Re:Marks on Copyright and Trademark

More and more frequently, private companies which are not associated with the United States Patent and Trademark Office (USPTO) have been aggressively sending out misleading notices to trademark applicants and registrants seeking substantial fees for trademark-related “services” including but not limited to legal services, trademark monitoring services, recordation of trademarks with the U.S. Customs and Border Protection Agency, and private company registrations. These “notifications” (with invoices usually included) are typically sent via mail or e-mail and display names and official-looking letterhead resembling that of the USPTO. In addition to the confusingly similar names and/or graphics used by the soliciting entities, these come-ons also usually include accurate official USPTO data such as the trademark application serial number, registration number, classifications, filing dates, etc. – all of which is publicly available information.

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By Kate Hodgkiss, Adam Hartley and Vinita Arora

The use of social media is now common place the corporate world, but are organisations protecting themselves by ensuring the relevant policies and procedures are in place? 

Social media connects millions of people across the world every day and has become an important way for people to communicate. It is now an integral part of the way we live and increasingly affects the way we work and do business. 

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DLA Piper hosted the 2011 Women in IP Law Luncheon on September 22, 2011 at the Four Seasons Hotel in Palo Alto, California.  Over 250 women registered for the event, which drew lawyers practicing throughout Silicon Valley and from many other parts of the country.  The event kicked off with time for in-house and firm attorneys, law students and other guests interested in intellectual property to mingle and compare notes.  After brief introductions, participants were treated to an informative discussion titled "Winds of Change in IP" over lunch.

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Ciao to Chiara Garofoli, our DLA Piper colleague from Milan, Italy who is going off to work for Google, Milan.  Chiara was a founding and active editorial member of our fashion law publication, Law a la Mode, and an editorial member of this Blog.  Best of luck at Google, Chiara!

A well-deserved recognition for our colleague!

Reposted from INTA Bulletin: August 1, 2011  Vol. 66  No. 14 

How many IP attorneys do you know who own a personal registered trademark? Mark Feldman is one. Remaining true to his name and his profession, he owns MARK IS MY NAME AND MARKS ARE MY GAME. Also hitting the mark is the personalized license plate on his car: CIRCLE R. 

Despite the puns and fun, trademarks are serious business for the chair of DLA Piper LLP’s intellectual property practice in Chicago. Being in a large general practice firm, Mark gets queried on the broadest possible range of IP issues, consulting with partners and associates and counseling corporate clients “on their myriad issues du jour.” He also teaches IP basics to general practice lawyers to help them recognize the full scope of issues facing clients. In Mark’s words, “I have the greatest job in the world if you have a short attention span!” 

Active in INTA for nearly 30 years, Mark recognizes important industry trends, including increasing use of trademarks in search engines and throughout cyberspace. “Courts and statutes must deal with what constitutes ‘use’ of a trademark, and they are still in the early stages of wrestling with these concepts.” Mark says that “so far, the court decisions have been very favorable for the Internet industry. It will be interesting to see if the pendulum swings back to give greater respect to the traditional rights of brand owners to control the use of their marks.” 

In Mark’s opinion, while the world seems to be getting smaller, the opposite is true in the trademark realm. “As more countries are formed, trademark owners have additional places to protect their marks.” He advocates simplification, with more countries joining the Madrid Protocol and eliminating such formalities as legalization. 

Very active on INTA’s Saul Lefkowitz Moot Court Committee since 1995—most recently as the coordinator of all regions for the national law student competition— Mark loves introducing the next generation of trademark attorneys to this area of law. 

As for his favorite trademarks, Mark remains sweet on NUTRASWEET because he was “there for its birth and it’s become a casebook study on how to develop and implement a branded ingredient strategy.” 

When not working, Mark spends time with his “most important copyright client”—his wife, who runs a nonprofit that produces films—and his two daughters, his son-in-law and his one-year-old granddaughter.

Posted by Alexander Tsoutsanis, senior associate with DLA Piper in Amsterdam.

On Monday 23rd May, Alexander Tsoutsanis spoke at Stanford during the Stanford Intellectual Property Seminar for IP Judges from the People's Republic of China. Alexander was a panelist speaking about recent developments in Europe on the protection of well-known marks. Apart from explaining the European approach on determining blurring, tarnishment and free-riding associated with well-known marks, Alexander also discussed the general impact of the recent decision of the European Court of Justice in DHL v. Chronopost of 12 april 2011. This decision about Community Trade Marks basically obliges European courts to limit a cross-border injuction to (only) those jurisdictions where the functions of the plaintiff's mark are harmed (and e.g. confusion in the market place occurs). This ruling may therefore require brand owners to revise their litigation strategy in cross-border trade mark injunctions in the European market. The panel session was part of a week-long visit of Chinese IP Judges to Stanford, in which leading scholars and legal counsels explained the current developments and best practices in protecting Intellectual Property.

Alexander is a senior associate with DLA Piper in Amsterdam and also a part-time assistant professor in Intellectual Property Law at Leiden Law School.

When I travel, I often send pictures to my team to keep them updated on what I'm up to.  I thought it would be fun to share my time here at INTA with Re:Marks Blog too.

INTA-attendees: be forewarned! Registration can be dangerous.  Tom cuts finger trying to jam name tag into badge holder - then nearly gets strangled by lanyard.

Gorgeous event here at INTA: Gowlings brunch at another legendary American spot.

The clouds have parted here in San Francisco where we're meeting for the International Trademark Association -- and the sun has come out after several days of rain and cold. Curiously at the top of the hill in Chinatown, there is a building that has the word "Trade Mark" prominently affixed to it. Does anyone know why this is?

Larry Flynt, one of the standard bearers of the First Amendment showed up at a photo shoot at the Four Seasons San Francisco when we were there meeting folks at INTA. 

One of the best annual dinners at INTA is the Indian fete put on by the Indian IP firm of K&S Partners. Here is the formidable Jyoti Sagar. I sat at his table and trademark lawyers from around the world, such as Germany and UK were discussing geographic indications and Darjeeling tea -- which K&S gave out to their guests as parting gifts in fancy gift bags. 

Our legislative subcommittee had an interesting meeting at INTA earlier this week. The group engaged in a lively discussion on the Protect IP Bill that was introduced into the Senate last week. More on this bill later... Here's a picture of key members of our subcommittee.  

Last night, a group of nearly 50 DLA Piper Intellectual Property attorneys from around the world got together.  As a global firm, we never feel far apart, but there is something special about the opportunity we get once a year to meet face-to-face.