By James Stewart

Earlier this month, Radiance Harris and James Stewart attended a roundtable on trademark protection in social media.  The event was hosted by the International Trademark Association (INTA) to create a forum for practitioners to share their experiences in this rapidly evolving area.  This is a multipart series that will discuss potential pitfalls, enforcement mechanisms for brand protection, and strategic tips for engaging in social media.

Practitioners agree that social media is no longer a luxury for “early adopters” or “hip” brands, but a necessity for brands to leverage bilateral communication with consumers, thought leaders, and the press.  If a brand does not have an active presence in social media, a user may create a presence for the brand.  Sometimes these user-generated accounts can adopt a laudatory tone and engage consumers better than the brand could have envisioned engaging consumers.  These accounts can grow to attract many thousands of fans.  However, all too often practitioners have seen brands take an overly cautious stance and become the subject of a dreaded “smear account” (i.e. www.yourbrandsucks.com), in which the negative aspects of a brand or consumer experiences with a brand are highlighted.  

These extremes aside, brand owners work hard to develop compelling intellectual property that uniquely resonates with consumers in a uniform and cohesive way.  Even if a social media presence created for a brand does not adopt a negative stance, does it conform to the brand approved aesthetic?  Are the correct logos, fonts, and colors used?  If they are not, or worse, if the creator has a poor experience with the brand and the tone of the page turns negative, the brand does not have control or ownership of the page or the immediate ability to take control of the message.  The brand may scramble to create its own “official” account to commence damage control, but many times this account will grow at a much slower rate than the rogue account.  Often by the time the brand has come up with this alternative account, the rogue account has grown and an online multichannel social movement has come to life. 


Continue Reading Social Media Part I: Protect Your Brand

By John Wilks

This year’s conference of Marques, the European brand owners’ association, took place in the European Union’s most troubled and ancient capital, Athens, under the lamentably resonant strapline “Sign of the Times”.  Among the many interesting topics shoe-horned under this banner, one theme seemed to keep resurfacing: the challenge of locating internet infringers.

This is by no means a new problem: IP infringers have for obvious reasons always sought to cover their tracks.  But the advent and continuing expansion of the internet and social media have dramatically increased the scope for anonymous infringements from cyberspace.  The impending arrival of over 1,000 new gTLDs- including many for common generic terms, threatens to further expand the possibility for anonymous infringement.


Continue Reading PARTNER’S PERSPECTIVE: RE: MARQUES, AND THE PERENNIAL PROBLEM OF FINDING INFRINGERS

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Caroline Olstedt Carlström (Stockholm)

The new digital landscape and its embrace by the corporate world create new challenges for all marketing professionals at a pace that has never before been encountered.  In fact, organisational procedures and legal standards are struggling to keep up.  Few jurisdictions have marketing regulations in place that are up-to-date with the latest digital possibilities.  Social media can be an effective tool for marketing and brand awareness, but it also poses great challenges for marketing professionals navigating new issues. 

On September 15th, the International Chamber of Commerce (ICC) presented its new 2011 Consolidated ICC Code of Advertising and Marketing Communication Practice (the “Code”). The Code raises the standards for consumer protection globally and also includes new online rules.  It is recognised as the gold standard for self-regulation and now offers best practice guidance across all sectors, technologies and platforms and guides marketing professionals as they deal with many of the most challenging topics, such as Online Behavioural Advertising (OBA), marketing in digital interactive media, privacy protection, environmental claims and marketing to children.  


Continue Reading New Global Rules for Digital Interactive Marketing

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Stefania Baldazzi and Annalaura Avanzi  (Milan)

In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A.  After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990.  The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”

In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products. 


Continue Reading Edwin Co. v. Elio Fiorucci: Designer and Company Share a Name?

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Tamar Duvdevani (New York)

Aspirin. Thermos. Escalator. Cellophane.  What do all of these items have in common?  If your answer is “objects that MacGyver needs to get out of a sticky situation,” you may be correct, but that is not what we were looking for.

Each of these commonplace, generic terms for the objects that they define were once valuable intellectual property before they lost protection through “genericide,” the  process by which trademark rights are diminished or lost as a result of overuse in the marketplace.  Genericide can happen in a variety of ways.  A trademark owner’s failure to police its mark, for example, can result in widespread use of the term by other sellers, thereby reducing the trademark’s ability to identify source.  In other instances, a term intended by the seller to be a trademark for its novel product is understood by the public to be a generic name because there is no other word in the vernacular to describe the product.  Both of these fates can be avoided by thoughtful branding strategies.


Continue Reading Don’t Let Genericide Happen to You

INTELLECTUAL PROPERTY AND TECHNOLOGY ALERT

The “dot-xxx” (.XXX) top-level domain is just days from its launch as the new home for adult content on the Internet.

As part of the launch, ICM Registry, the registry selected to maintain the .XXX top-level domain, is providing an opportunity for companies that do not want their brands associated with adult content to block their registered trademarks from being registered as .XXX domains, during a period named Sunrise B.

Whether or not your brand participated in the pre-sunrise reservation “wish list,” you will need to submit an application during Sunrise B, which runs from September 7 to October 28, 2011.


Continue Reading YOURNAME.XXX: THE TIME TO BLOCK YOUR TRADEMARK IS FAST APPROACHING

Fashion designers and companies can seek to protect their jewelry and other accessory designs through copyright, trademark and/or design patent registrations. Copyrights, trademarks, and patents are separate and independent forms of law and protection; therefore, protection can be obtained in one or all of the three ways discussed in more detail below. 

 
First, a trademark registration protects jewelry and other accessory designs (“accessory” meaning handbags, belts, watches, hats, etc.) that are inherently distinctive or have acquired distinctiveness/secondary meaning in the marketplace. In other words, the design must function as a source identifier. For example, Gucci holds a U.S. registration (Reg. No. 3238962) covering wallets, purses, handbags, shoulder bags, clutch bags, tote bags and clothing apparel for its distinctive horse bit design pictured below.
                                                                                                                                   
                                                                                                                        
Trademark protection, of course, also extends to the product’s name and appearance. The registration process typically takes about one year. 
 
Second, a copyright registration protects designs that are sufficiently creative and artistic. Copyrightable works include logos, artwork, or design elements that are stitched, imprinted or embossed onto fabric; and ornamental aspects of jewelry, watches, belts, and handbags. For examples, see Registration Nos. VA000111813 (artwork on handbags), VAu000699898 (belt and buckle collection) and VA0001664539 (Marquis Loop Necklace and Earring Set). Aspects that are not copyrightable include style, shape, cut, pattern or material of clothing articles and basic utilitarian aspects of jewelry, watches, belts, handbags and other accessories. On average, the registration process takes about three months to one year. 
 
Lastly, a design patent registration protects  the overall aesthetic appearance of a design (i.e., the ornamental aspects of jewelry, watches, belts, hats, handbags, rings, etc.). Specifically, the designs must be new and sufficiently different from all prior designs. For example, Louis Vuitton owns a design patent (Patent No. D466,689) for the “ornamental design for a handbag” and Tag Heuer owns a design patent for the “ornamental design for a watch” (Patent No. D413,815). The registration process takes about one to two years.
 
As a side note, utility patents, which protect how an object operates or functions (meaning, its functional/utilitarian features), usually cannot be used to protect jewelry or accessory designs unless the design includes some type of mechanical improvement. 


Continue Reading Protecting Jewelry and Other Accessory Designs

Guest blog post by Megan A. Cosgrove and Carissa L. Bouwer. Megan and Carissa are summer associates in the Sacramento office of DLA Piper. They attend University of the Pacific, McGeorge School of Law and will graduate in 2012.

Last weekend, we decided to host a wine and cheese party for a small group of friends.  We ran down the list of everything we needed.  Small plates?  Check.  Wine glasses?  Check.  Napkins?  Check.  Those little wine glass charms so people can identify their glasses?  Check check.  Brie?  Check.  Parmesan?  Che…wait…we have a hard white pungent cheese, but I’m not sure that it’s from Parma.  Does it need to be?  And that pastry…we can’t just assume it’s Cornish.  What if it’s not? We’d be liars.  All of our closest friends would find out that our Cornish pastries weren’t from the UK and they would never come back for wine, cheese, and delish appetizers again.

Perhaps this isn’t a conversation you’ve had before a party.  But let’s be honest, our tastes, and our conversations, have changed quite a bit since our college days.  I’m pretty sure I never bothered asking where the beer in that keg came from, but it might be time we ask where our wine, cheese, and other food products come from.  And interestingly enough, the birthplace of many foods and beverages we consume are actually revealed in the name.  And a lot of imposters are going to have to change.

In 2000, the California Legislature agreed with Napa Valley wine producers that the term “Napa” signified quality in wine.  They were concerned that novice wine buyers would be duped into paying more for a lower quality wine if the term “Napa” did not designate that the wine was actually from the well-known grape growing region of California.   As a result, the legislature passed Bus. & Prof. Code § 25241, providing that wine made from grapes grown in other regions could not be branded “Napa wines.”


Continue Reading Trademarks as Geographical indications