BulletinU.S. District Court Upholds Universities’ Common-Law Rights in School Colors Association News

Member Spotlight: Peter Giddens

Roundtables: Chile, Colombia, Dominican Republic

Features

U.S. Counterfeiting Act Closes Loopholes and Strengthens Penalties

Law & Practice

ETHIOPIATrademark Registration and Protection Proclamation Issued

GERMANYFinding of Acquired Distinctiveness Based on General Experience in Auto Market

JAPANCollective Trademarks Now Available to Associations

UNITED ARAB EMIRATESChange of Offi cial Weekend

UNITED STATESPublic Attendance at TTAB Hearings

Precedent Elusive in Handbag Monogram Case

INTA Bulletin Board

Welcome New Members

The Voice of the International Trademark Association October 1, 2006 Vol. 61, No. 18

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IN THIS ISSUE

In Board of Supervisors of Louisiana State Uni-versity v. Smack Apparel Company, No. 04-1593 versity v. Smack Apparel Company, No. 04-1593 versity v. Smack Apparel Company(E.D. La. July 18, 2006), the U.S. District Court for the Eastern District of Louisiana held that Smack Apparel and its principal had violated the common law trademark rights of Louisiana State University (LSU) and other univer-sities by selling sportswear bearing the color schemes and logos of those institutions.

Smack Apparel sold shirts bear-ing the colors of the plaintiff universities, including shirts with references to games in which those universities played and teams against which they had played. For example, a shirt in LSU colors said “Beat Oklahoma!” on one side and “2003 College Football National Championship” on the other. LSU’s football team had played against Oklahoma for the 2003 college football national championship. Another shirt, in the colors of the University of Oklahoma, refer-enced the number of college football national championships won by that university.

“There is no question that a color scheme may be protectable as a trademark,” the court wrote. “It is undisputed that the universities

4

have used their color combinations for a lengthy period of time. [They] market scores of items bear-ing their color schemes, logos, and designs, and sales of those items exceed tens of millions of dol-lars.” The court found that the defendants had in-tentionally capitalized on the good will associated

with these marks by copying the plaintiffs’ color schemes and logos, and that such copying was likely to cause confusion among consumers.

The court rejected the defendants’ argu-ment that the color schemes were func-tional when applied to clothing, noting that the clothing was purchased because consumers wished to show support for a university by display-ing that school’s col-

ors and insignia. It also rejected Smack Apparel’s nominative fair use argument, holding that the defense was not available when a likelihood of confusion had been shown. Finally, the court rejected the defendants’ argument of laches, fi nd-ing that their intentional copying of the plaintiffs’ color schemes constituted bad faith and prevented them from using laches as a defense.

Contributor: Kevin W. Grierson, Willcox & Savage P.C., Norfolk, Virginia; Verifi er: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan

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A Louisiana State University (LSU) t-shirt available on the school’s website (www.lsu.edu)

5

2007 INTA Membership Renewal Has Begun!Please check your mailbox and email for your

INTA membership renewal notice.

Renew your membership online at www.inta.org, or mail or fax your renewal payment

to INTA’s Customer Service Department.

Questions? Email membershiprenewal@inta.org, call +1-212-768-9887, x1725 or fax +1-212-768-1234.

Representing Trademark Owners Since 1878October 1, 20062

Association NewsAssociation NewsPeter Giddens is a partner at Lang Michener LLP in Toronto. A member of the fi rm’s intel-lectual property group, Mr. Giddens provides advice concerning the acquisition, development, clearance, management, protection, enforce-ment and licensing of intellectual property, with an emphasis on trademark, copyright and domain name issues. He is also a registered trademark agent with the Canadian Intellectual Property Offi ce (CIPO).

Last year, Mr. Giddens received an INTA Volunteer Service Award for the Advancement of Trademark Law in recognition of his work as the principal drafter of INTA’s response to the CIPO’s request for comments on proposed revisions to the Canadian Trade-marks Act. Mr. Giddens coordinated submissions from various INTA committees and led the drafting of INTA’s response, which addressed such topics as Canadian implementation of the Trademark Law Treaty and the Madrid Protocol, potential changes to use requirements and protection of nontraditional and well-known marks.

Mr. Giddens is currently a member of the Online Trademark Use Subcommittee, which recently completed a report and proposed board resolution concerning the doctrine of initial interest confusion. The subcommittee is now considering keyword and pop-up advertising; use of domain name spinners by registrars, domain tasters and traffi c aggregators; and what constitutes suffi cient online use of a trademark.

How many years have you been practicing in the trademark fi eld?

I have been practicing in the trademark fi eld for seven years. After articling at Lang Michener in 1997–98, I was called to the bar and joined the fi rm as an associate lawyer in 1999.

Why did you begin working in the trade-mark fi eld, and what was your fi rst job in the fi eld?

My undergraduate education focused on biol-ogy. When I realized that I did not want to work in a lab the rest of my professional life, I looked for career alternatives that would let me use my science background. A patent agent suggested patent law to me as a possibility, and that is what I initially intended as the focus of my practice.

When I joined the fi rm as an associate in 1999, there were a few people in our trademark practice group that were away on maternity leave, and consequently there were lots of trade-

Member Spotlight: Peter Giddensmark fi les to keep me busy. I soon realized that trademark law was what I was truly interested in, and that is what has dominated my practice since. All those mornings sitting at the kitchen table as a kid trying to read the cereal box and wondering what the ® and ™ symbols really meant—who knew that’s what I’d be doing for a living?

For how long have you been involved with INTA activities?

I began attending INTA activities at the 123rd

Annual Meeting in San Francisco in 2001 and have attended all Annual Meetings since. I fi rst participated in a committee in 2003, when I was a member of the Asia-Pacifi c Legislation Subcom-mittee of the Legislative Analysis Committee, which I was on until 2005.

What INTA activity or committee you have particularly enjoyed working on, and why?

In addition to working on the INTA submissions to CIPO regarding the proposed modernization of the Trade-marks Act, I enjoyed working on the INTA submissions regarding the proposed amend-ments to the procedures before the Canadian Trade-Marks Opposition Board. It is interesting to get views from other subcommittees on various is-sues, and it is particularly enlightening to get sug-gestions for changes to Canadian trademark law from members who practice in other jurisdictions. Also, our Online Trademark Use Subcommittee is looking at some really interesting topics right now.

Do you have any favorite trademarks? If so, which ones?

Apart from any of our clients’ trademarks, my fa-vorite trademark would have to be GOOGLE—I smile every time I hear it. I remember my second-grade teacher asking the class one day what was the biggest number we could think of. When she told us there was a number written as 1 followed by 100 zeros called “googol,” we were not only as-tonished by the size of the number, but I thought it was one of the funniest (and therefore best) words I’d ever heard. Even better was her story that the number was named by a kid, the nephew of a mathematician, who was about the age of the kids in our class. That left a very big impression on me. So years later when Google Inc. launched its search engine, I was hooked—the positive as-sociation between GOOGLE and my memory of the story of the fantastically huge number named by a whimsical kid drew me in immediately.

Peter Giddens, Lang Michener LLP, Toronto

SEE PETER GIDDENS ON NEXT PAGEPETER GIDDENS ON NEXT PAGEPETER GIDDENS

www.inta.org Vol. 61, No. 18 3

Are you interested in joining the INTA Panel of Neutrals?

If you have at least 15 years of trademark experience, OR ten years of trademark experience and have a degree or certifi cation in mediation/arbitration (issued by a university, chamber of commerce, bar association, respected ADR institution or court), OR substantial ADR experience, apply now! The deadline to apply is October 27, 2006. Please visit www.inta.org/go/adr for more information and the Panel of Neutrals application.

Questions? Please contact Simran Daryanani

at sdaryanani@inta.org or +1-212-642-1770

If you were not practicing law, what would you be doing?

Working in a second-hand record store. Maybe someday.

What is the best aspect of your practice?

I enjoy meeting and working with people from all over the world, and certainly INTA has provided a fantastic opportunity in that regard. I also enjoy the feeling I get when I’m in a store, at a sporting event or watching a television commercial and I see, there in its natural habitat, a trademark that I’ve worked hard to protect. It gives me a sense of accomplishment.

Are there any particular areas on which you think INTA should focus in the future?

I think INTA should focus on nontraditional trademarks. Although nontraditional trademarks are becoming more popular in advertising campaigns and there is increased client interest in formally protecting such marks, many countries appear reluctant to accommodate the reg-istration of nontraditional marks. INTA can play an important role in promoting the harmonization of registration procedures, and in pro-viding standards to ensure that such marks are suffi ciently identifi able and capable of being documented in a reasonably accessible format.

By: Kelly J. Garrone, McCarter & English, LLP, Newark, New Jersey, USA

Peter Giddens CONTINUED FROM PAGE 2

Roundtables: Chile, Colombia, Dominican RepublicOn July 12, Pellerano & Herrera hosted the roundtable “Inter-national and Local Litigation Procedures for Trademark Matters” (above right) in Santo Domingo, Dominican Republic. Topics covered included changes in IP practice brought about both by the new penal code and by the Central American Free Trade Agreement.

Cavelier Abogados hosted “Ambush Marketing” (below right), a roundtable held August 1 in Bogotá, Colombia. Attendees included government representatives from the Superintendence of Industry and Commerce, which oversees trademark and competition law.

On August 3, “Litigation for Trademark Attorneys” (below) was the subject of a roundtable in Santiago, Chile. Sargent & Krahn hosted the event, which drew attendees including the head of the Chilean Trademark Offi ce.

Representing Trademark Owners Since 1878October 1, 20064

FeaturesFeaturesU.S. Counterfeiting Act Closes Loopholes and Strengthens PenaltiesCounterfeiting—the act of deliberately using a false mark that is identical to or substantially indistinguishable from a registered mark—pervades all industries, including pharmaceuticals, auto-mobile parts, airplane parts, baby formulas, batteries, children’s toys, golf equipment, handbags and uniforms. Counterfeit goods victimize the manufacturer and expose consumers to substandard products and the risks of unsafe products. Also, counterfeit goods have a detrimental effect on the job market.

According to U.S. Customs and Border Protection, pirated and counterfeit goods are estimated to account for approximately USD 512 billion, or roughly 7 percent of global trade, with the amount of counterfeit products on the market steadily rising. In 2005, more than USD 93 million worth of counterfeit goods was seized in the United States alone.

In an effort to curtail this rise, the Stop Counterfeiting in Manufactured Goods Act was enacted in the United States on March 16, 2006 (see INTA Bulletin Vol. 61 No. 7 April 1, 2006). The Act, which is designed to strengthen the laws against dealing in counterfeit goods, amends the criminal counterfeiting statute, 18 U.S.C. § 2320, and accomplishes two main functions: (1) clos-ing the “counterfeit labeling” loophole and (2) strengthening the penalties against counterfeiters.

The existence of the “counterfeit labeling” loophole was estab-lished in United States v. Giles, 213 F.3d 1247, 1250-51 (10th Cir. United States v. Giles, 213 F.3d 1247, 1250-51 (10th Cir. United States v. Giles2000). In Giles, the defendant specialized in the sale of designer Giles, the defendant specialized in the sale of designer Gileslook-alikes, such as handbags, belts and watches. The items at issue in the case were wholesale patch sets, consisting of a leather patch and a gold medallion, both of which bore the Dooney & Bourke logo, and a leather strap used to attach the medallion to a purse or piece of luggage. With the patch attached, an object appeared to have been made by Dooney & Bourke. The court dismissed the indictment against the defendant, fi nding that the act of traffi cking in counterfeit labels that were unattached to any goods did not fall under Section 2320, because the statutory language prohibits use of a counterfeit mark only in connection with goods. The court

determined that the patch sets could not be interpreted as goods within the meaning of the statute.

In order to close this loophole, the Act prohibits not only traf-fi cking in goods or services, but also intentionally traffi cking or attempting to traffi c in labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hang-tags, documentation or packaging. The new defi nition of counter-feit mark encompasses a spurious mark used in connection with traffi cking in any labels, patches, stickers, wrappers and the like.

Furthermore, the law’s drafters included a provision clarifying that nothing in the Act entitles the United States to bring a crimi-nal cause of action for the repackaging of genuine goods or services not intended to deceive or confuse. This provision would permit the practice of combining legitimate brand-name merchandise into gift sets.

The Act also strengthens penalties against counterfeiters. Contrary to prior law, courts must now order the destruction of all counterfeit products and labels seized as a part of a criminal investigation. In addition, convicted counterfeiters must turn over their profi ts and equipment used to make the counterfeit goods, a requirement designed to prevent counterfeiters from quickly re-suming operations. Finally, those convicted of counterfeiting must pay restitution to the mark’s owner.

The Act will also aid in global enforcement of counterfeiting. Prior to the amendments, U.S. trade negotiators would not seek strong counterfeiting enforcement provisions in trade agreements because the U.S. law did not have such provisions. Now, negotia-tors will be able to consider stronger forfeiture and destruction provisions in trade agreements with other countries. In advocating for the passage of the Act, Congressman Joe Knollenberg stated that “by improving our own law, Congress will empower our trade negotiations to press for stronger anti-counterfeiting provisions in other countries.”

By: Valerie Verret, Baker Botts L.L.P., Dallas, Texas, USA

Legal Ethics and Professionalism for Trademark Practitioners E-Learning Program (with CLE)

October 22 – November 4, 2006

There’s still time to register for this valuable e-learning program and earn your ethics CLE credits!

This convenient, interactive course is geared specifi cally to trademark lawyers and designed to be relevant to issues faced in your profession such as client confl icts, communications and trademark clearance.

Top reasons to register:

• Learn how to resolve ethical situations that affect your everyday trademark law practice

• Obtain quality ethics education and fulfi ll your ethics CLE requirement at your convenience

• Gain knowledge on your own time schedule from your home or offi ce

Visit www.inta.org/go/legalethics to register and for more information.

www.inta.org Vol. 61, No. 18 5

Law and PracticeLaw and Practice

The Trade Mark Registration and Protection Proclamation (Proclamation No. 501/2006) was issued July 7, 2006, in the Federal Negarit Gazeta of the Federal Democratic Repub-Federal Negarit Gazeta of the Federal Democratic Repub-Federal Negarit Gazetalic of Ethiopia.

The new Proclamation brings the Ethiopian trademark system in line with the registration systems of most other jurisdictions. Although the Proclamation is in force, regula-tions have not yet been published, and so the Ethiopian Intellectual Property Offi ce (EIPO) is unable to implement the Proclamation’s provisions at this stage. Regulations are expected to be published within the next six months.

The current trademark registration system in Ethiopia is a unique, hybrid cautionary-notice system. Cautionary notices may be published only with the EIPO’s authorization. Once a cautionary notice is published, and in the absence of op-position, the EIPO will assign the trademark a number and issue a Trade Mark Deposit Certifi cate. Trademarks are valid for a period of six years, after which republication under the same number (renewal) is required.

Except for the term of protection, anticounterfeiting mea-sures and a few other provisions, the Proclamation is very similar to the draft discussed in INTA Bulletin Vol. 61 No. 9 INTA Bulletin Vol. 61 No. 9 INTA Bulletin(May 1, 2006).

Under current procedure, a cautionary notice will be published only if the application is accompanied by a cor-responding registration from the applicant’s home country or by a corresponding registration in any other jurisdiction. The highlight of the new Trade Mark Proclamation is that a trademark application need not be based on a corresponding registration. It is unclear at this stage, however, whether the regulations will require such a corresponding registration to be lodged.

The Proclamation defi nes “trademark” as any visible sign capable of distinguishing goods or services of one person from those of other persons. “Trademark” encompasses words, designs, letters, numerals, colors or shapes of goods or their packaging, or combinations thereof.

The draft proclamation proposed a registration term of ten years. As issued, however, the Proclamation states that the term of protection will be seven years.

The new Proclamation provides for the effective enforce-ment of trademarks. Unfortunately, the anticounterfeiting and customs provisions have been largely reduced. The draft provided fairly broad powers to customs offi cials, but the issued Proclamation has narrowed these signifi cantly.

All current trademark registrations will have to be re-submitted for registration within 18 months from the date the Proclamation enters into force. As mentioned above, however, regulations have yet to be published; consequently, it is not possible for the EIPO to enforce the new Proclama-tion at this time.

Contributor: Tracy Rengecas, Spoor & Fisher, Pretoria, South Africa; Verifi er: Wossen T. Bokan, Teshome Gabre-Mariam Boka, Addis Ababa, Ethiopia

ETHIOPIA

Trademark Registration and Protection Proclamation Issued

JAPAN

Collective Trademarks Now Available to AssociationsA brief but important revision to the Trade Mark Law of Japan came into effect on September 1, 2006. The revision concerns the defi nition of parties eligible to fi le applications for collective trademarks under Article 7 of the Law. Before the revision, only aggregate corporations as defi ned under Section 34 of the Civil Code were allowed to register col-lective marks. This defi nition excluded certain associations. The revision broadens the defi nition of eligible applicants to allow associations with juridical standing not defi ned by Section 34 to register collective marks.

According to a spokesman at the Japanese Patent Offi ce, the revision was made in order to allow a broader spectrum of associations, such as nongovernmental organizations and chambers of commerce, to protect their marks. Importantly, this revision applies not only to domestic enti-ties but also to equivalent foreign legal entities, thereby giving foreign associations working in Japan more scope to secure protection for their identities.

Contributor: Jim Hughes, S. Soga and Co., Tokyo; Verifi er: Tomohiro Nakamura, Konishi & Nakamura, Nagoya

UNITED ARAB EMIRATES

Change of Official WeekendBeginning September 1, 2006, the offi cial weekend in United Arab Emirates is Friday and Saturday of each week instead of Thursday and Friday. This change was introduced with the objective of coming closer to the weekend vacation of Saturday and/or Sunday followed by most countries.

Interested parties should make note of this change, especially where there are deadlines.

Source: Council of Ministers of United Arab Emirates; Contributor: Abdelazim Hassan, Allied IP Attorneys, Dubai

UNITED STATES

Public Attendance at TTAB HearingsOn July 25, 2006, the U.S. Patent and Trademark Offi ce (USPTO) posted in the Offi cial Gazette guidelines for public attendance at Trade-Offi cial Gazette guidelines for public attendance at Trade-Offi cial Gazettemark Trial and Appeal Board (TTAB) and Board of Patent Appeals and Interferences hearings.

Notice of hearings open to the public is posted on the TTAB website at www.uspto.gov/web/offi ces/dcom/ttab/index.html. The number of seats available for the public varies based on the hearing room, ranging from 5 to 55. Public attendees are admitted on a fi rst-come, fi rst-served basis. Reservations will not be accepted.

Public hearing information may be found at www.uspto.gov/web/of-fi ces/dcom/gcounsel/public_hearing_info.html

Contributor: Jennifer A. Van Kirk, Lewis and Roca, Phoenix, Arizona; Verifi er: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, DC

Representing Trademark Owners Since 1878October 1, 20066

Law and PracticeLaw and PracticeGERMANY

Finding of Acquired Distinctiveness Based on General Experience in Auto MarketDue to certain technical requirements, car manufactures are somewhat limited in design choices. However, certain manu-facturers do have characteristic designs and trims that make it possible to identify a car’s manufacturer simply on the basis of the car’s appearance. In its recently published decision of December 15, 2005 (Docket No. I ZB 33/04), the German Federal Supreme Court had to decide whether consumers could view the Porsche Boxster’s design as indicating source.

The German Federal Patent Court had held in earlier proceed-ings (decision of October 13, 2004, Docket No. 28 W (pat) 102/00) that the Porsche Boxster’s body design was not capable of registration. The possibilities for car designs are limited because of technical requirements, the court stated, and manufacturers must be able to use the broadest possible range of designs without being hindered by their competitors’ trademark rights. Car body designs must be kept free for public use.

In the Federal Patent Court’s opinion, the Porsche Boxster could not be said to conform to the characteristic and well-known Porsche design (other than the front part), which ruled out the possibility that consumers would associate the Boxster with Porsche simply on the basis of the Boxster’s body design. In addi-tion, the considerable sales and media coverage did not establish acquired distinctiveness, because the car was always offered and advertised under the model name Boxster. The media made no mention that the body of the Porsche Boxster was unique among the usual range of car designs.

The Federal Supreme Court concurred with the Federal Patent Court that the depiction of the car’s body merely illustrated a characteristic of the car, namely its design. The Supreme Court said that consumers would recognize a design as indicating origin only if the design did not attribute the design to a specifi c func-tion of the product or part of an effort to achieve an aesthetically appealing design.

Ultimately, the Federal Supreme Court found that the Porsche Boxster’s design had indeed established itself in trade as a trade-mark, despite the short time lapse between the market launch of the Porsche Boxster (1996) and the fi ling of the contested trademark (1997). The Supreme Court did not suggest that the form of the Porsche Boxster generally conformed to the char-acteristic and well-known Porsche design. Rather, it stated that the body displayed independent, non-technically-based charac-teristics. Since consumers are not unaccustomed to perceiving a car’s design as indicating source, it may not take long after a new model’s introduction for its characteristic design features to be-come associated with the manufacturer. This was especially so for models popular in Germany. The Court did not base its holding on market surveys or the like; instead, the decision was based on general experience in attributing designs to specifi c manufacturers in the automobile market.

Contributor: Martin Viefhues, Linklaters, Cologne; Verifi er: Wolfgang Festl-Wietek, Viering, Jentschura & Partner, Munich

London, United Kingdom

Topic: ADR in Trademark Disputes –

A View from the Patents County Court and the Role the Patent Office Could Play

Date:

October 18, 2006

Hosts:Mary Bagnall, Mayer, Brown, Rowe & Maw LLP

Charters Macdonald-Brown, Redd Solicitors LLP

Location of Roundtable:Mayer, Brown, Rowe & Maw LLP

11 Pilgrim Street, London EC4V 6RWUnited Kingdom

For more information, email promotionresponse@mayerbrownrowe.com.

October Roundtables

Visit the Education & Training section at www.inta.org/go/education

for more information.

Taipei, Taiwan

Topic: Overview of Border Control of Intellectual

Property Rights Infringement

Date: October 13, 2006

Hosts:Joseph Yang and Arthur Li, Lee & Li

Location of roundtable:The Landis Taipei Hotel

41, Min Chuan East Road, Section 2Taipei, Taiwan 104, R.O.C.

For more information, contact Judy Wang at trademark@leeandli.com

www.inta.org Vol. 61, No. 18 7

October Roundtables

Topic: Creative Solutions for Trademark DisputesOctober 2 – 13, 2006 | Various U.S. cities

Held in multiple U.S. cities, these roundtables are designed to fit into your busy schedule.

Trademark Administrators Roundtable

Topic: Working Smarter – Taming the Time Management BeastOctober 16 – 27, 2006 | Various U.S. cities

Visit the Education & Training section at www.inta.org/go/education to register and for more information.

UNITED STATES

INTA Bulletin BoardShirley Kwok has joined Bird & Bird as partner in charge of IP Portfolio Management Shirley Kwok has joined Bird & Bird as partner in charge of IP Portfolio Management Shirley Kwokin Hong Kong and China. She was formerly with Vivien Chan & Co.

Nancy A. Miller has joined Fogler, Rubinoff LLP of Toronto, as a partner. She was formerly with Kvas Miller Everitt, where she was a founding partner.

Stephen J. Quigley has joined the New York fi rm Ostrolenk, Faber, Gerb & Soffen LLP as of counsel in the trademark group.

The “INTA Bulletin Board” announces job changes or other signifi cant career news about individuals who belong to INTA organizations. To submit an item for consideration, send a brief message to bulletin@inta.org.

Welcome New MembersAccura Advokataktieselskab, Hellerup, Denmark; Adres Patent TM & Intellec- Hellerup, Denmark; Adres Patent TM & Intellec- Hellerup, Denmark;tual Property, Istanbul, Turkey; Afric-Propi-Conseils, Istanbul, Turkey; Afric-Propi-Conseils, Istanbul, Turkey; Ouagadougou, Burkina Faso; Akin, Gump, Strauss, Hauer & Fekd LLP, Taipei, Taiwan; American Banking Association, Washington, DC, US; Beirne,Maynard & Parsons, LLP, Houston, TX, US; Checkpoint Systems Inc., Thorofare, NJ, US; DLA Piper Middle East LLP,Thorofare, NJ, US; DLA Piper Middle East LLP,Thorofare, NJ, US;Dubai, United Arab Emirates; DW Partners, Seoul, South Korea; Havip Intellectual Property Law Firm, Hanoi, Vietnam; Kuwait Mark Patent and Trademark Agent, Safat, Kuwait; Lovells International Law Firm, Beijing,Safat, Kuwait; Lovells International Law Firm, Beijing,Safat, Kuwait; China, People’s Republic; MarkVen S.C., Caracas, Venezuela; Maynard, Cooper & Gale, P.C., Birmingham, AL, US; Muscat Intellectual Property LLC, Muscat, Oman; Pendleton, Friedberg, Wilson and Hennessey, P.C., Denver, CO, US; Puchberger, Berger & Partner, Denver, CO, US; Puchberger, Berger & Partner, Denver, CO, US;Wien (Vienna), Austria; Realogy Corporation, Parsippany, NJ, US; Sara Lee Corpo-ration, Downers Grove, IL, US; Schuchat, Herzog & Brenman, LLC,Downers Grove, IL, US; Schuchat, Herzog & Brenman, LLC,Downers Grove, IL, US; Denver, CO, US; Silva & Associates, D.F., Mexico; ST&P Attorneys and Agents, D.F., Mexico; ST&P Attorneys and Agents, D.F., Mexico; Dubai, United Arab Emirates; Stanford University, Stanford, CA, US; Stringer Saul, London, UK; Stryker Orthopaedics, Mahwah, NJ, US; The Law Firm of ISAM A.E.HASSAN & Mahwah, NJ, US; The Law Firm of ISAM A.E.HASSAN & Mahwah, NJ, US;Associates, Khartoum, Sudan; The Lawcrest, Lagos, Nigeria; Wyndham Worldwide Corporation, Parsippany, NJ, US; Wynn Resorts, Parsippany, NJ, US; Wynn Resorts, Parsippany, NJ, US; Las Vegas, NV, US; Xilinx, Inc., Las Vegas, NV, US; Xilinx, Inc., Las Vegas, NV, US;San Jose, CA, US

UNITED STATES

Precedent Elusive in Handbag Monogram CaseIn a case involving luxury handbag makers Louis Vuitton Malletier (LV) and Dooney & Bourke (DB), the Court of Appeals for the Second Circuit reversed the lower court’s denial of a preliminary injunction for LV (“Vuitton Denied Protection,” INTA Bulletin Vol. 59 No. 20, INTA Bulletin Vol. 59 No. 20, INTA BulletinNovember 1, 2004), based on an almost identi-cal appeal involving LV and retailer Burlington Coat Factory. Louis Vuitton Malletier v. Dooney & Bourke, Inc., No. 04-4941-cv (2d Cir. June 30, 2006).

LV introduced an updated version of its fa-mous Toile Monogram in 2002. The new Toile, called Multicolore, featured a modifi cation of the original Toile Monogram in 33 different colors on a white or black background. In late 2003, DB introduced its “It-Bag” collection, which displayed its well-known DB monogram in bright colors set against a white background. In 2004, LV brought a trademark infringement and dilution action against DB. Although the district court found that LV’s mark was inherently distinctive and had acquired secondary mean-ing, it held that LV did not show a likelihood of confusion or dilution. LV appealed.

In fi nding no likelihood of confusion, the court relied on its decision in Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., No. 04 Civ. 2644 (RMB)(FM) (S.D.N.Y. May 24, 2004), where it conducted a side-by-side comparison of the marks at issue and found no likelihood of confusion. The Burlington case—which involved the same LV mark, the Multicolore—was on appeal when the district court issued its decision in Dooney & Bourke.

In 2005, the court of appeals vacated the low-er court’s decision in Burlington and remanded Burlington and remanded Burlingtonwith instructions to reconsider the marks, not in a side-by-side comparison but in the context of the marketplace and the type of confusion alleged. Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005). Accordingly, precedent for the lower court’s fi nding in Dooney & Bourke no Dooney & Bourke no Dooney & Bourkelonger existed, and the Second Circuit therefore reversed. The Dooney & Bourke case gave the Dooney & Bourke case gave the Dooney & BourkeSecond Circuit another opportunity to reinforce the basic trademark principle that a side-by-side comparison is not proper when conducting a likelihood of confusion analysis.

Contributor: Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington, D.C.; Verifi er: Jessica S. Sachs, Harness, Dickey & Pierce, P.L.C., Troy, Michigan

International Trademark Association655 Third Avenue, 10th FloorNew York, NY 10017 USA+1-212-768-9887 • f: +1-212-768-7796www.inta.org • info@inta.org

October 2 – 13, 2006Roundtable: Creative Solutions for Trademark DisputesVarious U.S. cities

October 2 – 28, 2006E-Learning: Trademark Basics (with CLE) and Madrid Protocol Basics (with CLE)Anywhere via the Internet

October 9 – 28, 2006E-Learning: TTAB Basics (with CLE)Anywhere via the Internet

October 16 – 27, 2006Roundtable: Working Smarter—Taming the Time Management BeastFor trademark administrators and paralegalsVarious U.S. cities

October 22 – November 4, 2006E-Learning: Legal Ethics and Professionalism for Trademark Practitioners (with CLE)Anywhere via the Internet

November 19 – December 16, 2006Trademark Basics with Exam for Trademark AdministratorsAnywhere via the Internet

December 4 – 5, 2006IP Rights Enforcement: Protecting Product Configuration in Europe and BeyondRome, Italy

INTA BULLETIN COMMITTEETo contact a member of the INTA Bulletin Committee, send an email to the managing editor at bulletin@inta.org.

ChairMary DeLongis, Nautica Enterprises, Inc.

Vice ChairKay Rickelman, Spoor & Fisher

Feature Articles: Member Benefi ts & ServicesPatrick Gallagher, Fulbright & Jaworski L.L.P.

Feature Articles: Policy & PracticePatricia Wilczynski Brozek, Wilczynski Brozek Law

Law & Practice: AmericasJanice Housey, Roberts, Mlotkowski & Hobbes, P.C.

Law & Practice: Asia-Pacifi cLindsay Esler, Deacons

Law & Practice: Europe and Central AsiaClaus Eckhartt, Bardehle Pagenberg Dost Altenburg Geissler

Law & Practice: Middle East and AfricaStephen Goldberg, Spoor & Fisher

STAFFExecutive DirectorAlan C. Drewsen, International Trademark Association

Director, Publishing Randi Mustello, International Trademark Association

Managing Editor, INTA BulletinJames F. Bush, International Trademark Association

Associate Editor, INTA BulletinJoel L. Bromberg, International Trademark Association

Designer Katie Frichtel, Monkeys with Crayons Designs

OFFICERS & COUNSELPresidentPaul W. Reidl, E. & J. Gallo Winery

President ElectDee Ann Weldon-Wilson, Exxon Mobil Corporation

Vice PresidentRhonda Steele, Mars, Incorporated

Vice PresidentRichard Heath, Unilever P.L.C.

TreasurerHeather C. Steinmeyer, Blue Cross and Blue Shield Association

SecretaryGerhard R. Bauer, Daimler-Chrysler AG

CounselDavid H. Bernstein, Debevoise & Plimpton LLP

INTA Department Email AddressesExecutive Director: executivedirector@inta.orgAdministration & Finance: adminfi nance@inta.org Customer Service: customerservice@inta.orgPrograms: meetings@inta.orgINTA Bulletin: bulletin@inta.orgJob Bank: jobbank@inta.orgMembership: membership@inta.orgPublications: publications@inta.orgPublic Policy: tmaffairs@inta.orgPublic Relations: publicrelations@inta.orgRoundtables: roundtables@inta.orgSponsorship & Exhibitions: sponsorship@inta.orgThe Trademark Reporter®The Trademark Reporter®The Trademark Reporter : tmr@inta.org

© 2006 International Trademark Association

Mark Your Calendars

Although every effort has been made to verify the accuracy of items carried in this

newsletter, readers are urged to check independently on matters of specifi c concern or

interest. The INTA Bulletin primarily relies on members of the INTA Bulletin Committee

and INTA staff for content but also accepts submissions from others. The INTA Bulletin

Editorial Board reserves the right to make, in its sole discretion, editorial changes to

any item offered to it for publication.

Additional Details About INTA’s EventsFor a full description and to register, visit www.inta.org.

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