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Intellectual Property group joins 2016 INTA trademark conference

May 25, 2016

Attorneys from Greensfelder’s Intellectual Property group attended the International Trademark Association’s annual meeting May 21-25, 2016, in Orlando, Fla., joining trademark owners and professionals from around the world. Those attending from the firm were Kara Cenar, John Petite, Mary Ann Wymore, Kay Sherman and Karen Johnson.

Programs at the INTA event focused on hot industry topics including 3-D printing, social media, digital enforcement and mobile technology. The following are recaps from select sessions.

When and how to go after the bad guys

Session title: Balanced Enforcement: A Look at Strategic Options for Enforcement in Today’s Climate

The proliferation of content and data in the electronic age makes it likely that there will be unauthorized uses, deliberate or not, of your brand. Must the brand owner pursue every infringement to protect the brand? And what form should the enforcement take?

The primary takeaway from this session is that when it comes to trademark enforcement, one size does not fit all. Depending on the circumstances, it may not make sense to go after every infringer. In deciding whether and how to take action, the brand owner should consider:

  • Who is using my mark? A competitor? A very litigious company? A fan of the product? Someone who is not aware that its use is infringing?
  • How close does the use strike at the core of what I market and sell?  If a peripheral use, a more measured approach and perhaps even doing nothing at all may be better.

  • Is the unauthorized use taking place online only, or also in a “bricks and mortar” context?
  • Would there be any PR consequences if I take action? Would the infringer post any letter I send it to ridicule me or make me look like a bully?
  • Will a cease and desist letter be sufficient?  A relatively friendly phone call?  Or should I be prepared at the outset  for litigation, even guarding against the infringer beating me to the courthouse with a declaratory judgment action?   And where should the litigation take place – in a federal court, a TTAB or UDRP proceeding, or before the National Advertising Review Board (NARB)?

  • If I pull the trigger, I’d better be prepared to proceed diligently and even go to the mat, so I don’t compromise my rights because I delayed or dropped the ball.

There are other factors to  consider, of course.  The decision of when and how to enforce your trademark rights requires careful evaluation of the relevant legal principles, the unique factual circumstances of each infringing use, the marketplace realities and the likely outcome of your enforcement options.   

Strategic searches to protect mobile apps

Session title: Living in a Mobile World – Promoting, Managing and Protecting your Brand on Mobile Platforms

Trademark and copyright protection for mobile apps is appropriate. Equally important is a carefully thought-out trademark search and clearance for mobile apps. Panelists at this mobile technology breakout session gave the following tips regarding the conduct of such a search:

  • For mobile apps, "what" you search should include a) the app title in full and app title as it appears on the display, b) the app icon, and c) content clearance.
  • When searching and clearing trademarks for apps, you should consider searching trademark registries, app stores and search engines.
  • The scope of search is important, and it was suggested that the scope include software and the apps function.

Trademark infringement can occur in connection with mobile apps just as in other markets. Search and clearance is recommended to avoid later problems.

3-D printing: It's here - now what?

Session title: 3D Printing and the Future (or Demise) of Intellectual Property

They call it "disruptive technology," yet 3-D printing is opening doors for ideas to become reality. Intellectual property rights typically arise in this process. At the INTA conference, speaker John Hornick suggested that IP rights will face their demise with 3-D printing because people will now be able to make (or print) an item covered by IP without anyone knowing (he calls it "out of control").

Will the IP become impotent? Will this force IP-based business models to change? Hornick suggests the answer is yes. A few takeaway points on the status of 3-D printing:

  • Printers are becoming available and more economical and have more functionality.
  • Material combinations that can potentially be used are expanding.
  • The limits on the form of products are evaporating, giving flexibility and expansion to what can be created.

As the technology becomes more available, the opportunity to make things without anyone knowing increases. The ability to enforce your IP is diminished. The IP-based business model will necessarily change.

It's time for businesses to think through how this could change their business strategies. It is better to anticipate this change now and develop your business strategy rather than to wait for the disruption to hit your business.

Here’s the buzz

Session title: Marijuana and the Law: Branding, Marketing and Regulatory Issues

Is there really no way to federally register your brand for marijuana-related goods and services?

The Trademark Office is inquiring whether use of such a mark is in compliance with the Controlled Substances Act. Applications for registration are being rejected. How are the brand assets for these companies able to be protected?

Areas covered during the panel discussion included obtaining registrations on ancillary goods and state trademark registrations in the states where you can. Trademark licensing is implicated and typical commercial terms are not acceptable given the regulatory nature of the market. Licensing provisions must be reviewed carefully to make sure compliance with state regulations is part of the agreement.

The primary takeaway: Branding strategies for cannabis products will have to consider state law protection.

E-commerce innovations: Is the use of another's trademark OK?

Session title: The role of trademarks in the infrastructure of e commerce

The co-presenters at this session addressed potential trademark infringement issues (and defenses) for use of another's trademark in sub-domains/sub-directories, digital promotion codes and coupons, among other e-commerce uses.

They also asked the audience to consider potential issues likely to arise in the future as e-commerce expands in the "Internet of Things" and computerized shopping solutions. They had great reminders for businesses operating in this space.

Not surprisingly, confusion continues to play a material role in determining a brand owner's rights and in the strength of an accused infringer’s defense to a claim of infringement. It is important and informative to review the case law regarding trademark use in sub-domain/sub-directory matters, and you will see the fine line that exists in this analysis.

Functionality plays a role in the defense of these types of actions and should be considered when evaluating claims in this area. In addition, fair use remains a defense and is an important part of the consideration when addressing these types of claims and issues.

Emerging e-commerce solutions, expansion in the way our devices communicate with each other (i.e. refrigerator to mobile device), and computer-based shopping solutions will necessarily use brands in one way or another. Which types of uses will give rise to enforcement claims, and which will not, must be carefully analyzed with the principles of confusion, functionality and fair use in mind. Rights exist and must be respected.

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