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305 Nuts and Bolts of Trademark Practice In-House ACC’s 2008 Annual Meeting Informed. In-house. Indispensable. Monday, October 20 4:30 pm-6:00pm 305 Nuts and Bolts of Trademark Practice In-house Karen Shoresman Frame Associate General Counsel Market Force Information, Inc. JoAnn Holmes Intellectual Property Counsel Cott Steven Rosenthal Senior Counsel, Intellectual Property Diageo North America, Inc. Dana Serrano Attorney Zywave, Inc. This material is protected by copyright. Copyright © 2008 various authors and the Association of Corporate Counsel (ACC). Materials may not be reproduced without the consent of ACC. Reprint permission requests should be directed to ACC’s Legal Resources Department at ACC: 202/293-4103, ext. 338; [email protected] ACC's 2008 Annual Meeting Informed. In-house. Indispensable. strategies, and last year co-chaired a conference on intellectual property practice for Faculty Biographies attorneys of color. She has also taught IP and advertising law as an adjunct professor for a local college. Ms. Holmes is an active advocate for CARE International, a global non- Karen Shoresman Frame governmental humanitarian organization that focuses on assisting women and children living in poverty throughout the developing world. Karen Shoresman Frame is currently associate general counsel at Market Force Information, Inc in Boulder, Colorado. As associate general counsel, Ms. Frame is A graduate of the Emory School of Law, Ms. Holmes earned her undergraduate degree responsible for mergers and acquisitions, litigation, employment issues, contracts, and from Stanford University. She also participated in a global study abroad program through intellectual property, among other matters. Semester at Sea and a domestic exchange program with Spelman College. Prior to joining MFI, Ms. Frame was senior director of litigation and associate general Steven Rosenthal counsel of Brocade Communications and McDATA Corporation, where she also focused on providing a variety of legal advice to all departments within the company, oversaw all Steven Rosenthal is senior counsel, intellectual property at Diageo North America, Inc. in litigation, trained employees and management on compliance issues, drafted and Norwalk, Connecticut. Mr. Rosenthal is responsible for a wide variety of intellectual implemented an assortment of policies and procedures, and managed all IP matters and property and advertising matters, such as IP clearance for new product launches and outside counsel. Prior to Brocade, Ms. Frame was senior counsel of government and advertising campaigns, IP portfolio management, enforcement, litigation, and licensing. external affairs at Covad Communications Company. Previous to that position, Ms. He works on several leading beverage alcohol brands, including Crown Royal and Frame headed up the legal department at Carrier Access Corporation, where she served as Johnnie Walker whisky, Don Julio tequila, Smirnoff vodka, and Smirnoff Ice malt corporate counsel. Prior to joining Carrier Access, Ms. Frame spent time in private beverages, among others. practice. Prior to that, Ms. Frame was president and CEO of two high technology start-up companies. Ms. Frame was also a business law adjunct professor at the University of Prior to joining Diageo, Mr. Rosenthal was an associate in the trademark and copyright Illinois College of Commerce and a former assistant state’s attorney. group at Pennie & Edmonds LLP in New York, and then in the intellectual property and technology group at Skadden, Arps, Slate, Meagher & Flom LLP in New York. In her spare time, Ms. Frame is an adjunct instructor at the University of Colorado School of Law and sits on various charitable and professional boards. Mr. Rosenthal is ACC’s IP Committee’s subcommittee chair for webinars, and also serves on the editorial board subcommittee for the International Trademark Association’s Ms. Frame holds a JD from the University of Illinois College of Law, studied at Oxford Trademark Reporter. He has also served on the INTA’s Industry Advisory Council and University in England, and earned her BS from Indiana University. on the enforcement committee. JoAnn Holmes Mr. Rosenthal graduated from Harvard College with honors, and cum laude from Boston College Law School. JoAnn Holmes is intellectual property counsel for Cott Corporation, the world’s fourth largest non-alcoholic beverage company, in Bloomington, Illinois. In that capacity, and Dana Serrano as a member of Cott’s executive team, Ms. Holmes manages all IP related matters, including Cott’s global trademark, patent, trade secret, copyright, and domain name Dana Berce Serrano is counsel with Zywave, Inc. in Milwaukee, Wisconsin, where she portfolio in over 130 countries and territories. In addition, she is responsible for export, has worked in-house for three years. She is responsible for Zywave’s intellectual property advertising, FDA, and FTC related legal issues. matters and contract management, as well as legal issues relating to marketing, technology, and corporate matters. Prior to joining Cott, Ms. Holmes was a senior associate in the technology and intellectual property practice group of the full service, international law firm, Troutman Prior to joining Zywave, Ms. Serrano was an attorney with large law firm in Milwaukee Sanders. There, she assisted clients with a broad array of IP focused matters including practicing intellectual property litigation and trademark prosecution and also practiced at domestic and international trademark prosecution, dispute resolution, and contract a boutique firm. negotiations. Ms. Serrano is a member of the Wisconsin Bar’s intellectual property section as well as Ms. Holmes recently spoke at the Pennsylvania Bar Institute’s annual IP conference on the Wisconsin Intellectual Property Law Association. In her community, she serves on advertising and branding issues, has lectured at Cornell Law School on IP management the board of directors for the Whitefish Bay Civic Foundation. 2 of 49 ACC's 2008 Annual Meeting Informed. In-house. Indispensable. Trademark Introduction & Clearance Types of Trademarks Trademark Introduction !"“Trademark” for goods and services !"Definition and trademark types !"“Service Mark” for services !"Brand strength !"Collective Mark - !"Distinctions from other IP !" Owned by a collective group or association !" Members use the mark !" Example: California Granny Smith apples !"Internal Clearance Request Process !"Certification Mark – !" Identifies a characteristic of a good or service !"Trademark Searching & Analysis !" Example: Darjeeling teas Trademark Definition Trademark Strength (Inherent Distinctiveness) !"Source identifier; uniquely distinguish goods or strongest !" Fanciful/Coined services !" Invented term: Pepsi !"Purpose – Consumer Protection !" Arbitrary !" Avoid consumer confusion and deception !" Actual term: PC !" Suggestive ! " Words, letters, numbers, slogans, characters, logos/designs, symbols, colors, sounds, smells, !" Hinting term: Quench combinations of the foregoing ! " Descriptive !" Describing term: Texas Fizz ! " Example: National Broadcasting Channel, NBC, 3 tone chime, “Must See TV” ! " Generic ! " Common identifier: Cola weakest 3 of 49 ACC's 2008 Annual Meeting Informed. In-house. Indispensable. Other IP Branding Selection Brand !"Trade Dress Protection !" “Look and feel” in colors, layout, etc. (Registration) !" Non-functional, inherently distinctive Legal Clearance !" Example: IHOP restaurant facade By In-House or Outside Counsel !"Domain Names (Detailed Searching & Analysis) !" Can mirror trademark !" Example: Amazon.com Marketing Ideation !"Copyright & Brand Creation (Preliminary Screening) !" Non-functional, creative works in fixed medium !" Example: logo design, packaging, labels, sales sheets Other IP (cont.) Brand Selection !"Patent !" Useful and novel work; grants monopoly !" Utility, Design, Plant, Business method !" Example: Manufacturing process, bottle design ! " Trade Secret !" Alternative to patent protection ! " Provides competitive advantage ! " Must maintain confidentiality ! " Example: Formulae, customer lists, marketing intel 4 of 49 ACC's 2008 Annual Meeting Informed. In-house. Indispensable. Brand Selection (cont.) Trademark Clearance Searches !" Marketing Checklist – What’s the plan? !"Elimination Search – www.uspto.gov !" Trademark(s) Mountain Pig & Logo !" Specific product type Soft drinks (flavors: colas, citrus, grape, etc.) !" Customer Pig Stop stores !" Trademark keyed off another brand? Similar to Mountain Dew !" Who created the brand name? Outside design firm !" Brand on sale now or proposed product? !" Indicate launch date for existing products Launch ASAP !" Use mark with customer’s house brand or existing product brand? Maybe !" Indicate house or existing product brand and launch date Pig Stop 1/1/05 !" States/Countries for product’s sale Southeastern US; May expand !" Confirm that Marketing Manager has conducted initial searches on US PTO web site Yes !" Deadline for response ASAP!!! Trademark Clearance Searches Trademark Clearance Searches !" Immediate Elimination Searches !" Can be conducted by marketing !"TESS Boolean Search – www.uspto.gov !" Free on www.uspto.gov web site !" Preliminary/Knock-out Searches !" Federal & State databases !" Should be conducted by counsel !" Examples: Lexis/Westlaw/Trademark.com/Saegis !" Common law searching via Internet (e.g., Google, Yahoo) !" Comprehensive Searches !" Concisely organize federal, state, common law marks, ownership history !" Domain names, web page screen shots, internet search results
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