22 May
2018

UDRP in a GDPR world, attendance creeps towards 11,000, and Boston calling: INTA 2018 day three report

The legs are getting heavier, and the ‘morning after’ headaches more intense, but the World Trademark Review editorial team of Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH) have been running between sessions, the exhibition hall, meetings and receptions – with a few stops along the way for some fine Seattle coffee – to bring you the latest stories and insights from Tuesday’s proceedings.

In case you missed our previous dispatches, you can read our highlights from Sunday and Monday here and here. Don't forget you can get the inside track on World Trademark Review’s new intelligence offerings and navigation, as well as pick up the latest hard copy publications, at stand 213 in the exhibition hall.

INTA registrations creep towards the 11,000 mark – On Saturday we posted analysis of the available registrant data for this year’s Annual Meeting as of May 17. At that time, we wrote, the event was already the biggest US Annual Meeting in history. We have subsequently learnt that, if delegates that had opted out of being published on the register were included, it had actually already become the biggest Annual Meeting. Period. And the numbers continue to rise. At the opening ceremony on Sunday INTA CEO Etienne Sanz de Acedo revealed that 10,910 delegates had registered. World Trademark Review has learnt that, based on weekend registrations, the current total is 10,971. Whether a final spate of registrations will result in the 11,000 barrier being broken remains to be seen but one thing is for sure: Seattle has set quite target for Boston to beat. (TL

Corporate counsel talk protecting health, pharma and wellness brand rights – In a lively session, leading trademark counsel from the pharmaceuticals, healthcare and wellness industries discussed the key brand rights challenges affecting their businesses. One interesting topic raised was the growing tendency of brands in these industries to cross over into other trademark classifications. Jake Feldman, global trademark attorney for Johnson & Johnson, for example, spoke of his recent experiences managing the Neutrogena brand; a cosmetic brand traditionally, but one that in 2017 released a light therapy acne mask medical device. This had required clearance of the house brand and new sub-brands in Class 10, rather than in Class 3, and also created a greater need to look more closely at squatting issues in China. Meredith Pavia, head of trademarks at Fitbit, observed that doing clearance for her company’s brand for its wearable wellness devices was challenging, given that the products potentially span many trademark categories, including hardware, software, jewellery, medical devices, accessories and fitness equipment. Another talking point was the proliferation of pharmaceutical or health-related mobile apps, which, the panelists agreed, created a dilemma for brands in this space over whether to use designs without word marks. (AH)

Do delegates think ‘.sucks’ no longer sucks? – It feels like only yesterday when Vox Populi, the operator of the ‘.sucks’ new gTLD, was the talk of the town during the INTA Annual Meeting in San Diego back in 2015. The company, which was in the midst of controversy over charging brands upwards of $2,500 during the early access period, hired a van declaring ‘INTA.sucks’ which drove around the city during the event. At that time, we spoke with John Berard about feedback he’d received in the exhibition hall, and he was honest that there were many hostile attorneys and brand owners. This year, however, the tide appears to have turned. One of Vox Populi’s representatives on its stand – which, for the third year in a row is giving away free custom-printed T-shirts – told us today that very few delegates were hostile this year, with many arriving at the stand unsure (“some had defensively registered a ‘.sucks’ domain, parked it, and didn’t know what else to do with it”) and often walking away with “a light-bulb moment” about the opportunities that a ‘.sucks’ domain offers. “We’ve found that the ‘apple.sucks’ example [which redirects to Apple’s product feedback page] is perfect to demonstrate how ‘.sucks’ domains can be used – that it can be a place to listen to customers,” they said. Finally, for those who miss out on a T-shirt this year, they promised they’ll be back next year. (TJL)

The Trademark Attorney Employment Act – One notable new exhibitor this year is a local company you may of seen around town. Amazon is omnipresent in Seattle – whether streetcars bearing the company’s branding or shoppers carrying Amazon Go bags, the brand is everywhere. And with the trademark community in town, it has taken to the INTA Annual Meeting exhibition hall to present the Amazon Brand Registry to potential users. The offering is a free service that provides companies with greater control of their brand on Amazon’s platforms. Whether using it to find and report infringement, or control Amazon product pages using a brand’s name, to sign up you have to provide proof of a registered trademark. This requirement is seen by many at the USPTO as driving demand for US trademark registrations. LegalForce’s Heather Sapp was a USPTO trademark examining attorney for over a decade and told World Trademark Review that the office has had to hire new examiners in a bid to handle the resulting applications. So much so, she explains, that her “examining attorney friends refer to the Amazon Brand Registry as the ‘Trademark Attorney Employment Act’”. Amazon’s economic investment in Seattle receives a lot of press here in Washington State. It appears that it is also driving jobs across the country in Alexandria, Virginia. (TL)

Ditching manual tasks – The exhibition hall features a range of wares for those that manage trademark portfolios. One company seeking to catch the eye of potential new clients is CPA Global, which, says Toni Nijm, chief product and strategy officer, has spent the last three or four years rethinking how to solve the problems that IP owners and law firms encounter. There was - and still is – a great deal of money being spent by law firms on manual tasks, he contends, and a lot of renewal deadlines are missed because of errors generated by this manual approach. “This is crazy!” Nijm exclaims; and it has been the driving force behind the company’s efforts to provide intelligent solutions to IP management. The company has therefore been transitioning from a service business to a platform business, offering an increasingly broad set of functions to IP managers. For instance, a new ‘Docket’ service is due to be launched in July this year, and a slew of analytics tools are in the pipeline. The non-legal services sector is a competitive one, and each company is seeking to differentiate itself from others. For CPA Global, it is all about removing that manual margin of error. (AH)

CompuMark strikes White Rabbit deal on exhibition floor – Trademark research and brand protection providers CompuMark yesterday announced that it had entered a new partnership with leading provider of Chinese trademark data, White Rabbit / Bai Tu. Jeff Roy, president of CompuMark, stated: “Our new partnership will dramatically improve global access to White Rabbit’s high-quality Chinese data, which, coupled with their local knowledge, will enable businesses and trademark professionals alike to gain unique insights into the Chinese market and successfully compete in China.” Speaking to a representative from the Clarivate Analytics brand earlier today, World Trademark Review was told that the exclusive deal, which had been struck on the INTA conference room floor, would help overcome traditional difficulties law firms and service providers have had in obtaining high quality trademark data from the world’s most populous country – a jurisdiction of fast-growing importance to brand owners. (AH)

The UDRP in a GDPR world – A lot has been written about the impact of the European Union's General Data Protection Regulation (GDPR) on access to WHOIS data. However, the WIPO Arbitration and Mediation Center has also received enquiries as to the possible impact on UDRP cases. At present the precise nature of the post-GDPR landscape is unknown, but based on current information Brian Beckham, head of the center’s Internet Dispute Resolution Section, has attempted to answer some of the questions swirling around. In a document he shared with World Trademark Review, he notes that, in principle, brand owners’ ability to actually file a UDRP case should not be restricted post GDPR. He expands: “Much like cases filed today against a privacy/proxy service, a UDRP case filed post-GDPR – eg, where the respondent is publicly identified in the registrar’s WHOIS as ‘Name Redacted’ – would, all other things being equal, be accepted by a provider for processing and compliance review.”  As to the ability of UDRP providers to then access the registrant detail, the draft ICANN Temporary Specification – which was approved last week – expressly acknowledges that registrars must provide full registration data to UDRP providers upon the latter provider notifying the registrar of the existence of a complaint. Therefore, he concludes: “We trust that with this foundation, where a complaint has been submitted to a UDRP provider, ICANN‑compliant registrars will provide WHOIS information on request from a UDRP provider (and at the same time lock the domain name’s registration and registrar information). In the event a particular registrar refuses to do so, or imposes additional burdens, we will have to treat this on a case-by-case basis and may need to look to ICANN compliance for assistance.” In short, while some of the mechanics may change, as things stand the UDRP should continue to offer rights holders a meaningful dispute resolution option. (TL)

“Nobody else does what we do”: inside the high volume filing practice – We have previously written about the spate of lawsuits initiated by LegalForce founder Raj Abhyanker against a number of online trademark filing platforms. Abhyanker, who was behind the Trademarkia engine, has long been a contentious figure in the trademark law arena – as we reported previously, while he relishes the ‘Legal Rebel’ title bestowed on him by the American Bar Association in 2013, Trademarkia has itself come under fire from established law firm practitioners over the perceived commoditisation of filings. However, LegalForce’s Heather Sapp, senior trademark attorney, and Elizabeth Pasquine, senior attorney, argue that criticism of the firm’s rate of prosecution work is rooted in misperception. Both served as USPTO trademark examining attorneys and merely liken the level of prosecution work they now handle to the volume of workload taken on at the office – Sapp contending: “At LegalForce we are all attorneys and take that job seriously.” Pasquine adds: “To this today there is confusion about what we do, because nobody else does do what we do – which is run a high volume prosecution practice. Our law firm model is different to usual law firm. We are not a filing service. We are more like the USPTO in the way we run and use automated services - without automation we couldn’t handle the volume we do and maintain quality. It’s a Silicon Valley technology approach.” Pasquine concludes: “I would love it if fellow attorneys of the trademark bar would see us as the attorneys we are, rather than just lumping us in with other online filing offerings.” (TL)

Ethics, prizes and an appearance from Ferris Bueller – Another day, another packed room (despite, for at least the second time during this year’s Annual Meeting, an incorrect room number given to delegates) for arguably the most fun session of the entire event (at least in terms of laughs per minute), ‘Ethics at the Movies’. There were prizes for those who made comments, with 40 wrapped up DVDs thrown in all directions (with sole presenter Larry Cohen of Cohen Law Firm commenting “the reason the DVDs are wrapped is because I used to not wrap them, and if I threw them out and the person didn’t like the movie, they’d throw it back to me”). Cohen admitted the session, which ostensibly looked at various ethics issues that lawyers must contend with, was different from your average CLE presentation, noting “if you’ve come for deep dock trial learning, you’ve come to the wrong place”, and later adding “my job is to show movies and raise your consciousness”. Short clips were shown from a host of mostly legal movies and TV shows, including The Lincoln Lawyer, Liar Liar, Wild Things (Cohen: “I’d encourage you not to watch this one”), A Fish Called Wanda, Against All Odds (“another terrible movie”), Erin Brockovich, Boston Legal, Suits and, of course, My Cousin Vinny (which, when asked, everyone in attendance had seen). To break the ice, Cohen’s first clip was the brilliant classroom scene from Ferris Bueller’s Day Off, demonstrating how he wouldn’t be hosting the session. The discussion created by these scenes were both insightful and humorous. When discussing the clip from A Fish Called Wanda, which spurred debate on “just who can we have sex with anyway?”, Cohen noted that in nearly all US states you cannot have sex with clients – but, he later learned, there is at least one exception: “Someone came up to me after a similar session to this and said ‘I’m from Texas and we can have sex with our clients. Actually I like having sex with my clients. In fact, I’m going to go upstairs and have sex with one of my clients right now.” While numerous lines and stories from Cohen elicited applause, arguably the loudest reaction came during a discussion about the settlement scene from Erin Brockovich. The scene features a couple of law firm employees posing as lawyers during a meeting, with one delegate asking whether “having people dress as lawyers” is unethical – and another delegate replied “what is dressing like a lawyer?” (which was followed by loud applause from the room). Overall, the session was clearly enjoyed by all – but also had dozens of insightful tidbits on the ethical tightrope that lawyers often walk. (TJL)

Looking ahead to Boston – While there’s still one full day of this year’s INTA Annual Meeting left, minds will inevitably be drifting to next year’s event. Being hosted in Boston, Massachusetts, it was – as I’m sure many will remember – the location of the 2010 Annual Meeting. For those already planning for it, a representative for the Boston tourist board is in the exhibition hall to answer any delegate questions about next year’s meeting. When asked by World Trademark Review what the most common question has been, she said it was around travel from the exhibition center to central Boston. The reason for that, she said, was that back in 2010, the Boston Convention and Exhibition Center was relatively new and there were very few amenities close to it. This meant that, for the most part, meetings and receptions were held in central Boston and required a taxi ride (similar to Barcelona last year – with one of the residing memories of that meeting being the long taxi queues). However, things have now changed in the years since, and the representative claims there are “plenty of amenities close to the convention center now”. Indeed, a look on Google Maps reveals a wide variety of restaurants and bars within close walking distance of the center. So the message seems to be clear: for those that attended in 2010 and are expecting more of the same, worry not – there’s plenty more to see, do, eat and drink close to the convention center this time. (TJL)

Stay tuned – Don’t forget you can keep up-to-date with the latest INTA Annual Meeting news and insights on our Twitter feed.

Adam Houldsworth

Author | Life sciences reporter

[email protected]

Adam Houldsworth