INTABulletinThe Voice of the International Trademark Association

AssociationNewsAssociationNews

June 1, 2014 Vol. 69 No. 10

In This Issue

Law&PracticeArgentina 8Belgium 8Benelux 9Egypt 9Iraq 9Jordan 9Saudi Arabia 10United States 10, 11, 12

FeaturesThe 2014 World Cup Brings the 6 Ambush Marketing Challenge to Brazil

AssociationNewsWelcome New Members 2

Volunteer Spotlight Margaret Au 5 Leticia Provedel 5

See “Annual Meeting” on page 4

See “Brief” on page 3

Hong Kong Annual Meeting Signals Brand Interest in Asia

INTA Submits First Brief to a Court in JapanINTA’s Amicus Committee has submitted an opinion to The Supreme Court of Japan in a case involving the LADY GAGA trademark, which is owned by Ate My Heart, Inc. The Association believes the Court should accept Ate My Heart’s petition for appeal and overturn the final appeal of the IP High Court decision (Case No. 2013 (Gyo-Ke) 10158), which affirmed a decision of the Japan Pat-ent Office (JPO) rejecting the mark (Appeal No. 2011-27961).

The IP High Court agreed with the JPO’s assessment that Ate My Heart Inc.’s mark LADY GAGA lacked distinctiveness in relation to “phonographic records; downloadable music files; exposed cinematographic films; pre-recorded video discs and video tapes” in Class 9, and would be misleading as to the quality (content) of goods if the mark were used for goods unrelated to Lady Gaga.

INTA argues that this is an incorrect as-sessment, for the following reasons, among others:

1. LADY GAGA does function as a badge of origin for Class 9 products and is not descriptive in that the mark does not

demonstrate any particular quality (con-tent) or other characteristics of the goods.

2. The decision would raise questions of consistency with existing trademark registrations. “For example, it is a known fact that the famous trademarks in the fashion industry come from the name of the founder and the designer of the brand,” said the brief. “However, these marks have not been rejected for the reason that the mark would mislead con-sumers about the quality (content) of the goods. There is no legitimate reason to treat the name of a singer and the name of a designer of a brand differently, and

INTA’s first Annual Meeting to be held in Asia closed with 8,605 total attendees, significantly exceeding the Association’s expectations and signifying the importance of the region to INTA members.

During the Annual Meeting, INTA signed two separate agreements aimed at strengthening relationships with key organizations in Asia. On May 11, INTA President Mei-lan Stark signed a Cooperation Agreement with the Quality Brands Protection Committee (QBPC) that will serve to deepen collaboration between the two organizations. The following day, Ms. Stark met with Hong Kong Intellectual Property Depart-ment Director Peter Kam-fai Cheung to sign a Memorandum of Understanding (MOU) with the office, which will serve as a starting point for increased interaction and cooperation.

The Annual Meeting saw the most attendees from Asia ever, with a final count of 2,462 from the East Asia and Pacific region. Several ses-sions were conducted in Chinese, and the INTA Daily News for the first time featured content written in both English and Chinese. This trend will continue as the Association works toward meeting its Strategic Goal of international expansion in the coming years.

A record number of government offices and representatives also attended this year’s meet-

INTA President Mei-lan Stark welcomes Annual Meeting attendees with a traditional Chinese Lion Dance at the 2014 Annual Meeting Opening Ceremonies.

June 1, 2014 Vol. 69 No. 102

AssociationNews

Although every effort has been made to verify the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest. The INTA Bulletin 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. For permission to reproduce INTA Bulletin articles, send a brief message with the article’s name, volume and issue number, proposed use and estimated number of copies or viewers to bulletin@inta.org. INTA Bulletin sponsorships in no way connote INTA’s endorsement of the products, services or messages depicted therein.© 2014 International Trademark Association

INTA Bulletin CommitteeTo contact the INTA Bulletin Committee, email bulletin@inta.org.

ChairBarbara Sullivan, Henry Hughes

Vice Chair Liisa Thomas, Winston & Strawn LLP

Co-Chairs, Features SubcommitteeElizabeth Buckingham, Dorsey & Whitney

Peter McAleese, AKRAN Intellectual Property Srl

Co-Chairs, Association News Subcommittee Barbara Barron Kelly, Corsearch

Katherine Dimock, Gowling, Lafleur, Henderson

Co-Chairs, Law & Practice: Asia-Pacific SubcommitteeChetan Chadha, Chadha & Chadha, An Intellectual Property Law Firm

Joseph Yang, Lee and Li, Attorneys at Law

Co-Chairs, Law & Practice: Europe & Central Asia Subcommittee Mary Bleahene, FRKelly

Thomas Mudd, Zeiner & Zeiner

Co-Chairs, Law & Practice: Latin America & the Caribbean SubcommitteeMartín Chajchir, Marval, O’Farrell & Mairal

Carlos Corrales-Azuola, Corrales Core IP

Chair, Law & Practice: Middle East & Africa SubcommitteeGhaida Ala’Eddein, Saba & Co. IP

Co-Chairs, Law & Practice: United States & Canada SubcommitteeRobert Felber, Waller, Lansden, Dortch & Davis

Catherine Hoffman, Mayback & Hoffman

INTA Bulletin Staff Chief Executive Officer Etienne Sanz de Acedo

Director, Marketing and Communications James F. Bush

Managing Editor, News & Policy Eileen McDermott

Senior Periodicals EditorJoel L. Bromberg

DesignerEric Mehlenbeck

INTA Officers & CounselPresident Mei-lan Stark, Fox Entertainment Group

President Elect J. Scott Evans, Adobe Systems Incorporated

Vice President Gabrielle Olsson Skalin, Inter IKEA Holding Services S.A.

Vice President Lucy Nichols, The Center for Responsible Enterprise and Trade (CREATe)

Treasurer Joseph Ferretti, PepsiCo, Inc./ Frito-Lay, Inc.

Secretary Ronald Van Tuijl, JT International S.A.

Counsel David Fleming, Brinks Gilson & Lione

Welcome New MembersBingham Sakai Mimura Aizawa, Tokyo, JapanBlakely, Sokoloff, Taylor & Zafman LLP, Sunnyvale, CA, USABMF Business Research & Consulting LLP, Almaty, KazakhstanBODEN l RECHTSANWAELTE, Düsseldorf, GermanyCabinet Beau De Lomenie, Paris, FranceCabinet Boettcher, Paris, FranceCanon Hongkong Company Limited, Kowloon, Hong Kong SAR, ChinaChambers of Prathiba M Singh, New Delhi, IndiaChoiTechAndLaw Professional Corporation, Ottawa, ON, CanadaChristensen Fonder P.A., Minneapolis, MN, USAClasis Law, New Delhi, Indiacloser2patents, Mumbai, IndiaCNH Industrial Belgium nv, Zedelgem, BelgiumConpak Intellectual Property Ltd., Tsim Sha Tsui, Kowloon, Hong Kong SAR, ChinaCorreduria Publica 67 DF, Mexico City, MexicoCOSTA & CRETA Law Firm, Bologna, ItalyCowell Clarke, Adelaide SA, Australia

DAIS Brand Strategy Group, Brisbane, QLD, Australia Danfoss Automatic Controls Management (Shanghai) Co., Ltd., Shanghai, ChinaDanielson Legal LLC, Cambridge, MA, USADDJ Law LDA, Maputo, MozambiqueDel Monte Foods, Inc., San Francisco, CA, USADEQI Intellectual Property Law Corporation, Beijing, ChinaDickinson Wright PLLC, Phoenix, AZ, USADonsa-Nkomo & Mutangi IP Attorneys, Harare, ZimbabweDoosan Corporation, Seoul, South KoreaDr. D. Graeser Ltd., Ra’anana, IsraelDuy Thai Attorney at Law, San Francisco, CA, USAEaton Peabody, Portland, ME, USAEdenred SA, Malakoff, FranceEikoh Patent Firm, Tokyo, JapanESSEN Patent & Trademark Office, Taipei City, TaiwanEsurance Insurance Services, Inc., San Francisco, CA, USAExperts for Intellectual Property, Cairo, EgyptFresenius Kabi Oncology Limited, Gurgaon, IndiaFRORIEP, Geneva, Switzerland

Guangdong Bongsen Intellectual Property Services Ltd., Guangzhou, ChinaGuangzhou Dearfriend Trademark Agency Co., Ltd., Guangzhou, ChinaGuillemin Flichy, Paris, FranceHAMILTON HARRISON & MATHEWS, Nairobi, KenyaHarvest IP Law LLP, Washington, DC, USAHarvesting International Intellectual Property Agency Ltd, Guangzhou, ChinaHORIZON IP Office, Hsin-Chu, TaiwanInnovation Counsel LLP, Santa Clara, CA, USAIntegra IP Ltd, Oxford, United KingdomIntelix Patent & Law Firm, Osaka, JapanInternational Baccalaureate Organization, Geneva, SwitzerlandINVENTUS Intellectual Property Group, Gangnam-Gu, South KoreaIP LEX GLOBAL SERVICES, Bangalore, IndiaIPEXC Limited, Central Hong Kong, SAR, ChinaIPP international Patent Firm, Shinagawa-Ku, JapanIPVOLUSI SDN BHD, Kuala Lumpur, MalaysiaIshikawa International Patent Office, Tokyo, Japan

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AssociationNewsISRAMARK, Tel Aviv, IsraelIsshiki & Co., Tokyo, JapanISTEK PATENT AND CONSULTANCY SERVICES LTD. CO., Istanbul, TurkeyJ.S. Gale & Co, Hong Kong, SAR, ChinaJasdev Chambers, Kuala Lumpur, MalaysiaJeff Norberg Law Office, Chicago, IL, USAKinoshita & Associates, Tokyo, JapanKokka & Backus, PC, Palo Alto, CA, USAKovari & Partners LLC, Budapest, HungaryKruk And Partners Law Firm, Warsaw, PolandLamosca Despacho Legal, San Juan, Puerto RicoLaw Office of Horst Vissel, Munich, GermanyLaw Office of Jeff Williams PLLC, Fort Worth, TX, USALaw Office of Sonja Schaeffler, Bad Iburg, GermanyLaw office of Vishal Katariya, Pune, IndiaLaw Offices Andrija S. Popovic & Milena S. Bosnjak, Belgrade, SerbiaLEEON Intellectual Property Law Firm, Seoul, South KoreaLex Counsel, Escazú, Costa RicaLEXGOAL IP, Beijing, ChinaLexington Avocats, Paris, FranceLombardi Molinari Segni, Milan, ItalyMagnusson, Riga, LatviaMagnusson, Warsaw, PolandMANSUY MARCHAL SAS, Hesingue, FranceMark & Law, Champagne Au Mont D’Or, FranceMARTINEZ ALVARADO & ASSOCIATES LAW CONSULTING, Lima, PeruMasembe, Makubuya, Adriko, Karugaba & Ssekatawa (MMAKS) Advocates, Kampala, UgandaMatsuda & Partners, Chiyoda-ku, Tokyo, JapanMatteo Scaglietti Avvocato, Modena, ItalyMcClure, Qualey & Rodack, LLP, Atlanta, GA, USAME HAAS, Paris, FranceMessner Reeves LLP, Denver, CO, USAMessrs. Ismail Sabri Wee & Wong, Kuala Lumpur, MalaysiaMessrs. Lim & Lok, Hong Kong, SAR, ChinaMetro AG, Düsseldorf, Germany

Mexico Trademarks Office, S.C., Monterrey, Mexico CityMGT–Marietti Gislon e Trupiano, Milan, ItalyMichael Buck IP, Taringa, QLD, AustraliaMonsalve Propiedad Intelectual, Santiago, ChileMori Hamada & Matsumoto, Tokyo, JapanMozmarcas, LDA, Maputo, MozambiqueMundi Marcas Propriedade Intelectual, Blumenau, BrazilNAS & Associates, Dubai, United Arab EmiratesNEIT Patent and Law Firm, Seoul, South KoreaNippon Menard Cosmetic Co., Ltd., Nagoya, JapanNissan Motor Co., Ltd, Kanagawa, JapanNokia Corporation, Espoo, FinlandOLAGUE, ZUNIGA Y MENDOZA S.C., Mexico City, MexicoOmega Insights, Gland, SwitzerlandPangrle Patent, Brand & Design Law, P.C., Burbank, CA, USAPartenaires PI, Neuilly-sur-Seine, FrancePatracode Services Pvt Ltd, Bangalore, IndiaPavlovych & Co., Kyiv, UkrainePedreschi & Pedreschi, Panama City, PanamaPinsent Masons, Paris, FrancePLUS PATENT LAW FIRM, Daejeon, South KoreaPrugneau-Schaub, Grenoble, FranceQianhui IP Attorneys, Jinan, ChinaQingdao Jiecheng Patent and Trademark Law Office, Qingdao, ChinaQuality Oracle Sdn Bhd, Petaling Jaya, MalaysiaR. A. DURÁN & ASOC. S.R.L., Ciudad Autónoma de Buenos Aires, ArgentinaRajani, Singhania & Partners, New Delhi, IndiaRealNetworks, Beijing, ChinaRigoberto Paredes & Asociados S.R.L., La Paz, BoliviaRohan Wallace Patent and Trademark Services, Bentley, WA, AustraliaRUBIO & ASSOCIATES, P.A., Miami, FL, USAS&I JAPAN, Tokyo, JapanSCHAEFER Patent Trademark & Design, Munich, GermanySchmit Chretien, Paris, FranceShanghai Sounding Intellectual Property Agency Co., LtD, Shanghai, ChinaSHANGHAI UNITED LAW FIRM, SHANGHAI, China

Shenzhen Talent Trademark Service, Shenzhen, ChinaSino-US Harmony Intellectual Property, Beijing, ChinaSINO-WIN LAW FIRM, Guangzhou, ChinaSonderhoff & Einsel (Beijing) Patent Agency Office, Beijing, ChinaStibbe, Amsterdam, NetherlandsStudio Brevetti Turini S.r.l., Firenze, ItalyStudio Legale e di Consulenza IP, Padua, ItalyStudio Legale Rinaldi e Associati, Rome, ItalySunshine Intellectual Property International Co., Ltd., Beijing, ChinaSureFire LLC, Fountain Valley, CA, USASutter Rechtsanwalt, Zurich, SwitzerlandSwaab Attorneys, Sydney, NSW, AustraliaSYNC Technology Law Group, Shanghai, ChinaTDIP & PARTNERS, Beijing, ChinaTecEsq Knowledge Solutions LLC, Dallas, TX, USATed Marr Intellectual Property (Hong Kong) Limited, Hong Kong, SAR, ChinaTeraiplaw, Seoul, South KoreaThe Donna Karan Company LLC, New York, NY, USATHE GOODWILL, Indore, IndiaTHENAM Patent & Law Firm, Gangnamgu, Seoul, South KoreaTLD Registry Limited, Dublin, IrelandToms Shoes Inc., Los Angeles, CA, USATroutman Sanders LLP, New York, NY, USAUniquelyIp, New Delhi, IndiaUniteck Patent & Law Associates, Seoul, South KoreaVan Benthem & Keulen N.V., Utrecht, NetherlandsVDLR Advocaten, Antwerpen, BelgiumVersus & Versus (aarpi), Paris, FranceVicki Heng Law Corporation, Singapore, ChinaWadeson Patent & Trade Marks Attorneys, Melbourne, VIC, AustraliaWadhwa Chambers, New Delhi, IndiaWells IP Law, LLC, Salt Lake City, UT, USAWooin Patent & Law Firm, Gangnam-gu, South KoreaWOOX Innovations Limited, Hong Kong SAR, China

INTA Submits First Brief in Japan Continued from page 1

consider that these names represent the quality (content) of the goods.”

The IP High Court’s decision raises concerns for INTA: “It suggests that the more famous an artist or other person well known in their industry is, the more likely an application to register that artist’s name as a trademark will be rejected if the application covers goods which are associated with the artist and, in-deed, if the application covers goods which are not associated with the artist.”

The ruling is also inconsistent with interna-tional practice, including in the USA., the UK, Korea and Australia. For instance, LADY GAGA is registered in Class 9 in the USA. and Australia with respect to the same goods, and in Canada for similar goods.

“An adverse decision in the Supreme Court would be a significant obstacle to musical artists who wish to enter Japan’s music market and could potentially harm the development of

the global music industry,” INTA concluded in its brief.

The full brief can be downloaded here. For more information, please contact INTA’s Manager, External Relations, Asia-Pacific, Seth Hays, at shays@inta.org. ■

June 1, 2014 Vol. 69 No. 104

AssociationNewsing. The Association was particularly excited to welcome high-level officials from China, such as Deputy Director of the Office of the National Leading Group on the Fight against IPR Infringement and Counterfeiting (NLGO) Mr. Li Zhenzhong. Mr. Li participated in a panel featuring Chinese government officials from several departments, which allowed

panelists and attendees to exchange ideas and pose questions.

The event was kicked off on Monday, May 11 with one of the most dynamic opening cere-monies in Annual Meeting history, featuring multimedia presentations by Ms. Stark and INTA CEO, Etienne Sanz de Acedo, a per-

sonal video welcome from film star Jackie Chan and a keynote address by Hong Kong’s Financial Secretary, Mr. John C. Tsang.

The June 15 issue of the INTA Bulletin will include a more detailed recap of the Annual Meeting, including photos. ■

Hong Kong Annual Meeting Signals Brand Interest in Asia Continued from page 1

USPTO Proposes Lower Fees for E-FilingsThe United States Patent and Trademark Office (USPTO) has proposed reducing the current fees for many new trademark appli-cations and most renewals of registrations, according to a USPTO press release. Under the Notice of Proposed Rulemaking, which has been posted on the Federal Reg-ister, the fee for a new application filed using the regular Trademark Electronic Applica-tion System (TEAS) application form will be reduced $50, from the current fee of $325 to $275 per class, if the applicant autho-

rizes email communication with the USPTO and agrees to file documents electronically during the prosecution of the application. The fee for a new application filed via the ex-isting TEAS Plus option will be reduced $50, from the current fee of $275 to $225 per class. The fee for an application for renewal of a registration submitted via TEAS will be reduced $100, from $400 per class to $300 per class. The filing fees for trademark applications and renewals filed on paper will remain unchanged, as will fees for applica-tions under the Madrid Protocol.

During the INTA Annual Meeting in Hong Kong, USPTO Commissioner for Trademarks Deborah Cohn said that the aim of the proposed reductions is to lower costs and promote efficiency for customers. INTA will submit comments prior to the close of the comment period on June 23, 2014.

Visit inta.org/2014TMAP

Steer your career through the evolving world of global trademark protection!Attend the 2014 Trademark Administrators and Practitioners Meeting and arm yourself with the latest practice and industry tips in managing global trademark portfolios. The program has been revamped and includes everything you’ll need to protect the brand owners who rely on you.

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TRADEMARK ADMINISTRATORS & PRACTIT IONERS MEETING

5

VolunteerSpotlight

Margaret Au’s passion for trade-marks was ignited by the legal battle to reclaim the legacy of the “greatest guitarist in rock music.” The firm in which she started her paralegal career represented Jimi Hendrix’s family in the 1990s. One day, while tracing the signature of Jimi Hendrix for a trademark application, Margaret recognized that trade-marks would be a positive area of practice. After years in litigation and though enjoying the adrenalin rush, she knew she was not inter-ested in trying to find fault in others. “I love the way a trademark can help a business establish an emotional connection with consumers,” Margaret says. “So I decided to fully immerse myself in trademarks.”

A Senior Trademark Paralegal at Microsoft Corporation, Margaret leads the trademark

license practice and is a frontline trademark contact for three business divisions responsi-ble for the MICROSOFT and WINDOWS brands. She explains, “I provide business clients with global trademark guidance about adoption and proper use of our own and third-party names and trademarks. I also develop filing and en-forcement strategies based on business needs and guide clients through proper trademark licensing processes.”

A day in Margaret’s life at Microsoft can be quite unpredictable. Some days are spent in back-to-back meetings discussing new prod-ucts or services and engaging with engineers on new technology. Others involve debating naming strategies and having brainstorming exercises with branding.

So, what does Margaret enjoy most about her dream job at Microsoft? “I love the fact that I have to put a business hat on when approaching each matter,” she says. “It is most important to factor in how we could help the business launch its products/services and stay competitive. It is no longer assessing matters strictly from a trademark perspective. Finding that balance between trademark and business perspectives can be a challenge. With technology changing rapidly and con-stantly, what is important today may not be important tomorrow.”

Her main inspiration, Margaret says, is peo-ple. “This may be the reason why I love the

trademark field. The ability to engage with people from diverse backgrounds and cultures simply electrifies me.” INTA also gives her the opportunity to be surrounded by a valuable network of trademark professionals with whom she can compare experiences and exchange ideas. Margaret has facilitated roundtables and served on the Anticounterfeiting & En-forcement Committee, the Online Reference Committee and now the Famous and Well-Known Marks Committee. She readily acknowl-edges that “educational resources, updates and roundtables have helped me a great deal throughout my career in trademarks.”

Married, with two dogs and two cats, Margaret is also an accomplished writer. For many years she had a personal column in the Seattle Chinese Times, and she has written articles on the experience of relocating to a different country (she was born and raised in Hong Kong) and speaking a different language (Can-tonese). It may come as no surprise to learn that she is an Xbox fan. Margaret quips, “I got my Xbox One on the first day of release, played ‘Ryse: Son of Rome’ for 8 hours straight and finished the game twice.”

Shamin RaghunandanSpoor & Fisher, Pretoria, South Africa INTA Bulletin—Association News Subcommittee

Leticia Provedel, a trademark practitioner in Brazil for almost 20 years, says the most memorable moment in her career was “founding the Provedel Advoga-dos law firm in August 2012.” Since then the firm has grown to 12 trademark and patent attorneys and expanded into corporate and regulatory law.

Leticia likes practicing trademark law be-cause it “makes the world small—we meet good people from everywhere, every day.” She

also likes the wide variety of responsibilities that trademark law offers. “You can experi-ence every aspect of legal practice—prosecu-tion, litigation, technical advice, alternative dispute resolution, regulation, and contracts,” she says. “No other field of law provides such a varied practice with an international flavor.”

Her introduction came early. Leticia was only 19 when she began as a trainee in a large intellectual property boutique firm in Brazil. The implementation of the TRIPS Agreement in developing countries and discussing legal principles and harmonization gave her a broad understanding of the foundations of IP law. “I’ve never left the IP practice area since then,” she says, “and I would not have done anything differently.”

Right after law school, Leticia began attend-ing INTA events, and she has not missed an Annual Meeting since. She has served on several different INTA committees, most recently the Online Reference Committee. Her involvement in the Association has not only brought her friends and business contacts but also helped her form a view of human relations and worldwide culture that trans-

lates into strong relationships in her everyday practice. Consequently, Leticia says, INTA has been important in her career: “Once, when I accepted a proposal to change firms, my boss said, ‘They are hiring you because of your exposure at INTA.’ I did not know exactly what he meant, but I took it as a compliment!”

The author of various articles and coauthor of several books published in Brazil, Leticia is a member of the Board of Directors of the São Paulo Intellectual Property Association and of the European Owners Association (Marques) Education Team. In addition, she is the former co-chair of the Brazilian Intellectual Property Association Trademark Commission.

In her spare time, Leticia enjoys diving, sailing and skiing. Recently, however, she started practicing what has become her favorite sport: spending time with her twin daughters, Nina and Flora. Born on February 7, Leticia’s twins are a delightful addition to the life of this busy trademark attorney.

Timothy J. LockhartWillcox & Savage, P.C., Norfolk, Virginia, USA INTA Bulletin—Association News Subcommittee

June 1, 2014 Vol. 69 No. 106

FeaturesIsadora Ramos and Renata CarneiroSoerensen Garcia Advogados Associados, Rio de Janeiro

Ms. Carneiro is a member of the INTA Bulletin Features Subcommittee.

The 2014 World Cup Brings the Ambush Marketing Challenge to Brazil

When major sporting events—such as the 2014 FIFA World Cup, which is being hosted by Brazil this month—attract the attention of bil-lions of viewers worldwide, the eyes of the or-ganizers are anywhere but on the game. In the buildup to such events, one of the organizers’ main concerns is ambush marketers, who take advantage of the event to promote or advertise their businesses and their brands even though they are not officially sponsoring it. Bearing in mind that advertising revenue covers most of the expenses incurred in organizing such events, monitoring the action of ambush mar-keters is crucial to protecting the investment of official sponsors.

Ambush marketing usually happens in one of two ways:

a. By association, whereby the ambush marketer leads the public into confusion by unduly associating its mark/business with the event (e.g., a school offering an online English course that attracts the public to its services by advising people to be prepared for the foreign visitors that will arrive during the World Cup; soft drinks with labels bear-ing the participating national teams’ colors or flags); or

b. By intrusion, a more aggressive practice, whereby the ambush marketer does not

make a suggestion that it is related to the event directly but exposes its mark and business and invests in publicity during the event, when all the media are attracted to it (e.g., a famous sportswear company that does not sponsor the event but displays its brand on billboards near the stadiums).

Either way, both organizers and official spon-sors will have to be prepared to deal with this practice, which increases as the event draws nearer and which usually will occur most blatantly during the tournament itself. The arguments of small companies are usually the same: they claim they do not know or do not understand the law and that they do not see their advertisements as infringements of third-party rights.

Ambush marketing has been a major issue during recent sporting events. One of the latest high-profile cases occurred during the FIFA World Cup in South Africa in 2010, when a famous Dutch beer company, which did not sponsor the event, hired more than 30 attractive models, dressed them in short, low-necked orange dresses (the company’s color of choice) and took them to a match between the Netherlands and Denmark. Much attention was afforded the models. The stunt created the idea that the Dutch beer company was in some way related to the event, which diverted attention away from the beer company that was the official sponsor of the Cup.

Brazilian authorities are trying to prevent the 2014 FIFA World Cup, which the country is hosting in June and July of this year, from being an ambush marketing fiasco. Under the following provisions of the Brazilian Industrial

Property Law (Law No. 9,279/1996), ambush marketing can be considered an act of unfair competition and trademark infringement:

Article 189. An infringement of a registered mark is committed by any person who:

I – reproduces, in whole or in part, a regis-tered mark, without the authorization of the owner, or imitates it in a manner that may cause confusion.…

Article 195. An act of unfair competition is committed by any person who:

…

III – uses fraudulent means to divert the customers of another party, for his own profit or another party’s profit;

IV – uses the advertising expression or sign of another person, or imitates it, in a manner liable to cause confusion between products or establishments....

A specific law regarding the 2014 FIFA World Cup in Brazil (Law No. 12,663/2012), also called the World Cup Law, provides for mea-sures to keep ambush marketers away from the competition venues. These measures comprise setting restricted areas around the stadiums where it will be forbidden to sell or promote products or services that do not carry the mark of an official sponsor. The law also provides for compensation for losses and damages for unauthorized ad-vertising activities around or related to the event. The same law also provides that FIFA (Fédération Internationale de Football Asso-ciation) can present a list of marks that will automatically be declared as famous by the

INTA’s Position on Ambush Marketing LegislationOn November 10, 2010, INTA adopted a Board Resolution on Ambush Marketing pro-posed by the Emerging Issues Committee. In light of increased competition to become the host country for major sporting events, the enactment of special legislation to prevent ambush marketing has become commonplace. However, such legislation in many cases extends sponsors’ and orga-nizers’ rights well beyond the protection of

traditional trademark and unfair competition laws, and can impede existing trademark owners’ rights. INTA therefore recommends that countries electing to adopt ambush mar-keting legislation for major events ensure that the legitimate rights of trademark owners and the public to use trademarks and descrip-tive terms fairly are balanced appropriately against the rights of event sponsors and organizers.

In 2011, INTA submitted a letter to Minister of Sports, Mr. Aldo Rebelo, asking that Brazil consider the principles and guidelines sug-gested in the Resolution when crafting its am-bush marketing legislation for the 2014 World Cup and 2016 Olympics. INTA members also shared the Resolution and conducted meet-ings with government officials of the State of Rio de Janeiro in charge of coordinating the actions against ambush marketing during these events.

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FeaturesBrazilian Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property) (INPI), including a special (and much faster) regime for granting registra-tions of FIFA’s marks and exemption from any official INPI fees.

The mayor of Rio de Janeiro, which will host several matches during the FIFA World Cup, including the final on July 13, 2014, recently published a decree determining that (1) a radius of one kilometer around Maracanã Sta-dium will be FIFA’s exclusive area for the prac-tice of commercial and advertising activities and (2) FIFA will have police powers to enforce intellectual property rights and seize potential counterfeit products.

The ambush marketing issue is relatively new in Brazil, and so far the number of cases involving ambushers that have come before the Brazilian courts is not significant. In 2013, during the FIFA Confederations Cup, FIFA’s marketing director, Mr. Thierry Weil, announced that FIFA had handled approxi-mately 100 cases of ambush marketing. In 80 percent of those cases, the ambush marketers were caught selling small amounts of products depicting FIFA’s marks, such as images of the World Cup trophy.

In a recent and controversial decision by the 25th Federal Chamber of Rio de Janeiro (Confederação Brasileira de Futebol v. Caixa Econômica Federal, Lawsuit No. 0805184-80.2010.4.02.5101), the judge held that because the World Cup usually attracts major attention from the media, referring to the World Cup in a descriptive manner in adver-tisements would be a common practice and not unfair competition.

In spite of the consensus that the investments made by FIFA and official sponsors should be protected against ambush marketers, there is no consensus regarding the scope of actions that should be described as ambush marketing.

In defining ambush marketing by association, Article 32 of the World Cup Law (see below) is vague and subjective, so much so that it could even be argued successfully that the mere use of references to soccer associated with Brazil-ian colors (yellow, green and blue) during the FIFA World Cup amounts to ambush marketing by indirect association with the tournament.

Unlawful Use of Official Symbols

Ambush Marketing by Association

Art. 32. To use trademarks, products or services, with the purpose of obtaining eco-nomic or marketing advantage, by means of direct or indirect association with the Events or the Official Symbols, without authorization by FIFA or by a person appointed by FIFA, inducing third parties into believing that such trademarks, products or services are approved, authorized or endorsed by FIFA:

Penalty – detention, from three months to one year, or fine.

In addition, according to Article 36 of the World Cup Law, ambush marketing practices will be considered crimes until December 31, 2014.

Another important aspect of the World Cup Law that has not yet been challenged in court is the provision that FIFA’s marks are automatically declared as famous and protected against registration and use of identical or confusingly similar marks of third parties in all classes of goods and services, independent of whether registrations are held by FIFA in each class.

This special protection may help FIFA to fight against ambush marketing. Because its marks related to the FIFA 2014 World Cup are declared as famous marks and protected in all classes, FIFA may try to prevent undue association with such marks and the event itself based also on trademark infringement, even if the goods and services involved in the infringer’s activities are completely different from those covered by FIFA’s trademark regis-trations. Nevertheless, these automatic dec-larations of fame could be challenged in court if there is any conflict involving FIFA’s marks that are declared as famous and third parties’ marks for dissimilar goods and services in classes not covered by FIFA’s registrations.

Article 125 of the Brazilian Industrial Property Law provides that “marks registered in Brazil and deemed to be famous shall be afforded special protection in all fields of activity.” However, the World Cup Law allows FIFA to choose, as it wishes, which of its marks it wants to be declared as famous by INPI and protected in all classes. Thus, marks such as FOR THE GAME, FOR THE WORLD and ALL IN ONE RHYTHM, which are not well known in Brazil and might not otherwise be declared as famous, have automatically attained famous mark status under the World Cup Law, and no one can use these expressions in connec-tion with commercial activity. The prohibition

against using, for goods or services that are not similar to those covered by FIFA’s registra-tions, any marks that are identical or similar to FIFA’s marks that have been declared famous based on the World Cup Law will last until December 31, 2014, when the cited special protection conferred on FIFA’s marks will expire in accordance with the Law.

It could be argued that this compulsory and automatic declaration of fame of FIFA’s marks should be invalid, as the fame should not stem from the declaration but rather, on the contrary, the declaration should be based on the fame. This argument would need to be associated with a claim for the partial nullity of the World Cup Law, based on constitutional rights and the principle of isonomy (the equal-ity before the law of the citizens of a state), as FIFA’s IP rights conferred by the World Cup Law are much broader than the rights of third parties and the declaration of fame accorded unknown marks is arguably unreasonable.

ConclusionBrazilian legislation, including the Brazilian Industrial Property Law and the World Cup Law, confers on FIFA and the official spon-sors all the necessary means to hinder third parties from unduly using the official symbols and from acting as ambush marketers. The crucial point—if potential infringement cases are brought to court—should be defining which acts amount to ambush marketing and which are fair use of descriptive elements referring to soccer and Brazil (e.g., the colors of the Brazil-ian flag). Besides, if for any reason the “fame declarations” related to FIFA’s marks are chal-lenged in court, the courts may be asked to rule on the constitutionality of the World Cup Law per se, on the ground of lack of isonomy. There are strict procedures that all—except, in this case, FIFA—must follow to obtain the declaration of fame of their trademarks, which indeed must be famous marks. FIFA’s marks were declared famous, without any exami-nation of real fame, automatically after INPI received from FIFA the list of marks it wished to be declared as famous. Despite these controversial issues involving IP protection and enforcement during the 2014 FIFA World Cup, one thing is certain: there will be some great matches. May the best team win. ■

June 1, 2014 Vol. 69 No. 108

Law&PracticeARGENTINA Internet Regulator Starts Charging for Registering Domain Names

ARGENTINA New Term Extension for Domain Name Renewal

BELGIUM Brussels Court of Appeal Confims BOIP Decision

Refusing Registration of Single-Color Mark

Pursuant to Resolution No. 80/2013, pub-lished in the Official Gazette on February 28, 2014, the Network Information Center Argen-tina (NIC-Argentina) has established fees for the registration and renewal of domain names.

The registration and renewal fees for domain names under the extension “.com.ar” are AR $160 (about US $20 at the current exchange rate). The registration and renewal fees for other extensions range from AR $65 (.gob.ar, .gov.ar, .int.ar, .mil.ar) to AR $160 (.net.ar, .tur.

ar, .org.ar) and as high as AR $450 (.ar).Although the Resolution states that fees are retroactively applicable from January 1, 2014, NIC-Argentina posted on its website that the corresponding fees would apply as from March 5, 2014.

The imposition of fees by NIC-Argentina constitutes a major change in the system, as previously registration and renewal of “.ar” domain names were free of charge.

On December 1, 2013, the INTA Bulletin reported that the Network Information Center Argentina (NIC-Argentina) decided to extend the automatic domain name renewal period until December 31, 2013. Pursuant to the new system adopted by NIC-Argentina, only regis-tered users would be allowed to proceed with the renewal after that date.

Recently, NIC-Argentina reported on its website that it will be possible to request a one-time 30-day extension of the deadline to renew

domain names. The reasoning behind this new extension is to allow more time to validate the registrant’s data, which is necessary to finalize registration.

To request such extension, the applicant must fill out an online form for each domain name. NIC-Argentina will grant the extension provided the domain name has an associated DNS, no extension requests have been previously filed and the deadline falls within 30 days of the application for the extension.

On March 25, 2011, Telenet NV filed an appli-cation for a single-color mark (RAL 1018—color per se) for “triple play” services (television, Internet and telephone). The Benelux Office for Intellectual Property (BOIP) refused the appli-cation for lack of distinctive character.

In the appeal proceedings, the Brussels Court of Appeal, referring to the European Court of Justice’s (ECJ’s) judgment in Libertel (Case C-104/01 (ECJ May 6, 2003)), determined that in the case of a color per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly

where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.

The Court agreed that although a color per se may ab initio not have any distinctive character, it may acquire such character as a consequence of extensive use in relation to the goods or services claimed.

In the case at hand, however, Telenet did not provide sufficient proof of use. The single color was never used as an independent distinctive sign, but rather as a decorative background for Telenet’s corporate name and logo.

Furthermore, the Court determined that “triple play” services are not “very restricted” as required by Libertel, as they cover practically all services generally offered by a telecommu-

nication service provider. The Court also found that said “triple play” services were addressed to the public at large and hence not to a “very specific market.”

Finally, the Court emphasized the public inter-est in not unduly restricting the availability of colors for other telecom operators.

The Court refused the claims of Telenet and confirmed the decision of the BOIP. (Telenet NV v. BOIP, No. 2013/AR/77 (Ct. App. Brussels Feb. 4, 2014).)

Contributor: Diego LauriniEstudio Gold, Buenos Aires

Verifier: Martín ChajchirMarval, O’Farrell & Mairal, Buenos Aires

Mr. Laurini is a member of and Mr. Chajchir is Co-Chair of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee.

Contributor: Diego LauriniEstudio Gold, Buenos Aires

Verifier: Claudia SerritelliEstudio Chaloupka, Buenos Aires

Both are members of the INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee.

Contributor: Willem-Jan CosemansOlswang LLP, Brussels

Verifier: Carl De MeyerHoyng Monegier LLP, Brussels

9

Law&PracticeBENELUX BOIP Applies Principles of IP TRANSLATOR Case for the First Time

EGYPT Increase in Official Fees

IRAQ Trademark Office Requires Legalized Power of Attorney

JORDAN New Trademark Assignment Regulations

In a recent opposition decision (HITMAN!, Opposition No. 2005277 (BOIP Mar. 6, 2014)), the Benelux Office for Intellectual Property (BOIP) for the first time applied the principles set out by the Court of Justice of the European Union (CJEU) in the IP TRANSLATOR case (Case C-307/10 (CJEU June 19, 2012)).

According to the BOIP, the applicant’s de-scription of the goods sought to be regis-tered—“paper, cardboard and goods made from these materials, not included in other classes”—was not in conformity with the

CJEU’s IP TRANSLATOR principles because of its lack of clarity and precision.

The BOIP subsequently referred to the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (Feb. 20, 2014) and to the Communication of the Director General of the BOIP (Nov. 20, 2013), according to which “in oppositions BOIP will apply the general rule that the consequences of the lack of clarity and precision of a term are borne by the party that uses it. So in case of an opposition in which one party invokes

vague terms and the other party terms that are sufficiently clear and precise, BOIP will rule in favour of the latter.”

As a consequence, “goods made from [paper or cardboard], not included in other classes” were held to be similar to the opponent’s goods in Class 16.

The Egyptian government recently revised the official fees schedule in connection with the registration of trademarks. By vir-tue of Ministerial Decision No. 95 of 2014, issued on March 19, 2014, the official fees for a number of trademark-related matters have increased substantially. Spe-

cifically, the increase affects the fees for (1) oppositions; (2) availability search and status search; and (3) obtaining certified copies of pending applications.

The new rates went into effect on April 1, 2014.

The Iraqi Industrial Property Department of the Central Organization for Standardiza-tion & Quality Control (COSQC) announced on April 10, 2014, that it now accepts new trademark filings of all kinds only with a complete legalized Power of Attorney (PoA), including the local legalization. Priority claim applications are excluded.

The new regulations require the comple-tion of the local legalization of the PoA up to the Iraqi Tax Office, the Central Bank and the Iraqi Ministry of Foreign Affairs before submission of trademark filings at the Trademark Office.

The Jordanian Ministry of Industry and Trade has issued new regulations related to assignment of trademarks. (Regulation No. 55 of 2014.)

The new regulations, which contain a list of articles concerning trademark assign-ment, licensing and pledging, entered into force after their publication in the official gazette on April 1, 2014.

According to the new regulations, the

Power of Attorney to be submitted in connection with the assignment, license or pledge of trademark should be newly drafted (no more than one year old), un-less the assignor and assignee agree on a shorter period.

The regulations stipulate that the deed of assignment be submitted along with the last updated certificate of registration, and that the Arabic translation of all non-Arabic documents be certified by a notary public.

Contributor: Willem-Jan CosemansOlswang LLP, Brussels

Verifier: Carl De MeyerHoyng Monegier LLP, Brussels

Contributor: Mohammed Al-MasriSaba & Co. IP, Cairo

Verifier: Hassan Abd El Tawab El ShehemiArab Lawyers Hassan El Shehemi Associates, Cairo

Contributor: Iman Salamehag-IP-news Agency, Amman, Jordan

Verifier: Akeel KadouriAbu-Ghazaleh Intellectual Property, Baghdad, Iraq

Contributor: Iman Salamehag-IP-news Agency, Amman

Verifier: Ghaida Ala’EddeinSaba & Co. Intellectual Property, Amman Chair, INTA Bulletin Law & Practice—Middle East & Africa Subcommittee

June 1, 2014 Vol. 69 No. 1010

Law&PracticeSAUDI ARABIA What You Should Know About Power of Attorney Requirements

UNITED STATES Supreme Court Creates New Standard for Who Can Sue for

False Advertising Under Federal Law

Over the past few weeks, more than one trademark office in the Arab region has opted to make some revisions vis-a-vis Power of At-torney (PoA) formalities. Reasons and justifica-tions vary across the board.

The Saudi Trademark Section of the Ministry of Commerce and Industry announced that the new deadline for submitting a PoA will be 90 days from the date notification is received from the office. Previously, the PoA had to be submitted within 30 days of the filing date. This change comes as a result of the introduc-tion of an electronic filing system.With regard to authentication requirements,

in general, under most by-laws of the region, a PoA to act must be legalized or notorially executed. Oman and Bahrain are the only two countries that allow for Apostille legalization. Simply signed PoAs are accepted in very few countries—Algeria, Djibouti, the independently governed Palestinian territory of Gaza, Leba-non, Morocco and Tunisia.

A PoA must also be dated. Any PoA without an express date of execution is void.

Submission of a PoA at the time of filing is required by Iraq, the UAE, Bahrain, Djibouti, Gaza, Lebanon, Libya, Qatar and Yemen. An

extension of time is not possible. A general PoA may be used for subsequent filings in all countries except Algeria and Djibouti.

On March 25, 2014, the U.S. Supreme Court, in a unanimous opinion, held that a party alleging false advertising under Section 43(a) of the Lanham Act must show “an injury to a commercial interest in sales or business repu-tation proximately caused by the defendant’s misrepresentations.” Lexmark International, Inc. v. Static Control Components, Inc., No. 12-873 (U.S. Mar. 25, 2014).

The plaintiff in the case, Lexmark, manufac-tures laser printers and toner cartridges with a microchip to disable each cartridge after it runs out of toner. Static Control is not a manu-facturer of toner cartridges, but instead makes components necessary to remanufacture used Lexmark cartridges. Lexmark sued Static Control to stop it from selling certain disabling microchips. Static Control counterclaimed, alleging, among other things, that Lexmark misled customers to believe that they were legally required to return used cartridges to Lexmark, and that Lexmark had sent letters to remanufacturers falsely advising them that if they used Static Control’s microchips to enable use of Lexmark’s printer cartridges, they would be in violation of and infringe Lexmark’s intel-lectual property rights.

The district court found that Static Control lacked standing to bring a claim for false ad-vertising under the Lanham Act because Static Control’s injury was “remote” and there were “more direct plaintiffs in the form of remanu-facturers of Lexmark’s cartridges.” 2006 U.S. Dist. LEXIS 73845 (E.D. Ky. Sept. 28, 2006). The Sixth Circuit reversed, applying the Second Circuit’s “reasonable interest” test. 697 F.3d 387 (6th Cir. 2012). In contrast to the test applied by the Sixth Circuit, the Seventh, Ninth and Tenth Circuits in the past applied a bright-line test allowing a plaintiff to bring a false advertising case only if the plaintiff was a direct competitor with the defendant. The Third, Eighth and Eleventh Circuits had previously applied a five-factor test set forth in Associated General Contractors of California, Inc. v. Carpenters, 459 U.S. 519 (1983).

INTA did submit an amicus brief to the Court arguing that the the Court should adopt the broad and flexible “reasonable interests” test applied by the Second and Sixth Circuits.

Nonetheless, the Supreme Court rejected all previous tests applied by the courts and fashioned a new test for bringing a false ad-vertising claim under the Lanham Act. First, a

plaintiff must have interests that fall within the “zone of interests” protected by the Lanham Act. Second, the false advertising at issue must have proximately caused the plaintiff’s injuries (e.g., to sales or reputation). Applying the new test, the Supreme Court held that Static Control had standing to bring its false advertising claim.

This opinion is significant as it resolves the previous split of authority in the circuits on the issue of standing. The U.S. Supreme Court’s new standing test requires the plaintiff to allege and prove that it suffered an injury to a commercial interest in sales or business reputation, and that the injury was proximately caused by the defendant’s alleged misrepresentations.

Contributor: Zeina SalamehSaba & Co. IP, Head Office, Beirut, Lebanon

Verifier: Robert ElianSalem Law Firm, Amman, Jordan

Contributor: Catherine F. HoffmanMayback & Hoffman, Fort Lauderdale, Florida

Verifier: Ivan G. MarreroPietrantoni Mendez & Alvarez LLC, San Juan, Puerto Rico

Ms. Hoffman is Co-Chair and Mr. Marrero is a member of the INTA Bulletin Law & Practice—United States & Canada Subcommittee

Looking for a gateway to country-specific links for trademark offices, laws, domain name resources and more?

Find it in the Country Portal in INTA’s Global Trademark Research.

Visit www.inta.org/CountryPortals

11

Law&PracticeUNITED STATES TTAB Issues a Crisp Ruling on GenericismIn a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) found the mark PRETZEL CRISPS generic for “pretzel crackers.” Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No. 91195552, Cancellation No. 92053001 (T.T.A.B. Feb. 28, 2014).

Princeton Vanguard owned a registration on the Supplemental Register for PRETZEL CRISPS, covering “pretzel crackers” in Class 30. (Reg. No. 2980303, July 26, 2005.) The company later filed an application for the same mark and goods on the Principal Register, alleging acquired distinctiveness. (Applica-tion No. 76/700802, filed Dec. 11, 2009.) Claiming that the term “PRETZEL CRISPS” was generic in connection with “pretzel crackers,” or alternatively that it was descriptive and had not acquired distinctiveness, Frito-Lay opposed the application and petitioned to cancel the Supplemental Registration. The TTAB consoli-dated the proceedings.

Finding that Frito-Lay had standing based on its sales of goods similar to those at issue, the Board analyzed whether PRETZEL CRISPS was generic for “pretzel crackers,” under the Federal Circuit’s two-part test: “(1) what is the genus of the goods at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods?” H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). As it was uncontested that the genus of goods at issue was “pretzel crackers,” the TTAB’s analysis turned on factor 2.

After determining that the relevant public was “ordinary consumers who purchase and eat pretzel crackers,” the TTAB considered

whether “PRETZEL CRISPS” was a com-pound term or a phrase. It explained that a compound term is “a combination of two or more terms in ordinary grammatical construc-tion” that “communicates no more than the common meanings of the individual compo-nents.” By contrast, a phrase is “a unified term having a meaning beyond the sum of its parts.” Here, the Board found “pretzel crisps” to be a compound term, as the words com-bined had the same meaning as the individ-ual constituent words. In analyzing whether “PRETZEL CRISPS” was generic, the TTAB therefore looked at “evidence of the meaning of the constituent words,” rather than viewing evidence of the “meaning of the disputed phrase as a whole.”

The TTAB found the term “pretzel” generic for “pretzels and pretzel snacks, including ‘pretzel crackers.’” It then turned to whether “crisps” had acquired the meaning of “cracker,” such that a “pretzel crisp” would be simply a generic “pretzel cracker.” The Board first considered evidence of record of third-party competitors’ use of “crisps” to identify “crackers,” includ-ing SPECIAL K Cracker Crisps, TRISCUIT Thin Crisps, H-E-B Wheat Crisps, WHEATABLES Nut Crisps, LESLEY STOWE’S Raincoast Crisps and NABISCO Harvest Crisps. It also considered evidence that the nutrition facts on Princeton Vanguard’s own PRETZEL CRISPS products had referred to a cracker as a “crisp.” The Board found these references “instructive,” even if at some point they had been removed from Princeton Vanguard’s packaging.

Next, the TTAB looked at media references naming “crackers” as “crisps” and third-party registrations where CRISPS was disclaimed; took judicial note of the dictionary definition

for “crisp”; and listed Princeton Vanguard’s responses to requests for admission that were “relevant to showing that ‘PRETZEL CRISPS’ [was] generic for ‘pretzel crackers.’”

Finally, the Board considered two TEFLON format surveys. Frito-Lay’s expert concluded that its survey indicated that “PRETZEL CRISPS [was] not perceived by a majority of relevant consumers as a brand name.” The TTAB gave this survey little weight because the survey-ors failed to conduct an initial mini-test to determine whether respondents “understood the difference between brand and common (or category) names.” The survey conducted by Princeton Vanguard’s expert, which included a mini-test, contained the opposite conclu-sion; however, Frito-Lay’s expert argued that Princeton Vanguard’s expert’s survey was flawed because of the underinclusive nature of the questions. The Board did not specify what weight it gave to that survey.

On balancing the evidence, the TTAB held that “PRETZEL CRISPS” was a generic term “under-stood by the relevant public to refer to ‘pretzel crackers.’” This decision provides a valuable roadmap to the Board’s analysis of compound terms versus phrases, and to its consideration of evidence in assessing claims of genericism.

Contributors: Rose Auslander and Iliza F. BershadCarter Ledyard & Milburn LLP, New York, New York

Verifier: Leigh Ann LindquistSughrue Mion, PLLC, Washington, DC

Both Ms. Auslander and Ms. Lindquist are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

Visit inta.org/IndustryPerspectives

Imitation May or May Not Be FlatteryFood and beverage industry manufacturers and large national supermarket chains share a mutually dependent relationship, and either would likely be reluctant to damage it in a full-blown dispute over a “look alike” product. To better understand the views of both sides — and to know where and when to draw the line — see “Trade Dress in the Food and Beverage Industries: Manufacturer’s and Retailer’s Views” by Mark Hiddleston, Elkington and Fife LLP, London, United Kingdom, and Richard Young, Quarles & Brady LLP, Chicago, Illinois, United States, in INTA’s exclusive member service Industry Perspectives series.

June 1, 2014 Vol. 69 No. 1012

Law&PracticeUNITED STATES The TTAB Did Not Love New YorkThe Trademark Trial and Appeal Board (TTAB or Board) affirmed a refusal to register the mark NY for “Cosmetics; Face creams; Lotions for cosmetic purposes” in Class 3, but only because the applicant, Nature’s Youth, Inc., failed to timely comply with the trademark ex-aminer’s Rule 2.61(b) request for information regarding the identified goods. In re Nature’s Youth, Inc., Serial No. 85747419 (T.T.A.B. Mar. 13, 2014) (not precedential).

The U.S. Patent and Trademark Office had refused registration on three grounds: (1) the applicant failed to comply with the examiner’s request, pursuant to Trademark Rule 2.61(b), for information on whether the goods would be “manufactured, packaged, shipped from, [or] sold in,” or have any other connection with, New York; (2) the applied-for mark was geographically deceptive under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); and (3) the mark was primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Act, 15 U.S.C. § 1052(e)(3).

On appeal, the TTAB quickly affirmed denial of registration based on Rule 2.61(b), as there was no dispute as to Nature’s Youth’s failure to comply. The Board also ruled that the examiner should have withdrawn the Section 2(a) objection: Nature’s Youth had failed to make the necessary response, and, regard-less, Section 2(e)(3) was the appropriate basis for refusal.

The TTAB noted that all of the following ele-ments must be present for denial of registra-tion under Section 2(e)(3):

1. The primary significance of the mark is a generally known geographic place;

2. The goods or services do not originate in the place identified in the mark;

3. Purchasers would be likely to believe that the goods or services originate in the geo-graphic place identified in the mark; and

4. The misrepresentation is a material factor for a substantial portion of [the] relevant consumers in deciding where to buy the goods or use the services.

In re California Innovations Inc., 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

With respect to the first element, the Board found that NY was primarily understood to refer to New York. Although NY could be short for meanings such as New Year or Neil Young, the Board found them “relatively obscure.” Moreover, Nature’s Youth had not shown that any other meanings related to the applied-for goods, or that it had promoted NY as an abbre-viation for “Nature’s Youth.”

As to the second element, the TTAB presumed the applied-for goods did not originate in New York, given Nature’s Youth’s silence when faced with the Rule 2.61(b) request, and there was no contrary evidence.

With regard to the third element, the Board found that consumers would be likely to believe that the applied-for goods originated in New York, New York, because New York City is a major metropolitan area and several large beauty companies are headquartered there.

Turning to the fourth element, however, the TTAB found insufficient evidence in what it termed “the limited record” to show that New York was “famous for cosmetics, or even that cosmetics [were] a principal or traditional prod-uct” there. While the evidence showed New York was a fashion mecca, the relationship be-tween the fashion industry and cosmetics was attenuated, and the mark applied for would not be a material factor in the consumer’s purchasing decision.

This decision is noteworthy for the TTAB’s analysis of Section 2(e)(3) and its affirmation of denial of registration because of the appli-cant’s failure to comply with Rule 2.61(b).

Contributor: William F. WilsonWaller Lansden Dortch & Davis, LLP, Nashville, Tennessee

Verifier: Rose AuslanderCarter Ledyard & Milburn LLP, New York, New York

Both are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

Searchable database on the cancellation practice and procedure in more than 85 jurisdictions worldwideTrademark Cancellations on INTA’s Global Trademark Research Page

Visit www.inta.org/Cancellations

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Dates and topics subject to change. Contact meetings@inta.org for the latest information.

INTA Calendar of EventsPlan your calendar with these INTA events and stay up to date on issues that affect your trademarks—domestically, regionally and globally.

June 2–13 U.S. Roundtables: Non-Trademark Issues Various U.S. Cities Trademark Practitioners Should Know

June 16–27 TMA Roundtables: Crossing Borders: Various U.S. Cities International Treaties and Agreements Governing Trademarks

June 17 Rountable: Non-Traditional Trademark Protection Tokyo, Japan under the New Trademark Law

July 9 INTA/USPTO Roundtables Cincinnati, OH, USA

July 28 INTA/USPTO Roundtables Alexandria, VA, USA

September 2–12 TMA Roundtables Various U.S. Cities

September 18–19 Internet, Innovation and ICANN: San Francisco, CA, USA The Evolving Landscape of the Net

October 12–15 Trademark Administrators and Practitioners Meeting Arlington, VA, USA

October 20–31 U.S. Roundtables: Social Media, Chapter Two Various U.S. Cities

November 11–15 Leadership Meeting Phoenix, AZ, USA

December 8–9 When Trademarks Overlap with Other Munich, Germany IP Rights Conference