Trademark Registration

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

In June, our team was asked to contribute to a Managing Intellectual Property Magazine feature on trademark protection for slogans/phrases. Our responses were provided alongside responses from seven other practitioners from around the world as part of a global practice feature MIP runs on a monthly basis.  Here are our answers, and we encourage you to read the others in the June 2011 edition of MIP here



Posted by Scott Buchanan, Partner DLA Piper Australia

In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:

  • National brand owners have to accept competition represented by emergence of home brands and furthermore, that home brands can often quite lawfully borrow from, and leverage off, the look and feel and get up of a national brand.  
  • The ability for a national brand owner to successfully enforce its intellectual property rights will typically turn on whether the company has taken positive steps of registering its trade mark rights and demonstrating ownership of other packaging rights – eg. trade dress, copyright.
  • Proof of ownership, particularly registered rights, will give a trade mark owner the necessary ‘cut through’ to force a meaningful conversation with private brand owners.
  • Any aspect of packaging which you regard as your valuable IP – eg colours, shapes, layout and design – should be registered as individual trade marks. The benefits of registration, when it comes to enforcement and protection of your patch, far outweigh relatively minor costs of registration.

During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don’t infringe upon third party rights. Target‘s in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand.  Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.

Continue Reading Trademark Co-existence Between National Brands and Private Brands

Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP.  Allyn Taylor, one of our partners, wrote an article for the last edition that we’d like to reshare.


Protecting your brand on a global scale

By Allyn Taylor

Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”

Continue Reading Protecting Your Brand on a Global Scale

Although this case is from 2009, it is still highly relevant and useful to clients who regularly expand or are looking to expand their trademark portfolios to foreign jurisdictions.

A 2009 U.S. Trademark Trial

Continue Reading “Intent to Use” for U.S. Trademark Applications Based on Foreign Registrations