TMR Committee Meeting Agenda Dallas, TX

TMR Committee Meeting Agenda – Dallas, TX

Monday, May 6, 2013 1:15 p.m. – 3:15 p.m. Dallas Convention Center, Room C 146

I. Welcome and Introductions

II. Publication Status

Since the start of the Committee term in 2012, nearly 75% of what TMR publishes is generated by this committee—either because some of you are writing the articles yourselves or because some of you have solicited authors to write them.

- 7 (35%) articles written by TMR Committee members, - 8 (40%) articles solicited by TMR Committee members, - leaving 5 (25%) submitted randomly for publication consideration.

It is evident that the publication of each issue has grown increasingly dependent on our committee members writing articles and our committee’s help soliciting authors to write them.

Thank all of you who have helped supply the content of our issues, and we encourage you to continue doing so going forward.

And thanks to all of you who have reviewed and provided feedback on these articles once they’ve been submitted.

III. Minders & Solicitors Update

The task force is responsible for bring 7 articles to publication since the end of 2011—articles from India, Australia, Japan, the EU, and also the US.

We are targeting a few more articles for submission this summer:

 Co-authors from the EU have submitted an article on the relevance of context when determining infringement under EU law.

 An article on ADR in Greece is scheduled for submission.

 Another on famous and well-known marks in China.

IV. Committee Selection

 Committee selection for the 2014-15 term began on June 3 and ends on June 28. The entire process is done online and the form is accessible on INTA’s homepage.

 You’ll find out the week of September 23, which committee you’ve been assigned to.  Please keep in mind that INTA limits its members to two consecutive terms on a single committee—that’s a total of 4 years, 2 years each term.

 If you have already served two terms (or 4 years total) on this committee, you’ll need to apply for a different committee. If you want to return to the TMR Committee, you may reapply after one term, which is 2 years.

 Please remember that if you’ve been on this Committee for only 1 term and you’d like to stay on for a 2nd term, you must still go online to apply for this Committee.

 The TMR Committee does occasionally make exceptions to the 2-term limit for those members who have both expressed and demonstrated a strong interest in becoming an important part of this Committee. In that case, I’ll do my best to have you waived onto the Committee—which is subject to Board-of-Director approval.

 For those of you on a task force, if you want to remain involved but you’ve reached your term limit, let me know and I will have you waived onto the Committee.

 If you do apply to the TMR Committee, take note that the responsibilities for the next term will change somewhat. Because authoring and soliciting articles for publication have become so important in recent years, that function will become the primary responsibility of all TMR Committee members. - Bringing in an article for publication will be weighed heavily when committee selection comes around for future terms.

 What this means for you is that you will have 2 years to produce a single article that gets published—whether you write one yourself or you are responsible for getting one submitted for review—it’s all good.

 Reviewing and editing submissions will obviously remain a major responsibility, but it will be given a little less weight than bringing in an article for publication. (Without articles, there is nothing to review.)

V. Brainstorming for Theme Issues

Our plan is to publish one theme issue per year, beginning next year, in 2014.

Committee members discussed with tablemates ideas for future TMR theme issues and article topics to publish within the framework of each theme. Potential authors were mentioned as well.

Representatives from each table shared with the Committee the ideas they discussed, which follow:

Possible Theme Issues

The Anti-Dilution Issue  Clash between TM protection and the First Amendment  Proving dilution - dilution surveys  Damages for dilution?  Geographical designations and dilution  Proving fame  Protection for famous marks outside of the U.S. The Design Issue: Product Design/Configuration/Trade Dress/Design Rights  Seeking global harmony – summary of global rights  Trade dress vs. product configuration  European copyright/trademark/design rights overlay  Is there secondary meaning; if so, do other factors necessitate denial of protection?  Design patents vs. copyrights vs. trademarks  Functionality The Trademark Remedies Issue: You’ve won but what do you get?  Profits, fees, disgorgement  Injunctions, recall  Exceptional circumstances  Corrective advertising  “publication” of ruling (in Europe)  What do you need to show re irreparable harm to get a preliminary injunction? The Trademark Use Issue  Are use requirements different for different countries? Is Google’s AdWord program trademark infringement?  Does the Internet help with establishing / maintaining rights?  What is required to avoid abandonment or cancellation?  Degrees of use / continuity of use The Trademark Registration Issue  Taboo marks/scandalous marks  What can’t be registered /what to do if it can’t be registered  Certification marks  Classification of goods/services - Class headings enough or not?  Regulatory aspects of class headings (Class 5)  Community vs. National Trademarks in the EU  ITU transfers

The Evidence Issue  Applicability and admissibility of surveys worldwide  Alternatives to surveys  Internet based research  Proof of well-known marks  e-discovery on a global basis  Expert witness hot-tubbing (experts on both sides submit only points of contention to the judge; judge can question experts; takes control from the attorneys) – Australia has adopted; Canada is considering The Enforcement Issue  Goods in Transit - Exhaustion  Customs  Anti-counterfeiting & secondary liability  Permissible use by others  Extraterritorial effect of trademarks across geographic borders  Internet issues in enforcement - Google AdWords - globally  Self-mutilation – how to enforce a mark when the owner itself does things to injure its mark Back to the Future: The Trademark Profession Today  Common-law trademarks, worldwide, today  The trademark profession for the past 50 years / evolution of trademark practice  Expansion of TM rights  Globalization – effect on TM rights  Trademark truisms, debunked The China Issue  Enforcement In China  Registration Strategies in China Global Issues re the Protection for Certain Types of Marks  Descriptive marks – standards worldwide  Genericism  Nontraditional marks  Surnames

An Industry Focus Issue  Pharmaceuticals The Publicity Issue  Names & likenesses – Worldwide Rights of Publicity

Possible authors:

Caboli on First Amendment/dilution Sonya Sotomayor as possible author describing her experiences as a TM attorney Erin Hickey/Tony Fletcher – genericness Simon Crompton/Lisa Pearson – fluid marks Parody/First Amendment – Bryan Wheelock Unregistered TM rights in Europe – Peter Bolger Use needed to maintain rights in Europe – Ellen Gevers Sarah Butler of NERA mentioned as an author on surveys re dilution (tarnishment and blurring) Axel Nordemann – trademark use

VI. Three New Task Forces

We invite you to join 1 of 3 of our new task forces: (1) one for the theme issue; (2) one for the new commentary section; and (3) one for book reviews. ______1. New Theme Issues: We have formed a new task force to prioritize the themes in terms of which ones to target first for publication and to seek authors to solicit for the identified article topics for publication in 2014.

2. New Commentary Section: In anticipation of a new Commentary section, which we will add to each issue of the TMR beginning with Issue No. 5 (scheduled to publish in December), we have formed a new project team headed by Neil Wilkof.

The focus of this new section is a brief comment (not a case summary or the like) on trademark- related subjects, including attention to strictly legal issues, trademark strategy, trademark policy concerns, commercialization and licensing of trademarks, and issues that are branding-focused and brand-oriented. The preferred length for the Commentary is between 750 and 1500 words. It is our goal that members of the Committee have the first opportunity to contribute pieces for this section. We will turn outside the Committee only if necessary or under unusual circumstances.

3. TMR Book Reviews: We would like to increase our reviews of trademark-related books and we have formed a project team and leader for this purpose.

[Meeting adjourned at 3:15 p.m.]