Inside INTA 2015: practical takeaways
World Trademark Review brings you the news and reviews from the key sessions at the International Trademark Association’s annual meeting
With some 9,911 registered delegates (and many other trademark professionals in town, but opting to do business away from the convention centre), the 147th International Trademark Association (INTA) annual meeting was the organisation’s biggest yet. As the host city positively embraced the visiting counsel – “120,000 people come here for Comic Con, but we don’t make nearly this much money,” one taxi driver confided – it was a hectic, yet productive five days for them.
Opening the conference, 2015 INTA President J Scott Evans welcomed his “fellow brand ambassadors” to San Diego in a lively speech which explained that this is how they need to see themselves going forward: “We need to think about expanding our conversations around trademarks to include brands and think of our role in a new way. We must protect our marks, but we can also contribute to the creative success of our brands and let them fulfil their role in the shopping aisles.”
“Trademarks help consumers differentiate between brands, but it is the brand attributes that drive purchasing decisions,” he continued. “Consumers are always connected and everything is shareable and social. So consumers aren’t listening to us – they are on social media talking to each other and the concept of brands has expanded to include social and emotional components.”
As a result, he suggested, the companies that will succeed in the digital age are those that take a holistic view of their brands; in turn, trademark practitioners will have to think differently about their contribution to brand identity. Enforcement strategies must also evolve accordingly. Evans gave an example from his time at Yahoo!, when the company discovered that a third party was using its logo on a commentary site. Rather than send a strongly worded letter, the team contacted the site operator and gave it a free long-term licence to use the trademark; with the sharing of information and comment embedded in its own corporate DNA, it recognised that this should be reflected in its policing efforts. While such a move may run counter to trademark counsel’s traditional instincts, Evans made a persuasive case for a fresh approach: “To be effective we need to be effective brand ambassadors, and this means we need to take a second look at some of the decisions we make as trademark practitioners.”
Following this address, the annual meeting officially got underway. Over the next 5 pages we present some selected session highlights and takeaways.
A moving line? Exploring the boundaries of trademark enforcement and misuse
In this popular session an all-professor panel, led by moderator Irene Calboli of the National University of Singapore, looked at the “moving line” between strong trademark enforcement and improper overreaching.
Boston University Law School’s Stacey Dogan started off by emphasising that trademark holders cannot avoid taking action when their marks come under fire: they must enforce their rights or risk losing them. She warned that brand owners “must do everything they can” to protect against the threat of genericism and also “have to be vigilant” against the risk of acquiescence and laches. But some argue that in their efforts to do so, mark owners are pushing the boundaries too far.
According to Dogan, the difficulties arise from the blurred lines of trademark protection; the “likelihood of confusion standard is a fuzzy mess”, she lamented. Greater clarity would leave less scope for overreaching – mark owners might think twice before sending a cease and desist letter if the courts defined the parameters with greater precision. However, “there is some hope”, she suggested: the recipients of such letters should be encouraged to resist, rather than relent. There were gasps in the audience when Dogan wondered whether trademark bullies could be compared to patent trolls: although there are obvious differences between the two, both can engage in such behaviour due to the lack of clear boundaries for legal rights, she stated.
Hugh Hansen of Fordham University School of Law disagreed, stating that trademark law does not have clear boundaries for a reason. In the United States, he noted, trademark law is aimed at protecting goodwill. Using a “veterinary” example, Hansen stated that the effect of dilution is similar to allowing “too many leeches on your dog”: in the end, it will kill the trademark. His advice for the “small guys”: do a search and use arbitrary terms as much as possible. Meanwhile, the “big guys” should not send cease and desist letters like “Nazi stormtroopers”: according to Hansen, cease and desist letters should look like “party invitations”.
Finally, Spyros Maniatis from Queen Mary University of London considered the issue from the European perspective. He noted that while dilution does not exist under EU law, the concept of free riding offers some protection. Maniatis pointed out that the threshold for proving free riding is getting lower and this thus represents an important tool for brand owners in the European Union.
Leveraging brands through alternative revenue streams
The panellists at this high-level session discussed how to leverage brands through methods such as co-branding and licensing. “Leveraging brands can create significant revenues,” stated moderator Lauren Fernandez, previously of Focus Brands. Licensing is “particularly attractive,” she observed, and companies can look into leveraging brand loyalty in a variety of products: “Often, the best place to look for revenue is right in front of you.”
Procter & Gamble’s Alison Tan agreed, presenting the company’s well-known air freshener and odour eliminator Febreze as an example. The trademark has been licensed in areas that are natural extensions of the original brand, such as in relation to laundry products; according to Tan, Febreze lends itself well to co-branding initiatives. In this respect, Procter & Gamble provides partners with detailed guidelines on how the brand should be presented alongside the co-brand (eg, in terms of size, logo and position).
General Mills’ Caldwell Camero went on to outline how his company entered into a joint venture in 1990 with Nestlé for cereals, to benefit from the latter’s extensive experience in international markets where its own presence was still very small. The joint venture has been a success, even though Nestlé and General Mills are fierce competitors in the US yogurt sector.
Rather than seeing competing products as threats, Tan confirmed, Procter & Gamble likewise seeks to combine with them – although she acknowledged that this can require careful internal management. For instance, since the company entered into a joint venture with Clorox, which sells cleaning products, she has had to educate the marketing team that while Procter & Gamble may be “friends” with Clorox in certain areas, the two are competitors in others.
Finally, HBO’s Judy McCool explained that her company frequently inks licencing deals for merchandise relating to its popular television shows and gave some advice about how to bring a fictional product to life. She used the example of the Tru:Blood beverage, based on the blood drink from television series True Blood. HBO teamed up with a soft drinks company to produce a real-life version of the beverage, but faced several difficulties: while for obvious reasons the product could not be identical to that in the television programme, it had to replicate blood as closely as possible and copy the label as much as possible while conforming with the relevant regulations. McCool added that working with partners in regulated industries, such as gaming and alcoholic beverages, can be a challenge (eg, HBO has licensed its Sex and the City brand for use with slot machines and its Game of Thrones brand for beer).
2015 trends and hot topics in Latin America
The session on the latest trends and hot topics in Latin America offered a number of lessons for trademark counsel, many of which related to activities around the 2014 FIFA World Cup in Brazil.
Valdir de Oliveira Rocha of Veirano Advogados Associados provided examples of ambush marketing campaigns undertaken during the event, revealing that FIFA sent out approximately 450 cease and desist letters to crack down on the practice. This might sound like a large number, but he warned that the tactic may become even more prevalent when the Olympic Games come to Brazil next year. This is because the Olympic Act, which every country must pass as a stipulation of hosting the event, does not expressly address ambush marketing, whereas there are specific provisions on the phenomenon in the corresponding World Cup legislation.
Avah Legal’s Agustin Velazquez went on to report on recent health initiatives launched by the Mexican government and explained how trademarks could be affected by the imposition of tighter regulations on products including tobacco, alcohol, ‘miracle products’ (eg, dietary supplements) and beverages. Many brands in these sectors have since had to review their labelling, leading to an increase in filings. For example, in response to a new tax levied on beverages with a calorie density of more than 275 calories per 100 grams, some companies are now placing smaller packaging labels on their products, with a corresponding use of new or revised logos including smaller text.
Moderator Juan Pablo Silva of Silva & Cia in Chile observed that this trend is playing out the world over: “These regulations are affecting beverage companies across the globe and we will need to be creative with our clients about the trademarks being used on food and drink products going forward.”
Finally, Marval, O’Farrell & Mairal’s Veronica Maria Canese explained that new legislation in Uruguay which is set to take effect from 2019 will pave the way for cancellation actions on the grounds of non-use. This leaves Chile as the only Latin American country without such a mechanism; although Silva mentioned that a statute to remedy this shortcoming is now under debate in Parliament.
Trademark rights in a mobile world
In a packed session in which many delegates reverted to sitting on the floor, a panel of experts examined trademark rights in the mobile and internet space. Particularly revealing was a case study presented by Zynga’s Frank Goldberg on how brands use their logos on social media sites and whether they include the trademark symbol. While he identified consistent use of the ® symbol on the Band-Aid Facebook page, as well as other examples of established brands seeking to ward off the spectre of genericide, he found a notable absence of trademark symbols on the social media pages of some of the “hottest start-ups” of recent years – including brands such as Uber and Thousand Eyes. While companies may want to avoid trademark symbols getting in the way of a trendy logo, he stressed: “If you are a start-up trying to claim trademark rights, you should at least tell the world you are trying to claim rights.”
The session also addressed a tricky area of trademark enforcement: infringement on fan websites. The unanimous consensus was that where such sites unwittingly cross the line, caution should be the order of the day. “Enforcement measures are in permanent ink,” warned Dennis Wilson, a partner at Kilpatrick Townsend & Stockton. “Approaching a fan site with a cease and desist letter, or some other similar communication, and having the site owner then post it means that it will be online forever. You need to be very careful and consider the possible reaction from consumer advocates.”
The panel went on to discuss the issues that may arise from the ongoing evolution of the mobile and digital spaces, touching on a number of subjects, including the need for a forward-looking trademark filing strategy. This is particularly crucial given the global nature of app store marketplaces and to prepare for enforcement against user-generated content – something which is predicted to become even more prevalent in the future.
Wilson concluded that the nature of the Internet necessitates a more “balanced approach” to trademark enforcement: “More control is being lost by brands, but that may not necessarily be a bad thing.” He suggested that brands should embrace and adapt to this new reality – and may even find ways to take advantage of it. It was a bold message, and one that may seem daunting to trademark counsel; but given the ubiquity of the Internet, it is one worth considering.
Perspectives from Asia
Those keen to keep pace with the latest developments in Asia had plenty to bring them up to speed. At the Japan Patent Office (JPO) users meeting, Director of Trademark Policy Planning Sunao Sato was on hand to apprise attendees of the new non-traditional trademarks regime and other changes in policy. Sato revealed that while total and domestic applications are at strong levels and trending upward, Madrid filings designating Japan trailed off slightly last year. The JPO itself has achieved some success in its efforts to become more efficient, having steadily reduced first action pendency in recent years to just over four months.
Non-traditional trademarks came into effect on April 1 and in the first month the JPO received 607 applications for such marks, including 248 for colour marks, 194 for sound marks and 117 for position marks. The other classes available to applicants are motion and hologram marks. Sato explained how each type of mark should be described in an application, highlighting differences from the US Patent and Trademark Office (USPTO) guidelines. For example, when submitting a motion mark, up to 99 ‘frames’ showing the motion can be provided, while USPTO registrants are permitted only five.
The “Regional Update: China, Japan and Korea” panel provided further clarification on the landscape in Asia’s three key trademark jurisdictions, all of which have seen recent legislative reforms. In China in particular, noted Scott Palmer of Sheppard Mullin, there have been too many significant changes to discuss in a single session. Those topics that were addressed showcased some potentially useful new tools for brand owners. For example, the draft judicial interpretation of the Supreme People’s Court on administrative trademark cases includes a provision that, if adopted, will assist in the fight against parties that file bad-faith applications en masse. It calls for the disapproval or invalidation of marks “filed in a massive amount by the applicant with apparently no intention of genuine use” or without justified reasons.
There was also some discussion of Article 10.1.8 of the Trademark Law, which imposed a blanket ban on the registration of marks “having unhealthy influences”. Mullin noted that a Beijing court recently used this provision to ensure that Tencent did not lose control over the Chinese name for its ubiquitous WeChat messaging service. He said the ruling was surprising and warned that while big brands may be keen to argue against trademark squatters on the same grounds, such an approach is likely to be “hit or miss”, though it “remains in the toolbox”.
Is fair use always fair? International approaches to fair use issues in a mobile world
Staying online, this session examined the concept of fair use from a global perspective.
Kim & Chang’s Sung-Nam Kim kicked off by explaining the basic principles for nominative fair use in the United States. The doctrine was first enunciated by the Ninth Circuit in New Kids on the Block v News America Publishing Inc, noting that a party may use or refer to another’s trademark if:
- the third party’s product is not “readily identifiable” without use of the mark;
- the degree of use does not exceed what is necessary; and
- use of the mark does not falsely suggest sponsorship or endorsement by the rights holder.
In Century 21 Real Estate Corporation v Lending Tree Inc, the Third Circuit adopted a modified version of the nominative fair use defence – that the court should first determine whether there is a likelihood of confusion and only then apply the following test:
- Is the plaintiff’s mark necessary to describe both the plaintiff’s product and the defendant’s product?
- Has the defendant used only so much of the plaintiff’s mark as is necessary to describe the plaintiff’s product?
- Does the defendant’s use reflect the true and accurate relationship between the parties’ products?
The panellists went on to consider whether the use of third-party logos is always harmful. Not necessarily, was the answer. Twitter Inc’s Stephen Coates explained that his company encourages use of its blue bird logo – as long as it is not modified in any way – and the word ‘tweet’ to refer to its services. “The Twitter bird may be one of the most socialised brands in the world, with our permission,” he explained. “We encourage people to use it, as long as it refers to Twitter.” Coates gave the example of the Oreo #EatTheTweet campaign, which Twitter did not object to as it referred to the Twitter platform and used the bird logo. Moderator Gavin Charlston of Google added that his company’s approach to use of the Android robot logo is even more relaxed: a Creative Commons licence allows not only for the use and reproduction of the logo, but also for its modification.
Microsoft Corporation’s Andrea Sander then gave advice on using descriptive names as trademarks. “If you see a sign being used descriptively,” she noted, “there’s a good chance that no one is enforcing rights in that term.” However, there are still risks: the term may be licensed or may have acquired distinctiveness. “Localisation is a big factor,” she explained: a descriptive term may be distinctive in another language.
Finally, Grünecker’s Cornelia Schmitt highlighted best practices:
- Always make a search, even if “you think a term is so descriptive there is no chance it’s registered; you’d be surprised at what you find!”
- Do not use the trademark symbol behind descriptive elements.
- When using a descriptive term contained in a third-party trademark, always try to differentiate yourself by using different graphic elements or colours.
Industry breakout: fashion forward
Through a game of “Beat the clock”, the panel – moderator Pamela Weinstock of Kenneth Cole Productions Inc, Steptoe & Johnson’s Michael J Allan, Stuart Weitzman’s Barbara Kolsun and Theodore C Max of Sheppard Mullin Richter & Hampton – discussed issues of interest in the fashion sector.
The audience were first asked to imagine that they were in-house counsel at a fashion design company led by world-famous designer El Sid. In one fictional scenario, El Sid wanted to name designs in his new collection after characters from the book and television series Game of Thrones. “Creative people come up with a lot of lovely ideas,” Kolsun joked; “we have to figure out how to make them happen without getting sued.” Clearing design names is no different from clearing trademarks, trade names and designs, she continued. In this scenario, the solution would be to clear the character names from Game of Thrones and the various books written by George RR Martin. However, there are risks in such a scenario: for example, the US Lanham Act and state trademark laws protect the names of characters to the extent that they are source identifiers.
The panel went on to explore the risks of 3D printing. Research company Gartner has predicted that 3D printing will result in the loss of at least $100 billion per year in intellectual property worldwide by 2018. In addition, infringement litigation may involve a costly combination of patents, copyright and/or trademarks, depending on the designs and the printing processes. The panel also looked at the lessons from the ‘left shark’ case: Katy Perry’s ‘left shark’ dancer costume at the Superbowl led to a 3D printing controversy after an artist began selling 3D-printed figures online. The case shows that:
- minimal manufacturing lag means that products can hit the market faster;
- pop culture memes and trends are likely targets for 3D-printed goods; and
- big brands and famous figures must assess the potential PR backlash of enforcement.
3D printing also has significant implications for the fashion industry:
- It may create shorter lead times for designers;
- It will allow for smaller runs than are possible with traditional manufacturing; and
- Products can be easily customised.
So what can rights holders do to protect themselves? According to the panel, they should use traditional IP protection where possible, monitor and enforce their rights and not “be tardy to the party”: it is important to think through a 3D printing strategy now and become acquainted with online 3D printing marketplaces, such as Thingiverse and Shapeways.
Finally, the panel looked at the protection of fashion designs in the United States. “US law doesn’t protect fashion,” Kolsun pointed out; “that’s the hot topic.” As a result, brand owners must resort to a mix of trademark, trade dress and patent design protection. However, it is difficult to prove that a shape or trade dress serves as a source identifier or has acquired secondary meaning. According to the panel, fashion designs will never be protected in the United States; but protection is available in the European Union, as illustrated by the European Court of Justice decision in Karen Millen v Dunnes.
Implementation of international IP treaties in Africa
In what proved to be one of the most spirited sessions at this year’s annual meeting, the discussion on international IP treaties in Africa was a distinctly musical affair. Moderator Chinyere Anayo Okorocha, a partner at Jackson, Etti, Edu & Co in Nigeria, commenced by announcing: “This session will be different – it won’t be all talk, it will incorporate dance.” And each session speaker, although tentative at first, did seem to have their dancing shoes on, taking to the session room floor before each presentation and busting some moves along with delighted audience members.
The gaiety did not detract from the trenchant reminders of the challenges faced in Africa’s evolving IP landscape. Wayne Meiring, managing director at Spoor & Fisher Jersey, argued that the push for African countries to sign up to international treaties such as the Madrid Protocol and the Agreement on Trade-Related Aspects of Intellectual Property Rights, when many do not have the resources or budget to implement them properly, is causing many problems – not least the risk that international marks may not be enforceable in these countries (for more detail see page 70). Ultimately, he concluded: “The gap between what the developed world wants and what the African nation wants remains very wide.”