairsGina L. Durham, DLA Piper US LLPJulianne M. Hartzell, Marshall, Gerstein & Borun LLPJ. Michael Hurst, Keating Muething & Klekamp PLLJohn E. Lyhus, Fitch Even Tabin & FlanneryCasey Mangan, Allstate Insurance Co.Lydia Wahlke, Kirkland & Ellis LLPSuzanne M. Wallman, McDermott Will & Emery LLPUli Widmaier, Pattishall McAuliffe Newbury Hilliard

& Geraldson LLPMyla Barefield Young, Re:Sources USA, a Publicis

Groupe Company

Oral Argument JudgesHonorable David G. Bernthal, U.S. District Court

for the Central District of IllinoisHonorable Gerald Cohn, U.S. District Court for the

Eastern District of CaliforniaHonorable Matthew F. Kennelly, U.S. District

Court for the Northern District of IllinoisHonorable Diane Larsen, Cook County Circuit CourtHonorable Michael P. McCuskey, U.S. District

Court, Central District of IllinoisHonorable Raymond W. Mitchell, Cook County

Circuit CourtHonorable James Murphy, RetiredHonorable Dan Pascale, RetiredHonorable Francis T. Wasielewski, Milwaukee

County Circuit CourtDaniel P. Albers, Barnes & Thornburg LLPCarol Anne Been, SNR DentonNicole Chaudhari, DLA Piper US LLPLarry Crain, Greer, Burns & Crain, Ltd.David S. Fleming, Brinks Hofer Gilson & LioneMichael R. Graham, Marshall, Gerstein & Borun LLPPaul Juettner, Greer, Burns & Crain, Ltd.Mark Liss, Leydig, Voit & Mayer, Ltd.Edward D. Manzo, Husch Blackwell LLPDouglas N. Masters, Loeb & Loeb LLPFrederick W. Meyers, Ladas & Parry LLPMark Partridge, Partridge IP LawHeather Steinmeyer, WellPoint, Inc.Gerald O. Sweeney, Barnes & Thornburg LLPKevin A. Thompson, Davis McGrath LLCMonica Thompson, DLA Piper US LLPMatthew Walch, Latham & Watkins LLP

BailiffsChief Bailiff, Daniel Hwang, Pattishall, McAuliffe,

Newbury, Hilliard & Geraldson, LLPJonathan BediNicole Chaudhari, DLA Piper US LLPSarah Dale, Norvell IPJasmine R. Davis, Pattishall, McAuliffe, Newbury,

Hilliard & Geraldson, LLPColleen DeRosa, Jenner & Block, LLPAndrew N. Downer, Pattishall, McAuliffe, Newbury,

Hilliard & Geraldson, LLPRupen Fofaria, Loeb & Loeb LLPJennifer Garner, DLA Piper US LLPSabrina Guenther, Jenner & Block, LLPMelissa Hinds, Jenner & Block, LLPAshly A. Iacullo, Pattishall, McAuliffe, Newbury,

Hilliard & Geraldson, LLPNicole Little, Fitch, Even, Tabin & FlanneryLaura Pelanek, Jenner & Block, LLPKristin Rakowski, Jenner & Block, LLPJeremy Roe, Neal & McDevittAmanda SchmitzJennifer Senior, Jenner & Block, LLPSelena Spritz, Fitch, Even, Tabin & FlanneryChristopher Swickhamer, Banner & Witcoff, Ltd.

SponsorsDLA Piper US LLPFitch, Even, Tabin & Flannery

Lefkowitz Competition Committee Members, Volunteers and Sponsors Continued from page 3

5

AssociationNewsHusch Blackwell LLPMcDermott Will & Emery

Lunch SponsorIntellectual Property Law Association of

Chicago (IPLAC)

South RegionCoordinating GroupSheila Garber, Coordinating Committee Co-Chair,

Seyfarth Shaw LLPLauren Ralls, Coordinating Committee Co-Chair,

Kilpatrick Townsend & Stockton LLP

Brief Reading JudgesLinda K. DiSantis, CARE USAKristin Garris, Kilpatrick Townsend & Stockton LLPJanet Shih Hajek, Greenberg Traurig LLPOlivia Harris, Kilpatrick Townsend & Stockton LLPKerri A. Hochgesang, Smith, Gambrell & Russell, LLPSarah Anne Keefe, Womble Carlyle Sandridge &

Rice PLLCDavid A. Reed, Sutherland Asbill & Brennan LLPMarcy L. Sperry, Womble Carlyle Sandridge & Rice,

PLLCBreen Sullivan, Kilpatrick Townsend & Stockton LLPBrittany Summers, Seyfarth Shaw, LLPJulia Sutherland, Seyfarth Shaw, LLPAshford Tucker, Kilpatrick Townsend & Stockton LLPKatherine Wallace, Alston & Bird LLP

Oral Argument JudgesJason Altman, Kilpatrick Townsend & Stockton LLPAnita Bhushan, Finnegan, Henderson, Farabow,

Garrett & Dunner LLPJoan L. Dillon, Joan Dillon Law, LLCWinston T. Folmar, Ballard Spahr LLPHonorable Hilton Fuller, Superior Court of DeKalb

CountyMichael Landau, Professor, Georgia State University

College of LawDavid Lilenfeld, Lilenfeld PCThomas C. Lundin, Jr., King & Spalding LLPDavid Maxwell, Duane Morris LLPWilliam H. Needle, Ballard Spahr LLPLawrence K. Nodine, Ballard Spahr LLPSumner C. Rosenberg, Ballard Spahr LLPDaniel Schulof, Kilpatrick Townsend & Stockton LLPWilliam B. B. Smith, Jones Day LLPDavid L. Stewart, Alston & Bird LLPAllen Wallace, Chambers of U.S. District Court Judge

Robert L. Vining, Jr.Mitchell G. Weatherly, Weatherly Kerven LLCAnne Yates, Arnall Golden Gregory LLP

Bailiffs and Other Volunteers All from Kilpatrick Townsend & Stockton LLPJessica AshNicki CholletJimmy FarisRichard GoldstuckerAllie RoachJaci ShanksSidney Simms Jr.Katie SullivanSabina VaynerWade WalkerChiaman WangJared Welsh

West RegionCoordinating GroupJohn C. Baum, Coordinating Committee Co-Chair,

Owen, Wickersham & Erickson, PCRyan Bricker, Coordinating Committee Co-Chair,

Kilpatrick Townsend & Stockton LLPJennifer D. Arkowitz, Kilpatrick Townsend &

Stockton LLPTimothy R. Cahn, Kilpatrick Townsend & Stockton LLPMegan M. Chung, Kilpatrick Townsend & Stockton LLPHolly Gaudreau, Kilpatrick Townsend & Stockton LLPMarc M. Gorelnik, Kilpatrick Townsend & Stockton LLPJohn A. Hughes, Kilpatrick Townsend & Stockton LLPVictor Tom, Kilpatrick Townsend & Stockton LLP

Brief Reading JudgesTali Alban, Kilpatrick Townsend & Stockton LLPJennifer Arkowitz, Kilpatrick Townsend & Stockton LLPH. Michael Brucker, Law Offices of H. Michael BruckerTim Cahn, Kilpatrick Townsend & Stockton LLPMegan Chung, Kilpatrick Townsend & Stockton LLPGia Cincone, Kilpatrick Townsend & Stockton LLPAlica Del Valle, Owen, Wickersham & Erickson, P.C.John Donald, Apple Inc.

Oral Argument JudgesHonorable Steven Brick, Superior Court of

California, County of AlamedaHonorable John Herlihy, JAMSHonorable Jamie Jacobs-May, JAMSHonorable Elizabeth Lee, Superior Court of

California, County of San MateoHonorable Jared Moses, Superior Court of

California, County of Los AngelesHonorable Donna Ryu, United States Magistrate

Judge for the Northern District of CaliforniaKatherine Basile, Novak Druce & Quigg LLPMarcy Bergman, Bryan Cave LLPGenevieve Burch, Cisco SystemsRobert Burlingame, Pillsbury Winthrop Shaw

Pittman LLP

Alica Del Valle, Owen, Wickersham & Erickson, P.C.R.J. Heher, Fenwick & WestSteven Kipperman, Law Offices of Steven M.

KippermanJeffrey Kobulnick, Foley & Lardner LLPMark LeHocky, Ross Stores, Inc.Gale Peterson, Cox Smith IncorporatedChetuan Shaffer, Apple Inc.Lawrence Siskind, Harvey Siskind Jacobs LLP

BailiffsAnnie Betinol, Whittier School of LawLisa Dornbach Flanagan, Kilpatrick Townsend &

Stockton LLPMarge Fish, Kilpatrick Townsend & Stockton LLPJessica Hannah, Kilpatrick Townsend & Stockton LLPLisa Jeanetta, Kilpatrick Townsend & Stockton LLPApril Provins, Kilpatrick Townsend & Stockton LLPBernie Thurman, Kilpatrick Townsend & Stockton LLP

Lunch SponsorThomson Reuters

National FinalsAll from Finnegan, Henderson, Farabow, Garrett &

Dunner LLPCoordinating GroupChristopher P. Foley, Partner, National Finals

CoordinatorLinda ClarkMindy Dullea (bailiff)Trish HylandSydney Krell (bailiff)Charles JonesPatti KelleyMark PaulJulianna ShinJudy ValusekCharlene Woods

Oral Argument JudgesAll from the USPTO’s Trademark Trial and Appeal BoardHonorable Gerard Rogers, Chief JudgeHonorable Karen S. Kuhlke, Administrative

Trademark JudgeHonorable Ellen Seeherman, Administrative

Trademark JudgeHonorable James T. Walsh (Retired)Andrew Baxley, Interlocutory AttorneyRobert Coggins, Interlocutory AttorneyCatherine Faint, Interlocutory AttorneyChristina J. Hieber, Associate SolicitorJennifer Krisp, Interlocutory AttorneyGeorge C. Pologeorgis, Interlocutory Attorney

April 15, 2011 Vol. 66 No. 86

VolunteerSpotlight

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 effec-tive January 1, 2011.

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 pub-lishing and entertainment companies. When not squaring off against adversaries in the courtroom or across the table during a nego-tiation, he finds his opponents on the tennis court: Chris played on the professional tennis satellite circuit before entering law school.

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 con-tinues 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 commu-nity 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.

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 ad-vance 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.”

Karen Fong 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.

Karen attended her first INTA meeting in 2006. Since that time, she has been active

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.

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 involv-ing mine-protected vehicles) started “through a chance meeting in the ladies’ room at INTA whilst putting on lipstick.”

As to what she considers to be the most im-portant issue in trademark law today, Karen points to the definition of trademark infringe-ment under European law, which—owing to some of the Court of Justice’s recent deci-sions’ “raising more questions than provid-ing answers”—has become a rather opaque issue. Her experience is that “practitioners

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 train-ing to become a lay minister. In order to avoid any confusion, however, she quickly adds: “I am not changing careers, just adding on some-thing which I can do on Sundays.”

Aside from trademarks and theology, Karen enjoys movies, yoga, rock climbing and wake-boarding, as well as spending time with her 20-year-old son.

Jan Gerd Mietzel and Elisa Leonesi MalufFelsberg & Partners Europe LLP,Düsseldorf, GermanyINTA Bulletin Association News Subcommittee

Joseph J. ConklinCoty Inc., New York, New York, USAINTA Bulletin Association News Subcommittee

Chris and his son Shaun at the U.S. National Father/Son Clay Court Championships in 2009. (They placed sixth!)

7

Features

Kerstin Gründig-SchnelleLichtenstein, Körner & Partners, Stuttgart, Germany

Marek LazewskiLDS Lazewski Depo & Partners, Warsaw, Poland

Both are members of the Trademark Office Practices Committee’s OHIM Subcommittee

The Max-Planck-Institute for Intellectual Prop-erty and Competition Law, Munich, Germany, presented its Study on the Overall Function-ing 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 pro-posals put forward by the Max-Planck-Institute. The European Commission is expected to pres-ent its draft legislative proposals for amend-ments to the Trade Mark Directive (TMD) and the Community Trade Mark Regulation (CTMR) in October this year.

This article highlights some of the proposals made by the Max-Planck-Institute that are of interest to trademark owners.

Background

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 in-depth 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 fu-ture development of this system. In particular, the study analyzed the level of harmonization achieved and the need for further harmoniza-tion.

To that end, the Max-Planck-Institute con-ducted a survey among the users of the CTM system and obtained information from national European trademark offices regarding their position and activities. INTA actively participat-ed in that process, attending a hearing at the MPI in June 2010 and submitting a detailed

report relating to the questions raised in the European Commission’s invitation to tender in November 2010.

Legal Analysis

The study contains a comprehensive legal analysis of European trademark law, divided into two main chapters: one on common is-sues 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

Signs capable of being registeredThe 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. Graphi-cal 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, par-ticularly in the field of nontraditional marks like smell or sound.

Shape-of-product and color marksThe study points out that protection of shape-of-product marks—like industrial design protec-tion—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 trade-marks consisting of colors per se.

Use requirement: multiple registrations of similar marksThe judgment of the Court of Justice (CJ) in the Bainbridge case has created doubts and un-certainties in the situation where a trademark as used is invoked to maintain a registered variation of the same mark and the used ver-

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 marksThe 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 unreg-istered 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 in-curred 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 confusionThe study states that criticism has been raised regarding the approach of the Lux-embourg 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 distinctive-ness should receive more extensive protection than those with a low degree of distinctive-ness; that a high degree of distinctiveness requires that the mark has become estab-lished 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

Study on the Overall Functioning of the European Trademark System

Continued on next page

April 15, 2011 Vol. 66 No. 88

FeaturesHarmonization of TMD and CTMRThe 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 ad-dition, several provisions that are currently optional in the Directive should be made mandatory (more on this below).

InfringementAs 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 dis-tinguishing 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 pro-tected 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 mis-lead the public about the existence of a com-mercial link between the proprietor of the trademark and a third party, or is likely to be detrimental to or take advantage of the dis-tinctiveness or reputation of the trademark in a manner contrary to honest practices in industrial and commercial matters.

Goods in transitThe 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 pres-ent 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 desti-nation. The rule proposed shall be limited to counterfeit goods as defined in footnote 14 (a) to Article 51 TRIPS, that is, goods bear-ing 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-useUnder the CTMR, the proprietor of a later trademark may invoke the defense of non-

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 opposi-tion 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 geo-graphical 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 CommunityThe 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 marksThe study describes that a CTM registra-tion, 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 circum-stances, the rights of the proprietor against later trademarks if the proprietor has not ex-tended 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 coex-ist 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 distinctivenessThe 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 distinc-tiveness. It is therefore suggested that, for example, in the case of marks consisting of shapes or colors, acquired distinctive-ness should be considered to be present if distinctiveness can be shown for the major-ity of the markets making up the respective territory.

Scope of protection in conflicts involving marks with a reputationThe study agrees with the rules laid down by the CJ in the PAGO judgment that, where a trademark has a well-established reputa-tion 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 ear-lier 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.

Study on the Overall Functioning of the European Trademark System Continued from previous page

9

FeaturesFurther Harmonization

The study proposes that the scope of harmo-nization of the trademark law among member states be taken much further than the current scope of the Directive.

Substantive lawThe 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 regis-tered marks.

RemediesThe current system whereby remedies avail-able 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 there-fore 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 ex-ample, with respect to availability of declara-tory 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 practicalitiesThe study identifies lack of harmonized proce-dures as one of the most important aspects limiting the impact of the Directive and CTM system. The fact that harmonized substan-tive 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 mem-

ber states to designate an enforcement authority

• availability of post-grant opposition and non-use defense in opposition throughout the EU

• filing requirements regarding filing date, representation, and other matters

• common platform to access the different systems

Classification: preventing congestionThe 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 ana-lyze whether the lack of extra fees for claiming three classes and the ease (and consequenc-es) 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 OfficesWhat 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 of-fer 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 impor-tant 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 protec-tion 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 pre-determined purposes.

ConclusionsThe authors of the study should be congratu-lated on their efforts. They have comprehen-sively analyzed a vast amount of data, from various fields of IP and general private (includ-ing international) law to the very practical is-sues 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. ■

April 15, 2011 Vol. 66 No. 810

Features

Mona LeeDW 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 for-profit 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 non-profit 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 Ameri-can 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 repre-sents 125,000 faculty members, 75,000 medi-cal students and 106,000 resident physicians.

In the case of an international non-profit orga-nization, 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 train-ing, 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 consider-ing 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 cor-poration 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 grow-ers, importers of cotton and cotton containing products, and U.S. cotton product manufac-turers, Cotton Incorporated has been carrying out a continuous and visible program of marketing, promotion, and research specifi-cally 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 intenseFor the most part, many of the trademark is-sues 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.

Trademark Considerations of Non-Profit Organizations

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

INTA’s Online Topic Portal

11

FeaturesNot surprisingly, budget allocation for a trade-mark practitioner at a non-profit organization can be far more challenging than for coun-terparts 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 actu-ally serves to increase job satisfaction. One of the most rewarding aspects of working for a non-profit organization is “being innova-tive 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.

For example, “in the case of a non-profit orga-nization representing those in the educational, public service, and/or religious sectors, it is not unusual for the organization’s ‘customers’ to believe that they have a right to utilize the organization’s trademark as they see fit with-out asking permission,” says Amber. “Many have the best intentions, which makes drafting cease and desist letters quite difficult.”

One common example of how well-intentioned misuse occurs with non-profit, membership-based associations is where members modify the association’s logo by merging it with their own. This practice has the potential of diluting the association’s mark. Thus, the association is put in the unenviable position of having to send a cease and desist letter to one of its own members requesting that the member not use the association’s logo in a manner that could adversely affect the trademark owner.

Along those lines, Jomarie sees the preven-tion of infringement through “educating the membership” as the biggest difficulty she

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 liter-ally and figuratively ‘foreign’ and, perhaps, utterly elusive.”

What is on the “wish list” of trademark prac-titioners in the non-profit sector?Beyond wishing for a bigger budget or lower costs, Colleen says, “It would be great if there were more sessions at conferences that devoted some time to issues for non-profits. Recently, a non-profit discussion group was created within INTA. Those discus-sions have been far more helpful than many of the conference sessions I have attended in the past. It would be nice to see this dis-cussion group develop into something a little more formal.”

Peg Reardon, Manager, INTA Membership Development comments, “It is good to know that members are benefiting from the discus-sion group and see value in taking it further. While the group has quarterly calls and meets in person at INTA’s Annual Meeting, there is still much to be done. Anyone interested in learning more about this group and how to get involved may contact me (preardon@inta.org) or Amber (asterling@aamc.org), who chairs the group.” ■

From January through March, several INTA member organizations will host Pre-Annual Meeting Receptions. We encourage you to attend and bring colleagues in the area who have never attended an Annual Meeting, or who want to learn more about INTA and the largest gathering of trademark professional worldwide.

Attendees at each reception will:• Exchange valuable insight and success stories about the Annual Meeting• Network and meet new professionals with a common interest in trademark law• Mingle with friends and peers over hors d’oeuvres and cocktails • Enter a raffle to win a free Annual Meeting registration

Contact the Managing Editor at tmr@inta.org or visit www.inta.org/tmr

The Trademark Reporter seeks contributions from trademark professionals and is particularly looking to expand its coverage of international issues by international writers.

April 15, 2011 Vol. 66 No. 812

Law&Practice

Trademarks vs. other IP rights? TM or ®?

Save time and money with INTA’s Basic Trademark InformationAvailable online, free of charge.

Fact Sheets—get quick, clear answers to your questions about trademarks.

Presentations—learn about trademark basics or explain them to your staff, colleagues or others.

Glossary—access terms and definitions often used when talking about trademarks.

Trademarks at EU level

and beyond?

To register or not to register?

Sounds, colors or smells as trademarks?

Counterfeiting! What to do?

Visit www.inta.org/trademarkbasics

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 applied-for 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—rely-ing 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 Advocate-General 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

the case to the General Court, with some criti-cisms. 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 over-all. 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 princi-pal 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

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 el-ement that characterises a secondary line,” the court held there was no likelihood of confusion.

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.

EUROPEAN UNION Consumer Perceptions of Sub-brands

Considered in ANN TAYLOR LOFT Case

Contributor: Bill LadasSJ Berwin LLP, London, United Kingdom

Verifier: James TumbridgeGowlings, London, United Kingdom

Both are members of the INTA Bulletin Law & Practice—Europe Subcommittee.

13

Law&Practice

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 nar-rowly 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 circum-stances that constitute “bad faith.” The proposed changes will make this list non-exhaustive, 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 require-ment 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 post-decision 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/CDRP-Consultation-Conclusions.

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 harmo-nized 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 up-loaded 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 op-ponent provides the correct data to facilitate admissibility.

• The data regarding the challenged opposi-tion 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 auto-matic 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, Feb-ruary 2011, at http://oami.europa.eu/ows/rw/pages/OHIM/OHIMPublications/newslet-ter/1102/EBUSINESS/ebis1.en.do.

EUROPEAN UNION OHIM’s New Online Filing for Oppositions

Contributor: Michaela Huth-DierigBoehmert & Boehmert, Munich, Germany

Verifier: Wiebke BaarsTaylor Wessing, Hamburg, Germany

Ms. Huth-Dierig is a member of and Ms. Baars is co-chair of the INTA Bulletin Law & Practice—Europe Subcommittee.

CANADA Dispute Resolution Policy for .ca Domain Names to Change

Contributors: Yuri Chumak and R. Scott MacKendrickCameron MacKendrick LLP, Toronto, Ontario

Verifier: Neil MellishipClark Wilson LLP, Vancouver, British Columbia

Mr. KacKendrick and Mr. Melliship are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

15

Law&PracticeIn 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 FactsRockwool manufactures mineral wool used in insulation and fire protection. In 2007, Rock-wool developed a range of promotional materi-als 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 King-span’s combustible products (some, but not all, of which were labeled “fire safe” in accor-dance with applicable EU and local-law require-ments 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 trade-marks 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 com-paratively 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 DecisionHaving 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.

ImportanceNotwithstanding 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 distinctive-ness or repute has occurred)), the High Court found that Kingspan did not need to demon-strate “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.

UNITED KINGDOM Comparative Advertising: What Is Permissible Use of a Mark?

Contributor: James TumbridgeGowlings, London, United Kingdom

Verifier: Christopher MorcomHogarth Chambers, London, United Kingdom

Mr. Tumbridge is a member of the INTA Bulletin Law & Practice—Europe Subcommittee.

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June 20–July 1TMA Roundtable: TMA Procedures

Various U.S. Cities

July 11–22U.S. Roundtable: Proper Use of Trademarks in

Advertising and Product Packaging

Various U.S. Cities

September 12–23U.S. Roundtable: Internet Privacy and Emerging Issues

Relating to Online and New Media Enforcement

Various U.S. Cities

September 21–22INTA’s Trademarks and the Internet Conference

Washington, D.C.

September 23–24Advanced Trademark Symposium

Washington, D.C.

October 2–4Trademark Administrators Conference

Los Angeles

October 24–November 4TMA Roundtable: Due Diligence

Various U.S. Cities

November 8– 12Leadership Meeting

Miami Beach

December 8European Trademark Reforms Conference

Dublin

December 9European Conference on Internet Issues

Dublin

Plan the rest of 2011 with INTA’s Programs and Events!From local and international conferences, to roundtables and the Leadership Meeting, stay up to date on pressing issues that affect your brands.

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