Monthly Archives: May 2017

News story: Apply to register a trade mark

As part of our ongoing work to improve our digital services, we are implementing changes to the Apply to register a trade mark service.

Apply to register a trade mark will function the same but with improvements to the look and style of the service.

Please note

Draft application saved in progress (saved for later)

If you have a draft application saved in progress (saved for later), then you must submit it by 14 June 2017. Following this date, any draft applications saved on the current version of this service will no longer be available.

The change will take effect on 15 June 2017 and the first screen will resemble the following;

Apply to register a trade mark

We would welcome further feedback to continue to improve this service going forward.

Source: UK IPO News

News story: Searching for a trade mark

There are three trade mark search services:

  • search by number
  • search by owner
  • search by word, phrase and/or image

The three search options will function the same but with changes to the look and style of the service, in particular the search by word, phrase and/or image.

Tabs have been introduced to categorise content, however based on customer feedback, you can also ‘display content without tabs’.

WORDS

The change will take effect on 31 May 2017.

We would welcome further feedback to continue to improve this service going forward.

Source: UK IPO News

Detailed guide: Apply to register a trade mark

As part of our ongoing work to improve our digital services, we are implementing changes to the Apply to register a trade mark service.

Apply to register a trade mark will function the same but with improvements to the look and style of the service.

Please note

If you have a draft application saved in progress (saved for later), then you must submit it by 14 June 2017. Following this date, any draft applications saved on the current version of this service will no longer be available.

Draft application saved in progress (saved for later)

The change will take effect on 15 June 2017 and the first screen will resemble the following;

Apply to register a trade mark

We would welcome further feedback to continue to improve this service going forward.

Source: UK IPO News

Quick Hits- Police Officers’ Bill of Rights, respirator fit tests, and an arbitrator’s authority to modify discipline

City’s untimely discipline violates Police Officers’ Bill of Rights – Reinstatement ordered

Arbitrator Kenneth Starr granted in part a grievance filed by a Naples, FL police officer who had been dismissed for his alleged involvement in the disappearance of another officer’s service weapon, and for allegedly telling a security guard that another police officer had been involved in the shooting of that officer’s wife (also an officer of the Naples PD) and the shooting death of a third Naples officer. Arbitrator Starr found the first allegation unsupported by the evidence. Concerning the second allegation, the arbitrator concluded that “Taking into account all of the facts and implications contained hereinabove, the arbitrator finds the City was justified in imposing discipline upon Grievant, up to and including, termination.”

 Nevertheless, Arbitrator Starr found that the City had violated Florida’s Police Officers Bill of Rights, which was incorporated into the cba, by failing to take disciplinary action within 180 days of receiving the allegation underlying the purported grounds for the discipline. He therefore ordered the grievant’s reinstatement, but concluded:

However, the arbitrator finds that an award of back pay in this case is inappropriate for several reasons. 20 Grievant in this case bore most, if not all, of the responsibility [for] the problem that resulted in his termination. Additionally, Grievant failed to mitigate his (back pay) damages and, in fact, provided no evidence that he even attempted to find work elsewhere. Accordingly, that portion of the grievance requesting back pay is DENIED in its entirety.

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20 See: Elkouri & Elkouri, How Arbitration Works, 7th Ed., at CH.18.3A. iii and Ch 18.3.I. (2012)

Arbitrator Starr’s award can be found here.

Eighth Circuit: Arbitrator’s award reinstating bearded nuclear security officer not barred by public policy

The Eight Circuit has refused to set aside the dismissal of a Nuclear Security Officer who the employer concluded could not pass a required respirator fit test because of facial hair. Entergy Operations, Inc. v. United Government Security Officers of America The employee was called in for an unannounced fit test, but, because he had what was described as a full goatee, the facility concluded that he would be unable to pass the test. It relied on NRC regulations which it asserted required employees to be clean shaven. Arbitrator Robert Curtis sustained the employee’s grievance over his dismissal. Arbitrator Curtis’ award can be found here. The arbitrator found that by not at least attempting the fit test the facility could not be sure the employee could not successfully pass the test. He also concluded that Entergy failed to reasonably accommodate the grievant, who was suffering from folliculitis, by not assigning him to a post that did not require the use of a respirator/mask. Entergy sought to set aside the award as contrary to public policy (i.e the NRC regulations). The District Court (here) concluded on the record made at the arbitration hearing that  the arbitrator nether exceeded his authority nor acted contrary to public policy. The Court noted the arbitrator’s conclusion that by refusing to conduct the fit test unless grievant shaved Entergy failed to establish that grievant’s facial hair would improperly interfere with a proper seal. It also agreed with the arbitrator’s reasonable accommodation analysis. On the Company’s appeal, the Eight Circuit found it unnecessary to decide whether fit testing an individual with facial hair would violate federal regulations in light of the arbitrator’s accommodation analysis. The arbitrator’s factual findings on the availability of posts not requiring a fit test was supported by the testimony and Entergy’s challenge on this point was based on neither the cba nor federal regulations, but rather on Entergy’s practice and preference.

Ohio Supreme Court concludes that limitations on an arbitrator’s remedial authority must be set forth in the cba

In its recent decision in Ohio Patrolmen’s Benevolent Association v. City of Findlay the Ohio Supreme Court addressed the question of whether a police department’s disciplinary matrix, not contained in a cba, could restrict an arbitrator’s ability to modify discipline as part of a just cause analysis. The matrix provided that if more than one discipline level was indicated, the Chef had sole discretion in determining which of the levels was appropriate in a particular case. The case arose when Arbitrator James Mancini issued an award finding “just cause for severe discipline” but overturning the Chief’s termination decision. The City refused to reinstate the grievant, arguing that since the matrix provided for discipline ranging from a 3-10 day suspension up to termination, the decision of the Chief should prevail. The Trial court and the appellate court agreed with the City’s position. The Supreme Court, however, concluded:

Although nothing in the CBA precludes the city from using the matrix as a guide in imposing discipline, treating the matrix as binding on the arbitrator would conflict with the just cause requirement for discipline that the city and the OPBA negotiated into the CBA and as in SORTA, would undermine the integrity of the entire collective bargaining process.

Because the parties did not specifically bargain for the matrix and incorporate it into the CBA, Mancini had authority to review the appropriateness of the disciplinary action imposed in this matter and broad authority to fashion a remedy.

Reversing the decision of the lower Court, the Supreme Court held that:

Any limitation on an arbitrator’s authority to modify a disciplinary action pursuant to a CBA provision requiring that discipline be imposed only for just cause must be specifically bargained for by the parties and incorporated into the CBA.


Legally Speaking Ohio‘s preview of the oral argument here contains an analysis of the case and links to the arbitrator’s award and the lower courts’ opinions.

Source: ADR

INTA's Board of Directors Meets in Barcelona

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I am excited to welcome everyone to Barcelona and INTA’s 139th Annual Meeting, the largest ever with over 10,500 registrants! In addition to the Saturday educational events that kicked off the meeting, the Board also held its second meeting of the year.




As part of its full agenda, the Board received an update on INTA’s Moot Court Competitions. The Saul Lefkowitz Moot Court Competition, now in its 27th year, is an annual event honoring Saul Lefkowitz and introduces law students to important issues arising in United States trademark and unfair competition law. We are delighted that law students in the Asia-Pacific region will soon have the opportunity to participate in INTA’s Asia-Pacific Moot Court Competition launching in Singapore this September.




After hearing from William Rava and Peter Brody, members of the Legislation and Regulation Committee, the Board of Directors approved a resolution calling for an amendment to the Lanham Act to include a rebuttable presumption of irreparable harm in actions brought under the Act.




Finally, the Board heard from the 2017 Brand Restrictions Response Presidential Task Force Co-Chairs Burkhart Goebel and Kathryn Barrett Park. The Task Force’s primary objectives are to examine the various shapes and forms of brand restrictions, such as plain packaging, standardized packaging, and laws introduced to ban or reduce the use of characters (which are trademarks) on packaging. This Task Force will look at these types of restrictions and come up with ideas about how INTA can look to address them on a proactive basis. We look forward to receiving the Task Force’s final report and recommendations later this year.




The first day of the Annual Meeting was a productive one for the Board and we look forward to the rest of the meeting being equally productive and enjoyable for everyone. 




Published: 5/21/2017 1:00 AM
BlogTag: Board of Directors; Annual Meeting

Source: TM NEWS

INTA presents its 2018-2021 Strategic Plan

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​During the Brands and Fashion Conference in New York City in March 2017, we sat down with INTA President Joe Ferretti (PepsiCo, Inc., United States, INTA President Elect Tish Berard (Hearts On Fire Company LLC, United States) and INTA CEO Etienne Sanz de Acedo, to discuss the Association’s 2018-2021 Strategic Plan.

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Published: 5/22/2017 7:59 AM
BlogTag: Strategic Plan

Source: TM NEWS

Today’s Learners, Tomorrow’s Leaders: Introducing the Tomorrow’s Leader Award

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INTA is pleased to announce the inception of the Tomorrow’s Leader Award—an award designed to both feature and inspire the next generation of intellectual property lawyers. The award is meant to enhance the growth and development of recipients within INTA and to provide a tailored mentoring and committee membership experience to accelerate their contribution to the trademark community. The Tomorrow’s Leader Award will recognize outstanding performances within an impressive class of committed, high-performing young practitioners who have already demonstrated an ability to excel.




Two young professionals with less than five years of experience each will receive recognition for their demonstration of early leadership stature in the IP industry. Qualified candidates should be recommended by well-established professionals and should articulate how they have distinguished themselves professionally and how they plan to advance their career from here forward. Award recipients will be automatically placed onto an INTA committee, be given a mentor within the INTA leadership structure, and be offered free-of-charge admittance to INTA’s 2017 Leadership Meeting and 2018 Annual Meeting.




INTA CEO Etienne Sanz de Acedo will pronounce the winner at the Leadership Meeting in November.  The application period will be open July–September 2017.




Published: 5/20/2017 6:48 PM
BlogTag: Young Practitioners; Young Practitioners Committee; Annual Meeting

Source: TM NEWS

Zynga’s Program on Trademarks and Video Games

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videogameblog_yp_051717.jpgThe INTA Young Practitioners Committee hosted a panel discussion and reception on March 22, 2017, called “Trademarks and Video Games (or: How I Learned to Stop Worrying and Love the Lanham Act).” The event was held at the social mobile game company Zynga in San Francisco, California, and featured as panelists Deborah Davis Han (Senior Counsel at Zynga and Chair of the INTA Young Practitioners Committee), Vineeta Gajwani (Senior IP Counsel at Electronic Arts), Frank Goldberg (Associate General Counsel of IP at Zynga), and Ira Lam (General Counsel at Kabam). The presentation was held in Zynga’s in-house movie and gaming theater. The event began with an overview of INTA and the Young Practitioners Committee, with the leaders pointing out some of the opportunities for young trademark lawyers within INTA. 




Following the INTA introduction, the panel engaged in a lively discussion about the role of trademarks in video games, sharing some of the issues they have faced in advising their companies on how to navigate the relatively sparse and murky judicial precedent on trademark use in video games. Among the unique challenges in the video game space is the ever-changing nature of the games, even after consumer purchase. The panel highlighted the “Rogers test” for protecting trademark use in works of creative expression, established in the case Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under this test, courts determine whether a trademark has “no artistic relevance to the underlying work” or, if there is some artistic relevance, whether the trademark “explicitly misleads as to the source or content of the work.” Rogers, 875 F.2d at 999. The panel noted that while this case allows for relatively expansive creative leeway in artistic works in general, it is not adopted by all courts, and certain concepts remain particularly complicated in the video game space. 




Certain challenges facing the panelists include registering the name or title of a video game as a trademark, given that the title of a movie or book is not registrable, for example. Further, beyond the title are issues with respect to actual objects or scenes featured within the game itself. Interesting examples include the use of depictions of a tommy gun in a mobster game and of the Eiffel Tower or the Space Needle as a backdrop for a game scene. The panel shared experiences and war stories from their dynamic careers to paint the scene of the interplay between trademark and copyright law, as well as the right of publicity, as considerations for an attorney in the gaming space. 




After the panel discussion, the group continued the conversation over food and drink at the reception in Zynga’s cafeteria, which was fittingly outfitted with arcade games. Coblentz Patch Duffy & Bass LLP, Cooley LLP, Hanson Bridgett LLP, Owen Wickersham & Erickson P.C., Shartsis Friese LLP, and Sideman & Bancroft LLP co-sponsored this entertaining and informative event. 







Published: 5/30/2017 9:26 AM
BlogTag: Young Practitioners; Young Practitioners Committee

Source: TM NEWS

Thank You for a Successful Annual Meeting!

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Where has the time gone? After five days of meetings, educational programming, and receptions, I cannot believe the 139th Annual Meeting in Barcelona has come to an end. Thank you to everyone that has helped make this event such a success, especially the 2017 Annual Meeting Project Team and Co-Chairs Jomarie B. Fredericks, Rotary International (United States), and Slobodan Petosevic, PETOSEVIC (Luxembourg).




As I walked around the Fira Gran Via, it was great to see friends reconnecting, registrants exchanging business cards, and attendees reading the INTA Daily. INTA’s Annual Meeting is the crescendo of the trademark community’s year—and I’m proud to be part of such a dedicated, hard-working, and fun community.




Although our time in Barcelona has concluded, there are still a lot more upcoming events in 2017—so save the dates on your calendar!



















If you are still in the Fira Gran Via, secure your spot for next year’s Annual Meeting before 2:00 pm today and save 10%! Visit the Registration Desk to learn more.




Join me this evening at the Grand Finale at Barceloneta Beach to toast ourselves for a successful 2017 Annual Meeting!







Published: 5/24/2017 3:53 AM
BlogTag: Annual Meeting; Annual Meeting Orientation; Annual Meeting Reception; Europe; Spain

Source: TM NEWS

Welcome to Barcelona!

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I am excited to be welcoming everyone to the 139th Annual Meeting in Barcelona, Spain. With more than 10,400 registrants from more than 150 countries, this is the largest and most diverse Annual Meeting in INTA history!




I encourage all registrants, over the next five days, to take advantage of everything the Annual Meeting and the beautiful city of Barcelona have to offer. All INTA activities will take place at the Fira Gran Via—this is where everyone will be! This year’s meeting includes a fantastic program featuring more than 300 customized educational sessions, 35 general educational sessions, more than 225 table topics, 20+ networking opportunities, and more than 100 committee meetings. The program covers pertinent trademark-related topics, including anticounterfeiting, data protection, new gTLDs, social media, and trademark protection in regional trade agreements, to name but a few.




A couple of highlights to mention: INTA has expanded the Anticounterfeiting Workshop to two days of dedicated programming for corporate members and government officials. New this year, the Lunch and Learn series, which features dynamic and innovative speakers from beyond the world of trademarks, is intended to bring a new dimension and perspective to our IP discussions. Come hungry…for food and insight! Also on Tuesday, at 3:15 pm, join us for an open discussion with IP Offices, focusing on electronic filings and transactions, customer education initiatives, and more.




Of course, I hope everyone has marked their calendar for the Opening Ceremony, this Sunday at 4:00 pm. I’ll be speaking alongside INTA CEO Etienne Sanz de Acedo and Annual Meeting Co-Chairs Jomarie Fredericks and Slobodan Petosevic. I’m personally excited to hear the keynote address from Íñigo Méndez de Vigo, Spain’s Minister of Education, Culture and Sport. Mr. Méndez de Vigo will share with us his thoughts on the future of Europe and IP—a very timely discussion.




To conclude the week, we’ll all loosen our ties and let our hair down at the Grand Finale, taking place on Wednesday evening on Barceloneta Beach. It will be a beautiful Barcelona night to conclude what promises to be a successful week of education, networking, and fun!




And to those of you who are attending your first Annual Meeting: Take advantage of everything! Spain may be the home of the siesta, but there will be plenty of time to sleep once what is sure to be the busiest week for you this year has concluded! More important, remember that INTA is a community. This is my 15th Annual Meeting, and more than anything, it feels like home! Welcome to the INTA family!




Published: 5/20/2017 5:05 AM
BlogTag: Annual Meeting; Annual Meeting Orientation; Annual Meeting Reception; Spain; Europe

Source: TM NEWS