intellectual property issues in international commerce
DESCRIPTION
TRANSCRIPT
Intellectual Property Issues Intellectual Property Issues in International Commercein International Commerce
International Law SectionInternational Law SectionIdaho State BarIdaho State Bar
October 27, 2011October 27, 2011
Brad FrazerBrad FrazerHawley TroxellHawley Troxell208.388.4875208.388.4875
[email protected]@hawleytroxell.com
Why do you care?Why do you care? Hypothetical: Your client starts selling its Hypothetical: Your client starts selling its
patented mousetrap in the U.S. under the patented mousetrap in the U.S. under the trademark “Mouseraser.” Six weeks later, trademark “Mouseraser.” Six weeks later, you learn that a company in Sweden is you learn that a company in Sweden is selling the patented mousetrap there under selling the patented mousetrap there under the brand name “Mousey-Racer.”the brand name “Mousey-Racer.”
Hypothetical: Two months later, that same Hypothetical: Two months later, that same Swedish company starts selling mouse Swedish company starts selling mouse poison in the U.S. under the “Mousey-Racer” poison in the U.S. under the “Mousey-Racer” brand. That same company also registered brand. That same company also registered the domain names “mouseraser.se,” the domain names “mouseraser.se,” “mousey-racer.com” and “mouseraser.cn.”“mousey-racer.com” and “mouseraser.cn.”
Types of Intellectual Property Types of Intellectual Property (“IP”)(“IP”)
1.1. PatentsPatents2.2. TrademarksTrademarks3.3. Domain Names (and Twitter usernames? Domain Names (and Twitter usernames?
Facebook pages?)Facebook pages?)4.4. CopyrightsCopyrights5.5. Trade SecretsTrade Secrets6.6. IP created by contract (“NDA’s”)IP created by contract (“NDA’s”) Focus today on trademarks and domain Focus today on trademarks and domain
namesnames
What are trademarks?What are trademarks?
A trademark or service mark is any A trademark or service mark is any word, slogan, logo, symbol, sound, word, slogan, logo, symbol, sound, color, smell, or other item that serves color, smell, or other item that serves as a means of commercial source as a means of commercial source identification of a product or service.identification of a product or service.
E.g., Nike, Coke, Geico Gecko--or E.g., Nike, Coke, Geico Gecko--or Geico CavemenGeico Cavemen
Types of U.S. Trademark Types of U.S. Trademark ProtectionProtection
Common Law™ - unregisteredCommon Law™ - unregistered– In the U.S., trademark rights arise through use, not In the U.S., trademark rights arise through use, not
through registration.through registration.
State Registration – the “truly local”State Registration – the “truly local” Federal Registration® - interstateFederal Registration® - interstate Registration in the U.S. requires acceptable Registration in the U.S. requires acceptable
“trademark use.” “trademark use.”
Trademark Electronic Search System(Tess)
Record 1 out of 1 (6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND
Goods and Services
IC 004. US 001 006 015. G & S: Oil based metal cutting fluid and oil based metal removal fluid for industrial metal working. FIRST USE: 20000131. FIRST USE IN COMMERCE: 20000131
Mark Drawing Code
(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND
Serial Number 76079064
Filing Date June 20, 2000
Current Filing Basis
1A
Original Filing Basis
1A
Supplemental Register Date
December 18, 2001
Registration Number
2560618
Registration Date April 9, 2002
Owner (REGISTRANT) Midwest Biologicals, Inc. CORPORATION INDIANA 3404 State Road 101 Woodburn INDIANA 46797
Attorney of Record
Mark F. Smith
Description of Mark
The mark is a scent mark having the scent of bubble gum.
Trademark Electronic Search System(Tess)
Record 1 out of 1
(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND
Goods and Services
IC 009. US 021 023 026 036 038. G & S: computer hardware and computer operating software, microprocessors, integrated circuits and semiconductor devices. FIRST USE: 19941000. FIRST USE IN COMMERCE: 19941000
Mark Drawing Code
(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND
Serial Number 75332744
Filing Date July 29, 1997
Current Filing Basis
1A
Original Filing Basis
1A
Published for Opposition
November 16, 1999
Registration Number 2315261
Registration Date February 8, 2000
Owner (REGISTRANT) Intel Corporation CORPORATION DELAWARE 2200 Mission College Blvd. Santa Clara CALIFORNIA 95052
Attorney of Record
J PAUL WILLIAMSON
Description of Mark
The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT.
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator
LIVE
Advantages to Federal Advantages to Federal (U.S.) Registration:(U.S.) Registration:
Constructive notice nationwide of TM owner's Constructive notice nationwide of TM owner's claim. claim.
Evidence of ownership of the trademark.Evidence of ownership of the trademark.
Jurisdiction of the federal courts may be Jurisdiction of the federal courts may be invoked.invoked.
Registration can be used as a basis for Registration can be used as a basis for obtaining registration in foreign countries.obtaining registration in foreign countries.
Registration may be recorded with U.S. Registration may be recorded with U.S. Customs Service to prevent importation of Customs Service to prevent importation of infringing foreign goods. infringing foreign goods.
InfringementInfringement
Is the defendant using a confusingly Is the defendant using a confusingly similar trademark to sell or advertise similar trademark to sell or advertise a related line of goods or services?a related line of goods or services?
Is there a likelihood of consumer Is there a likelihood of consumer confusion as to the source of the confusion as to the source of the infringing goods?infringing goods?
[email protected] / [email protected] / @bfrazjd@bfrazjd
What are domain names?What are domain names? A domain name correlates words to a A domain name correlates words to a
numeric identifier called an “IP numeric identifier called an “IP Address” that tells your web browser Address” that tells your web browser where to look for a particular web site.where to look for a particular web site.
Top-level domains, e.g., .com and .net Top-level domains, e.g., .com and .net (gTLDs).(gTLDs).
Second-level domains, e.g., “Amazon.”Second-level domains, e.g., “Amazon.” ccTLDs—e.g., .tw (Taiwan), .uk (United ccTLDs—e.g., .tw (Taiwan), .uk (United
Kingdom), .cn (China), .se (Sweden); Kingdom), .cn (China), .se (Sweden); also are Top-level Domainsalso are Top-level Domains
Are trademarks and domain Are trademarks and domain names the same thing?names the same thing?
Amazon.com is bothAmazon.com is both What about Golden Acres Retirement What about Golden Acres Retirement
Community, whose website URL is Community, whose website URL is boiseretirement.com?boiseretirement.com?
Consider the impact of the new Consider the impact of the new gTLDs!gTLDs!
International Considerations: International Considerations: Always protect your IP in the Always protect your IP in the
United States first!United States first! Creates priority dates for other Creates priority dates for other
jurisdictions. jurisdictions. Utilizes a familiar, definitive Utilizes a familiar, definitive
regulatory and statutory scheme.regulatory and statutory scheme. Builds value and good will.Builds value and good will.
International Considerations: International Considerations: Always search in the other Always search in the other
jurisdictions before jurisdictions before commencing commerce!commencing commerce!
Dangers: infringement liabilityDangers: infringement liability Dangers: impoundmentDangers: impoundment Dangers: injunctionDangers: injunction
International Protection--International Protection--TrademarksTrademarks
Trademarks are “territorial.”Trademarks are “territorial.” National filingsNational filings Centralized filingsCentralized filings
– Madrid Protocol (EU is now a contracting Madrid Protocol (EU is now a contracting party)party)
– Community Trademark (EU)Community Trademark (EU)
International Protection—International Protection—Trademarks (cont’d)Trademarks (cont’d)
““First-to-File” Jurisdiction?First-to-File” Jurisdiction?– E.g., China, Germany, Japan E.g., China, Germany, Japan – Versus a “common law,” first-to-use Versus a “common law,” first-to-use
jurisdiction (U.S., Canada, Australia)jurisdiction (U.S., Canada, Australia)– Conflicts are inevitableConflicts are inevitable
Many times a combination of Many times a combination of approaches is needed.approaches is needed.
International Protection—International Protection—Domain NamesDomain Names
Aggressive and proactive registration of Aggressive and proactive registration of ccTLDs (.co is a lot like .com)ccTLDs (.co is a lot like .com)
ICANN UDRP—maybe; policies vary by ICANN UDRP—maybe; policies vary by registrar and registry. See registrar and registry. See http://arbiter.wipo.int/domains/cctld_db/index.htmlhttp://arbiter.wipo.int/domains/cctld_db/index.html
Anticybersquatting Consumer Protection Act?Anticybersquatting Consumer Protection Act?
Other International IssuesOther International Issues Licensing and IP OwnershipLicensing and IP Ownership PiracyPiracy Agreement on Trade Related Aspects of Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS) Intellectual Property Rights (TRIPS) Anti-Counterfeiting Trade Agreement (ACTA)Anti-Counterfeiting Trade Agreement (ACTA)
– Signed October 1, 2011, by United States, Australia, Signed October 1, 2011, by United States, Australia, Canada, Japan, Morocco, New Zealand, Singapore, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea and South Korea
Strategy Targeting Organized Piracy (STOP!) (Strategy Targeting Organized Piracy (STOP!) (http://www.stopfakes.gov/ ) )
U.S. Customs and Border ProtectionU.S. Customs and Border Protection
Take-AwaysTake-Aways
Protect IP in the United States first.Protect IP in the United States first.
Perform searches in target jurisdictions.Perform searches in target jurisdictions.
Protect IP in other jurisdictions quickly.Protect IP in other jurisdictions quickly.
– Note on patents and disclosures . . .Note on patents and disclosures . . .
Use Treaties and Border Enforcement.Use Treaties and Border Enforcement.
Q & AQ & A