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ELECTRONIC NEWSLETTER


The Abelman Firm Intellectual Property Report

February 02, 2004

Volume 3, Issue 1

Topics

Calendar (See Below)

News

Trademarks and Unfair Competition

Patents

Domain Names and Other Internet Matters

Discussions

Calendar   top

February 5 - 6 ALI-ABA[1] - Trademark Dilution after Victoria’s Secret. Washington, D.C.
February 11 - 13 LES[2] - 2004 Winter Meeting - Licensing Converging Technologies - Bridging the Gap. San Francisco, CA.
February 11 PLI[3] - Drafting Corporate Agreements New York, NY,
February 23 - 24 INTA[4] - Advance Trademark Symposium 2004. Charleston, SC.
February 23 - 24 AIPLA[5] - Advanced Patent Cooperation Treaty Seminar. Washington, D.C.
March 3 - 4 PLI - Navigating Trademark Practice Before the PTO 2004: From Filing Through the TTAB Hearing. New York, NY.
March 3 - 4 THE CONFERENCE BOARD - The 2004 Antitrust Conference New York, New York
March 7 - 9 INTA - INTA/ASIPI Conference 2004. Buenos Aires, Argentina.
March 7 - 10 IPI[6] - International Patent Information Conference and Exposition. Lisbon, Portugal.
March 8 - 9 PLI - Advanced Licensing Agreements. New York, NY, Boston, MA (Videoconference)
March 8 - 9 PLI - Handling Intellectual Property Issues in Business Transactions, Los Angeles, CA
March 10 PLI - Current Developments in Federal Civil Practice, New York, NY; San Francisco, CA (Tape Delay)
March 11 AIPLA - Seminar: “IP Meets ADR” Newport Beach, CA
March 11 - 12 PLI - 24th Annual Institute on Computer Law, San Francisco, CA
March 12 AIPLA - Licensing/Management of IP Assets. Newport Beach, CA
March 17 PLI - Counseling Clients in the Entertainment Industry - 2004 - Television, Interactive Software Entertainment New York, NY
March 18 PLI - Counseling Clients in the Entertainment Industry 2004 - Film and Sports Law. New York, NY.
March 18 - 19 PLI - Advanced Licensing Agreements. San Francisco, CA.
March 18 - 19 PLI - Advanced Licensing Agreements (Videoconference). Los Angeles, CA.
March 18 - 19 PLI - Advanced Licensing Agreements (Videoconference). Beverly Hills, CA.
March 19 PLI - Counseling Clients in the Entertainment Industry 2004 - Sound Recordings; Music Publishing; Ethics and the Development of an Entertainment Law Practice. New York, NY.
March 22 - 23 PLI - Navigating Trademark Practice Before the PTO 2004: From Filing Through the TTAB Hearing (Video Replays). San Francisco, CA; Los Angeles, CA; Costa Mesa, CA.
March 25 - 26 PLI - 24th Annual Institute on Computer Law, New York, NY
March 25 - 27 ABA[7] - Techshow 2004, Chicago, IL
March 25-26 The Sedona Conference - 6th Annual Conference on Complex Litigation, Sedona, AZ.
March 26 - 31 LES. - Annual Conference. Paris, France.
March 29 - 30 PLI - Handling Intellectual Property Issues in Business Transactions. New York, NY, Boston, MA (Videoconference)
April 1 - 2 PLI - Handling Intellectual Property Issues in Business Transactions. Atlanta, GA
April 1 - 2 ABA - 19th Annual Intellectual Property Law Conference. Washington, D.C.
April 2, 2004 Suffolk University Law School - Intellectual Property Law Concentration Conference, Sophisticated Licensing Issues, Boston, MA.
April 22 - 23 ALI-ABA - Fifth Annual Advanced Course Study for Inside and Outside Counsel - Litigating Trademark, Domain Name and Unfair Competition Cases Chicago, Illinois
May 1 - 5 INTA - Annual Meeting. Atlanta, Georgia.
May 3 - 5 PLI - Handling Intellectual Property Issues in Business Transactions. San Francisco, CA.
May 13 - 15 AIPLA - 2004 Spring Meeting. Dallas, TX.
May 24 - 25 PLI - 45TH Annual Antitrust Institute. San Francisco, CA.
March 24-26 ITMA[8] - 2004 London International Meeting London, U.K.
June 2-5 ECTA[9] -23rd Annual Conference Funchall, Madeira, Portugal
June 9 - 13 AIPLA - Summer IPL Conference Toronto, Canada
June 11 AIPLA - Advanced Biotechnology/Chemical Patent Practice Seminar, Seattle, WA
June 11 AIPLA - Advanced Computer/Electronic Patent Practice Seminar Seattle, WA
June 16 - 20 ABA - 11th Annual Summer Intellectual Property Law Conference. Toronto, Canada.
June 18 AIPLA - Advanced Biotechnology/Chemical Patent Practice St. Louis, MO
June 18 AIPLA - Advanced Computer/Electronic Patent Practice Seminar St. Louis, MO
June 19 - 24 AIPPI[10] - XXXIXTH World Intellectual Property Congress. Geneva, Switzerland.
June 25 AIPLA - Advanced Biotechnology/Chemical Patent Practice Wilmington,DE
June 25 AIPLA - Advanced Computer/Electronic Patent Practice Seminar Wilmington, DE
June 28 - 29 PLI - Intellectual Property Antitrust 2004. New York, NY.
July 15 - 16 PLI - What Every Litigator Must Know About Intellectual Property. New York, NY.
July 15 - 16 PLI - What Every Litigator Must Know About Intellectual Property (Videoconference). Boston, MA.
August 7 - 13 ABA - IPL Section, ABA Annual Meeting, Atlanta, GA
October 3 - 6 INTA - Trademark Administrator Conference 2004.
October 28-29 The Sedona Conference - 5th Annual Patent Litigation Conference, Sedona, AZ
October 14 - 16 AIPLA - 2004 Annual Meeting. Washington, D.C.
October 21-23 ECTA -48th Council Meeting Copenhagen, Denmark
November 4-5 The Sedona Conference- 6th Annual Antitrust Law & Litigation Conference, Sedona, AZ
November 10 - 13 INTA - INTA Leadership Meeting. Phoenix, AZ.
[1] American Law Institute-American Bar Association.
[2] Licensing Executives Society.
[3] Practicing Law Institute.
[4] International Trademark Association.
[5] American Intellectual Property Law Association.
[6] International Patent Information
[7] American Bar Association.
[8] Institute of Trade Mark Attorneys
[9] European Communities Trade Mark Association
[10] Association Internationale pour la Protection de la Propriete Intellectuelle.

NEWS

Trademarks and Unfair Competition

Benelux: New Trademark Opposition Procedure    top

Commencing January 2004, Benelux is phasing-in an opposition procedure for trademark applications.

Currently opposition is restricted to the following classes: 2, 20, and 27. Additional classes will be added with the current goal to include all classes by 2008.

European Community Trademarks: Refusal of Registration of Audi's Trademark Application for TDI Upheld on Appeal   top

In 1996 Audi filed an application for a European Community Trademark for TDI to protect "vehicles and constructive parts thereof" in Class 12 and "Repair and maintenance of vehicles " in Class 37. The examiner refused the application on the ground that the word mark was devoid of any distinctive character on the basis that the mark is generally recognized as standing for "Turbo Diesel Injection" or "Turbo Direct Injection" and therefore descriptive of the goods and services for which protection was claimed.

Audi filed an appeal with the Board of Appeal of OHIM. In a decision issued November 8, 2001, the Board of Appeal upheld the Examiner's decision and dismissed Audi's appeal. Audi filed a further appeal to the court of First Instance of the European Court of Justice.

On December 3, 2003, the Court of First Instance issued its decision in Audi AG v Office for Harmonization in the Internal Market (Trade Marks and Designs) dismissing Audi's appeal and upholding the refusal of registration. In its decision, the Court upheld the Examiner's opinion regarding the issue of descriptiveness and found that the evidence of acquired distinctiveness filed by Audi did not support a claim of distinctiveness throughout the European Community but was limited to Germany.

European Community Trademarks: Registrability of Sound Marks    top

On November 27, 2003 the European Court of Justice issued its decision holding that sound marks are technically registrable pursuant to European Community Article 2 of Directive 89/104 provided they are capable of distinguishing the goods or services from one undertaking from those of other undertakings and if they are capable of being represented graphically.

The Court upheld the registrability of the first nine notes of Beethoven's "Fur Elise" as a sound mark which had been filed via a representation of the mark in a graphic representation on a musical staff. (Shield Mark BV v. Joost Kist h.o.d.n. Memex, C-283/01).

Iran: Court Cancels Trademark Registration Based on Worldwide Fame of Prior User   top

Qeshm Shan Hao Trading Company, an Iranian company, filed a trademark application to protect JORDAN & device for shoes in class 25. The Examiner found no conflicts and the application proceeded to publication.

Nike International opposed the application based on its prior worldwide use as well as an application it filed in Iran subsequent to the application filed by Qeshm Shan Hao Trading Company.

In Nike International vs. Qeshm Shan Hao Trading Company, the Iranian court ruled in favor of Nike International based on Nike's prior worldwide use of the mark.

Paraguay: Trademark Use Requirements Take Effect   top

Effective October 1st, 2003, Paraguay amended its trademark law to permit non-use cancellation actions against registered trademarks which have not been used for a period of five consecutive years.

Use of a trademark must be bona fide and commercially appropriate as reasonably required by the nature of the products, the marketing practices and the dimension of the market. Advertising may be considered use of the trademark provided the trademark is used within four months of the commencement of the advertising campaign. The use of a registered trademark in any class will fulfill the requirement of use in all other classes where the same mark has been registered. Use by a recorded licensee will inure to the benefit of the trademark owner.

Where the mark has not been used in Paraguay, defense to a non-use cancellation action may be based under Paraguay Trademark Law Regulatory Decree N° 22365/98 which provides that the use requirement is fulfilled when the trademark is used in any other country and/or under the MERCOSUR Protocol for Harmonization of Norms Regarding Intellectual Property establishes that use of a trademark in any of the member countries will be considered to fulfill the use requirement in all other member countries. Note that only Paraguay and Uruguay have ratified the MERCOSUR Protocol.

Peru: Trademark Registered in Bad Faith Cancelled   top

The Peruvian Civil Supreme Court has ordered the cancellation of a trademark registration on the grounds that a mark registered in bad faith violates principles of free trade.

Caja de Pensiones Militar Policial filed a trademark application in Peru HOTEL CARRERA for hotel services in Class 42. Hoteles Carrera S.A., a Chilean company, opposed the application. Hoteles Carrera did not own a registration for the mark HOTEL CARRERA in Peru.

Hoteles Carrera argued in support of its opposition that the mark is well-known in Chile and that the applicant was aware of this renown.

The Peruvian Trademark Office found upheld the opposition and rejected the application. However, the applicant appealed and on appeal the Trademark Office's decision was reversed by the Administrative Court of Appeals on the basis that in the absence of a registration in Peru, Hoteles Carrera had failed to provide sufficient evidence to substantiate bad faith on the part of the applicant.

Hoteles Carrera appealed to the Civil Supreme Court, and on the appeal the Court ruled that the applicant knew that the trademark HOTELES CARRERA belonged to a third party and ordered the cancellation of the registration. The court based its ruling on the facts that the Chilean company had advertised its HOTELES CARRERA services internationally in venues of which applicant could reasonably be imputed to have knowledge and that the two countries of Peru and Chile maintain commercial links such that permitting the coexistence of the two marks might lead to confusion with respect to the source of the services.

United States: McDonald's Objects to Inclusion in Dictionary of Term "McJobs"    top

News agencies report that in a letter to Nation's Restaurant News, a trade industry magazine, McDonald’s Corporation has objected to the inclusion of the word “McJob” in the 11th edition of Merriam-Webster’s Collegiate Dictionary. The dictionary reportedly defines “McJob” as “a low-paying job that requires little skill and provides little opportunity for advancement”.


Patents

United States: Will a Claim of Attorney-Client Privilege Result in an Inference of Willful Patent Infringement?   top

Jeffrey A. Schwab, Partner, Abelman, Frayne & Schwab

Often assertions of willful patent infringement are rebutted by a reasoned non-infringement or invalidity opinion of counsel. However, there are adverse consequences of having an opinion and not disclosing its contents under a claim of privilege. This issue is being revisited by the Federal Circuit.

The Court will sit en banc February 5 to hear arguments in KNORR-BREMSE SYSTEME v. DANA CORP. et al. The issue before the Federal Circuit is whether it is appropriate to draw an adverse inference when a defendant in an infringement suit invokes attorney-client privilege and/or work product privilege and, as well, whether it is appropriate to draw an adverse inference when the defendant has not obtained legal advice.

Often it is unclear whether the Federal Circuit will address a particular issue on appeal. In this case, there is very little doubt that definitive precedent will be established. First, the Court, on its own motion, has decided to hear the appeal en banc for the stated purpose of “reconsider[ing] its precedent concerning the drawing of adverse inferences with respect to willful patent infringement, based on the actions of the party charged with infringement in obtaining legal advice, and withholding that advice from discovery”, citing its earlier precedent Kloster Speedsteel AB v. Crucible, Inc., 793 f.2d 1565, 1580 (Fed. Cir. 1986) (the accused infringer’s silence as to whether it sought advice of counsel “would warrant the conclusion that it either obtained no advice of counsel or did so and was advised” that it would infringe); Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983) (there is an affirmative duty “to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity”).

Indeed, the Court has invited the parties to submit additional briefs responsive to the following questions:

  1. When the attorney-client privilege and/or work product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?
  2. When the defendant has not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?
  3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?
  4. Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?

As well, the Federal Circuit “welcomed” bar associations, trade or industry associations, and government entities to file amicus curiae briefs.

No matter what the decision, the result is likely to be controversial, and we will report it with our comments.

The New PCT Filing Procedures   top

Jay S. Cinamon, Associate, Abelman, Frayne & Schwab

The New Year ushered in changes in PCT filing procedures, and we have modified our practices to address them. Applicants are no longer able to designate States separately.

All States are now automatically designated, and the former practice of making precautionary designations are neither needed nor available.

Under the provisions of new PCT Rule 4.9(a), the filing of a Request now automatically includes:

  1. the designation of all Contracting States that were bound by PCT on the International Filing Date;
  2. a statement that the International Application is for the grant of every kind of protection that is available in every applicable State; and
  3. a recitation that the International Application, where applicable in respect of the State concerned, is for the grant of a regional and a national patent.

For applications filed after January 1, 2004, a new search and examination system will apply. In addition to the International Search Report, a written Opinion will be issued by the International Search Authority during Chapter I.

If a Demand is filed (which after 1 January 2004 can be filed up to 22 months after the priority date), the Opinion of the International Search Authority will be adopted by the International Preliminary Examination Authority as its first written opinion and will be identified as the “International Preliminary Examination Report on Patentability”.

Given the early Opinion now available with the search during Chapter I, the decisions an Applicant makes about proceeding with the application as filed -- or whether earlier amendments are appropriate -- can now be made at an earlier time in the patenting process. We will be addressing these matters and its ramifications on a case-by-case basis as they arise with respect to particular filings.


Domain Names and Other Internet Matters

Europe: Select Domain Name Registries to Permit Accented Characters in Domain Names    top

Effective March 1, 2004, the domain name registries of Germany, Austria, Switzerland and Liechtenstein will permit the registration of domain name containing accented characters such as umlauts, é, and Ř.

European Union: Schedule for Implementation of .EU domain Space    top

The European Union received approval for the implementation of a .EU domain space and designated EURid, a Belgian non-profit company, as the registry for .EU domain names. EURid has issued the following timetable for implementation of .EU domain names:

  • March 2004 - Rule preparation
  • June 2004 - .eu Registrar Accreditation
  • September 2004 to November 2004 - Sunrise period for trademark holders
  • November 2004 - General registrations begin

France: Liberalization of Registration Practice in .FR Domain Space   top

Effective May 11, 2004, the French domain name registry will liberalize its registration requirement to permit any French company, French association or French trademark owner to register the domain name of their choice. Previously such entities could only register domain names that reflected their name or trademark. The French registry indicates that they will open the registry later in 2004 to individuals as well.

United Arab Emirates: Termination of .CO.AE Domain Space    top

Effective January 2004, the United Arab Emirates is discontinuing the .CO.AE domain space. Holders of domain names in this space should consider requesting conversion to the .AE domain space.

United States: Premium Advertising on Internet Search Engines   top

Playboy Enterprises Inc. and Netscape Communications Corporation have reportedly settled a lawsuit after a federal court ruled that Netscape could be held liable for the unauthorized use of trademarks in search engine advertisements.

This follows a decision dated January 14, 2004 by the 9th Circuit Court of Appeals holding that "The above evidence suggests, at a minimum, that defendants do nothing to alleviate confusion, even when asked to do so by their advertisers, and that they profit from confusion." Playboy Enterprises, Inc v. Netscape Communications Corporation (9th. Cir. No. 56648, CV-99-00320-AHS, Jan. 14, 2004). Playboy Enterprises International, Inc. v. Excite, Inc. (9th Cir. No. 56662, CV-99-00321-AHS-02, Jan. 14, 2004).

The action centered on the search engine's practice of selling and displaying advertisements triggered by the terms "playboy" and "playmate" to entities unrelated to Playboy. Playboy claimed that such advertisement created a likelihood of consumer confusion and diluted Playboy's trademarks. Playboy also claimed that Netscape infringed Playboy's trademarks by displaying such advertisements through a partnership with Excite.


Discussions

Guidelines for Trademark Use in the United States   top

Marie Anne Mastrovito, Partner, Abelman, Frayne & Schwab

To function as a trademark, a designation must serve to identify and distinguish the goods or services sold under the mark from the like goods or services of others. To do this, consumers must perceive the designation as an indication of the origin of the good or services, rather than as informational text, a description of the goods or services, or merely an ornamental feature of the goods. Frequently, we receive specimens of use in which a trademark is buried in text, or is not used prominently enough to be perceived as a separable trademark. Specimens of this nature will not be accepted by trademark examiners. Below are several guidelines for proper use of marks:

GUIDELINE 1:

The mark should be prominently presented and should be physically set off from other wording (such as informational material) or distinguished from other wording using a different typeface or larger font size. For example:

Don’t Use:Our On the Dot travel alarm clocks are a great gift for frequent travelers.
Do Use:ON THE DOT ™ travel alarm clocks are a great gift for frequent travelers.
Or Use:ON THE DOT ™

The perfect travel alarm clock for frequent travelers.

GUIDELINE 2:

An appropriate symbol should be used to designate the mark as a trademark. Prior to registration the letters TM (for a trademark) or SM (for a service mark) should appear directly to the right of the mark. After registration, the ® symbol should be used adjacent to the mark.

GUIDELINE 3:

Avoid use of the mark as a generic or common descriptive designation. The generic name of the goods or services should appear somewhere on all materials associated with the goods or services. This is particularly important in connection with new or unusual products so that consumers do not begin using the trademark as the generic name of the product. Such generic usage may eventually destroy the trademark significance of the mark. Thus:

Don’t Use:A CHATRING is a fun and fashionable way to stay in touch.
Use:Our CHATRING ™ jewelry with built in cellular telephone devices are the fun and fashionable way to stay in touch.

GUIDELINE 4:

Consistency should be the rule when using a trademark. A trademark should not be varied or altered from one use to the next. For example:

Do Use:RIGHTHANDMAN ™
 Handheld electronic organizer is all you need to keep track of the when’s, where’s and who’s in your life.
 RIGHTHANDMAN electronic organizer is easy to use.
Don't Use:RIGHTHANDMAN ™
 Handheld electronic organizer
Followed by:XYZ RIGTHANDMAN organizer is easy to use.
And then:RIGHT HAND MAN comes in a variety of colors.

Using a trademark in a proper and consistent manner will help to build a healthy mark with strong consumer recognition.


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