Category Archives: Trademark Blog

Kicking Off 2018 with INTA Week


INTA Staff during INTA Week 
​I am truly honored and proud to serve you all as INTA President this year. 

My involvement at INTA started 18 years ago. Over the years, I’ve participated on many different committees, project teams, and, eventually, the Board of Directors. These varied experiences have provided me with a strong foundation to lead the Association through its first year with the new 2018–2021 Strategic Plan. In the January 15 INTA Bulletin, I shared with you all my priorities for the year and my vision for our community. 

To kick off my year as President, I traveled to the INTA headquarters in New York City for “INTA week.” In a newly established INTA tradition, all of the international staff travel to New York for a week of in-person meetings, team building… and a little fun! This is the third year that all members of the INTA staff have come together for INTA week. It was an extremely busy and productive five days, setting the tone for the year ahead in INTA style! As a newcomer to INTA week, the enthusiasm is contagious. It was like a family reunion in the office with positive energy radiating throughout the hallways. 

During this time, I had the opportunity to meet with the various departments, including education, finance and administration, marketing and communication, legal resources, external relations, membership, policy, and our regional representative offices. Talk about information overload—I learned so much! It was humbling to see just how knowledgeable, strategic, and dedicated the staff are. It was also very insightful to learn from staff who oversee the myriad of initiatives we will undertake in 2018 and to hear how they will work with the many member volunteers to implement the goals of our new strategic plan. We’re in good hands! 

StaffGiveBackBlog 020118.jpgOf course, we took some breaks from our work too—as part of the team-building program, staff spent time filling backpacks with winter necessities (i.e., hats, gloves, energy bars, etc.) for those in need this winter season in New York City. These have been given to a local charity called Care for the Homeless. It was a great to watch staff come together to give back. This is an Association with heart. 

While I learned a lot about the staff and their work, I also took some time to share with them a little bit more about me, which I plan to do over the course of the year with the membership at large. INTA is a community, and I have been fortunate to make so many wonderful friends throughout my many years as a member. For those of you whom I haven’t had the chance to meet, I’d encourage you to stop me in my travels over the next year and introduce yourselves or simply say “hi” in the hallways of INTA’s Annual Meeting in May

I am your President this year, and I will work to make sure that your voices are heard. I’ll leave you all with my welcome video so that you can learn a bit more about my professional career, my involvement with INTA, and my thoughts on the year ahead.

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Published: 2/1/2018 12:32 PM

Source: TM NEWS

The Economic Impacts of Counterfeiting and Piracy


​The Economic Impacts of Counterfeiting and Piracy, a report commissioned by INTA and ICC-BASCAP, builds on the findings of a 2016 report by the OECD and EUIPO that looked at the scope of counterfeiting and piracy in international trade. 

INTA produced the below educational video to promote the study. The video introduces the concept of counterfeiting, explains its negative social and economic impacts, and ends with calls to action for government officials, business leaders, and consumers. The video has also been incorporated into an interactive exhibit on trademark education and counterfeiting the National Inventor’s Hall of Fame​ in Alexandria, Virginia. Approximately 30,000 visitors are expected to see the display, which runs through May 2019.

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Category: Counterfeiting
Published: 2/1/2018 9:45 AM
BlogTag: Counterfeit; Counterfeiting; Unreal

Source: TM NEWS

The Unreal Campaign Reaches More Students in the Cayman Islands


unreal_generic_sliderblog011018.jpgOn November 22, 2017, Kenyah Pinnock and Lisa Chin-Forde, legal assistants at HSM IP Ltd., presented INTA’s Unreal Campaign to a class of 20 Creative Media and Business students between 15- and 16-years-old at the Cayman Islands Further Education Centre (“CIFEC”). CIFEC is a school dedicated to offering students continuing opportunities after Year 12 and is committed to inspiring all students to develop the knowledge, skills, and understanding to equip them for success in the wider world. 

Kenyah Pinnock started off the presentation by explaining the concepts of trademarks and counterfeiting and providing some background on the Unreal Campaign and its purpose. “I gave the students examples of the different types of trademarks, including words, designs, trade get-ups, and nontraditional marks,” Kenyah said. “I impressed upon the students the importance of trademarks to both consumers and companies. I think that they found it most interesting to hear how under certain circumstances even the shape of a buildings can be registered as a trademark.”  

Lisa Chin-Forde delivered the second part of the presentation, which focused on counterfeiting and engaged the students in a lively game of “Real vs. Fake.” The students actively took part in discussions about the concept of counterfeiting and the importance of observing and enforcing trademark and anticounterfeiting legislation.  Lisa said, “All in all, we seemed to get through to the students the necessity of making smart purchasing choices as consumers and making sure that they are purchasing real branded goods rather than counterfeit goods. After we had delivered our full presentation, the students and teachers were kind enough to thank us personally for lending our time to educate them on such an important topic. It was a very rewarding experience.” 

Owing to its heritage and geographical position, the Cayman Islands enjoys access to a vast number of brands from around the world, including those from the Caribbean, the United Kingdom, and the United States. At HSM, we passionately believe in the importance of IP education, so it was rewarding as well as fun to spend a morning raising awareness of the negative impact of counterfeiting on communities large and small. We look forward to delivering our next Unreal presentation and spreading the message even further! 

Thank you to our 2017 sponsors for making this event possible. Learn about the 2018 sponsorship program today! 

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Category: Counterfeiting
Published: 1/11/2018 5:50 AM
BlogTag: Unreal; Unreal Campaign; Unreal Sponsorship Program

Source: TM NEWS

Submit Your Papers for the Ladas Memorial Award Competition by January 19, 2018!


2018_ladas_blog011918.jpgSponsored by the law firm of Ladas & Parry LLP, the Ladas Memorial Award Competition was established in memory of the outstanding contributions to international intellectual property law made by the distinguished practitioner and author Stephen P. Ladas. This yearly award for academics, students, and practitioners interested in trademark law is presented in Student and Professional categories for a paper on trademark law or a matter that directly relates to or affects trademark law. 

Student Category

Authors must be enrolled as either full- or part-time law or graduate school students. For students outside the United States, university enrollment is acceptable. 

Professional Category

Authors may be legal practitioners, business professionals, and/or academics. No restrictions regarding level of experience or years in practice apply. 


Award winners will be announced in March 2018! Student winners receive US $2,500 each and professional winners receive a set of Stephen P. Ladas’ three-volume treatise. Each winner also receives a free registration to INTA’s 2018 Annual Meeting. 

To complete an application, to submit your paper(s), and for the official rules, visit

Email with questions.

Category: Academics
Published: 1/9/2018 9:53 AM
BlogTag: Ladas Award; Ladas Memorial Award Project Team; Academic Committee

Source: TM NEWS

Amendments to Common Regulations Took Effect November 1, 2018


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A number of amendments to the Common Regulations under the Madrid Agreement and Protocol entered into force on November 1, 2017. 

What you need to know

Although the scope of amendments covers a wide range of topics, trademark owners and users of the Madrid System will benefit directly from three key changes: 

1. Voluntary description of a mark (Rule 9)

Certain countries (such as the United States and India) require applicants to provide a description of their mark in an international trademark application (Form MM2). This may be the case where the trademark is represented in “non-standard” or non-Latin characters. Applicants who fail to provide the required description can find themselves dealing with an unexpected provisional refusal. 

To help avoid the risk of this type of provisional refusal, you now have the opportunity to include a voluntary description of your mark in an international application or subsequent designation

This means that an international application:

  • must include, if required by the office of origin, the same description of the mark contained in the basic application or registration (i.e., in the “basic mark”); and
  • may also contain any other description of the mark (a “voluntary description”).

Tip! A voluntary description can be added in a later subsequent designation only if one was not already included in the original international application or a previously recorded subsequent designation. 

International application Form MM2 and subsequent designation Form MM4 have been modified to allow you to include up to two descriptions for your trademark. These updates were available as of November 1, 2017.


To about find out more about the requirements for the description of a mark in your target market(s), use the Member Profiles Database
2. Appointment or cancellation of a representative (Rules 3, 25, and 32)
Beginning next month, each time you officially appoint or cancel a representative for your international trademark registration (i.e., each time a representative is recorded in the International Register in connection with your international trademark registration), WIPO will notify the IP offices in the countries/regions covered by your registration and publish the appointment or cancellation in the WIPO Gazette
3. Cancellation of subsequent designation of the United States caused by irregularities with Form MM18 (Rule 24(5)(c))
As of November 1, unremedied irregularities involving Form MM18 (Declaration of intention to use the mark in the United States) no longer lead to the abandonment of your subsequent designation request in your other target markets. 
Remember: if you use the Madrid System to expand the scope of your international registration to cover the United States, you are required to file an additional form—Form MM18 (Declaration of intention to use the mark)—with your subsequent designation request. 
If an irregularity that relates only to Form MM18 is found during WIPO’s examination, and this irregularity is not remedied within three months, only the designation of the United States will be cancelled. Any other countries/regions included in your request will no longer be affected.
The changes outlined above, as well as additional amendments aimed at assisting the IP offices of Madrid System members, will be available in an upcoming Information Notice (2017/17). 
Questions or comments?
More information

Category: Europe
Published: 12/19/2017 6:25 AM
BlogTag: Madrid Protocol

Source: TM NEWS

INTA Member Resources: Don’t Miss Out!


publicresources_470x246blog.jpgDid you know that there is an incredible wealth of resources on the INTA website? INTA’s committees and project teams have worked tirelessly to analyze and summarize trademark practices, procedures, and precedent throughout the world, and the fruits of their labor are available to you on the INTA website. Have you ever wanted to know which non-traditional marks are recognized in different jurisdictions? Would you like to see a country-by-country comparison of trademark protection essentials? Just log on!

Here are some examples of the amazing resources you will find:

Searchable Guides:

  • Country Guides: A searchable guide of country profiles offering basic, practical information on: trademark filing, prosecution, registration, and maintenance. 
  • U.S. State Trademark and Unfair Competition Law: A comprehensive source for facts, commentary, and analysis on U.S. state trademark and unfair competition law.
  • Enforcement: An International Litigation Guide: A searchable guide providing information on the many facets of trademark litigation, including: pre-filing requirements; claims for infringement of registered and unregistered marks; emergency measures; early resolution of litigation; evidence; trials and oral hearings; judgment and final orders; post-judgment issues; costs of litigation; and remedies. 
  • International Opposition Guide: A searchable guide of country profiles on the structure of trademark opposition practice and procedure, including: general provisions, applicable grounds, alternatives to opposition, opponent issues, filing requirements, post-filing stages, and procedures. 
  • Trade Dress: International Practice & Procedures: A searchable guide of comprehensive country profiles on trade dress protection and enforcement that clarify boundaries of protection of trade dress afforded by trademark, design right, copyright, and patent law and navigate the complexities of enforcing trade dress rights, including available causes of action, standing, jurisdiction, remedies, and defenses, including hundreds of separately searchable exhibits. 
  • Geographical Indications, Certification Marks, and Collective Marks: A searchable guide of basic, practical information on protection for geographical indications, certification marks, and collective marks. 
  • Practitioner’s Guide to the Madrid Agreement and Madrid Protocol: A searchable guide providing practical information on the local application of both treaties in the member countries covering practice and procedure in obtaining, maintaining, licensing, and enforcing registrations obtained through the Madrid System and detailed information about how each jurisdiction treats marks extending to it.
  • Trademark Cancellations: A searchable guide that provides practical information on trademark cancellation practice and procedure in country profiles covering topics including: availability of cancellation proceedings, applicable grounds, venue for bringing such proceedings, representation, time frames, estimated costs, and rights of appeal.

Charts, Maps & Other Visual Aids: 

And More:

Published: 11/3/2017 12:21 PM

Source: TM NEWS

INTA’s Leadership Meeting: Sessions Taught by Harvard Law School Executive Education


2017_lm_530x290_hpsliderblog11117.jpgOn November 7th, from noon until 1:30, Harvard Law School professors Scott A. Westfahl and William “Terry” W. Fisher will join INTA’s annual Leadership Meeting to engage participants in leadership discussions through interactive, business-school style cases as part of the Harvard Law School Executive Education: Development of Professionals Workshop. Professor Westfahl and Professor Fisher’s sessions offer a model of pedagogy that is embodied at Harvard Law School Executive Education (“HLS Executive Education”). 

The program curriculums at HLS Executive Education incorporate numerous case studies, as this teaching method offers participants exposure to real-world issues and helps them work through possible approaches and solutions to the current and foreseeable challenges in the global legal profession. At the HLS Executive Education Workshop, Professors Westfahl and Fisher will lead participants in sessions that will take a deep dive into the challenges associated with providing feedback and protecting intellectual property, respectively, through two case studies: (1) Rob Parson at Morgan Stanley, and (2) Intellectual Property Strategy at North Technology Group.

The Importance of Feedback

Professor Westfahl will teach the nuanced and complex Rob Parson at Morgan Stanley case to examine the critical role of feedback at an individual, departmental, and organizational level. The case follows the protagonist, Rob Parson, who is a star producer in Morgan Stanley’s Capital Markets division and has been recruited from a competitor the prior year. Parson’s reviews from the 360-degree performance evaluation process reveal that he has been having difficulty adapting to the firm’s culture, and his manager, Paul Nasr, faces the difficult decision of whether to promote Parson to managing director. The case allows participants to explore the challenges associated with performance appraisal and development of professionals.

Intellectual Property and Strengthening Competitive Positions

Professor Fisher will teach the Intellectual Property Strategy at North Technology Group case to examine the challenges that knowledge-intensive organizations face as they seek to protect their intellectual property. The case centers around North Sails, the world’s leading sailmaker. The company commands a global market share of more than 50%, but currently uses neither patents nor copyright to protect its technology. CEO Tom Whidden needs to consider how to best defend the company’s leading position. By highlighting the costs and benefits of patents and copyright, the case points to a challenge that is common across many companies: their most valuable assets are largely intangible, and these assets cannot easily be pinned down and protected. 

More About Harvard Law School Executive Education

HLS Executive Education is an organization dedicated to: (1) developing lawyers as leaders to strengthen the legal profession; (2) incubating innovative approaches to lawyer and law student development and education; and (3) ultimately helping leaders and professionals globally to make a difference through truly understanding the legal frameworks and context in which they act. HLS Executive Education offers unique open enrollment programs throughout the year—for early-stage equity partners, senior law firm leaders, and general counsel/in house lawyers—in addition to custom programs designed for particular firms or corporate law departments. Led by Harvard faculty and esteemed guests who have both academic and practice expertise, the programs at HLS Executive Education provide participants with critical perspectives, tools, and frameworks, along with the key skills required to lead their organizations in the evolving global legal profession. 

Published: 11/1/2017 9:16 AM
BlogTag: Leadership Meeting

Source: TM NEWS

Brands, Business, and Good Karma?


INTA_brand_authenticity_main_300blog.jpgThose who know me can imagine that I was excited about the announcement that, beginning with its Spring–Summer collection 2018, Gucci is going fur free. Why is this important enough to justify even a report on CNN? Because Gucci is one of the most iconic and revered traditional fashion brands of all times, and yet it seems the brand has heard the voice of its consumers and fans who, as part of a more mindful consumerism, are asking for change and voting with their wallet to support brands responsive to these requests and the new realities. 

And Gucci is not the only example of Brands that have embraced the new reality that doing good can go hand in hand with doing well financially, and that “being the change…” may create not only great karma but also a robust bottom line. Others, too, know the benefits of corporate social responsibility (CSR) and sustainability. There are the ones who always knew—the trailblazers such as Patagonia, which is true to its slogan “Create the best product, cause no unnecessary harm,” and TOMS, the creator of the “One for One” economy, which half the world predicted would fail when it launched but which has, in fact, thrived and in the course of its success has provided millions of children in need with shoes. But good karma is going mainstream: Adidas has developed a shoe made from recycled plastic bottles and material recovered from abandoned gill nets in the ocean; the “B Team” was created by industry leaders such as Unilever, Virgin, Allianz Group, Salesforce, and Natura to change the way we do business “for the well-being of people and planet”; and Leonardo DiCaprio just joined Bill Gates as an investor in meat alternatives produced by Beyond Meat. 

In conclusion, brands are investing in good karma by becoming the leaders of change, and we IP lawyers need to be able to address CSR-related issues and be the best strategic partners to these businesses we can be. CSR and sustainability are quickly becoming among the most important factors permeating every type of business decision, including the ones we thought were exclusive to the specialized (and, for outsiders, sometimes slightly wacky and incomprehensible) world of IP lawyers. And that is exactly what our Brand Authenticity Conference is about—come join us in Berlin on November 30 and December 1​—our exciting speakers will tell you all about the intersection of brands and CSR and…good karma. 

Category: Programs; Europe
Published: 11/1/2017 6:38 AM

Source: TM NEWS

Hot Topic: Corporate Social Responsibility


Murray_275_blog102017.jpgWith corporate social responsibility (CSR) increasingly on the minds of both consumers and brand owners, the International Trademark Association’s October 15 issue of the INTA Bulletin features an interview with Jessica Murray, Director of Intellectual Property and Corporate Social Responsibility (CSR) at TOMS Shoes, Inc. The wide-ranging interview includes insight into TOMS’ well-known CSR program, which began with its “One for One” shoe program, and her role in INTA’s upcoming Brand Authenticity conference in Berlin, which she hopes will “reshape the way we look at our brands and CSR programs around the world.”  

Here are some excerpts:  

  • “TOMS is really about improving the lives of others through business. Today, our program is far more than shoe giving: we give water, sight [via prescription glasses or medical treatment], bullying prevention training, and safe birth training in over 70 countries. The program is rooted in this idea that we really need to push ourselves to do more to improve life through business and push others to do the same.”
  • “Today, a brand is asked to be more than just a logo or its intellectual property; a brand must define itself as an organization, and CSR initiatives become the heart and soul of this definition. TOMS’ social impact is part of its mission statement, but most companies today are being asked by consumers to acknowledge their social and environmental impact, putting a lens on the authenticity of the brand.”
  • “We want to reshape the way we look at our brands and CSR programs across the world with this [Brand Authenticity] conference … It’s going to be a unique and exciting program, but we wanted to do it in a way that is understandable to people who aren’t used to these cross-functions … We want small firms, brand owners, vendors, and whoever attends to take a more holistic view of authenticity.” 
  • “Brand owners [should attend this conference], but it’s not just for this group—law firms can bring back education to firms and clients, vendors can understand more about the challenges brand owners face and how to find solutions to them. There are attendees joining us who are experts, even pioneers in this field, while others are just starting to navigate these difficult questions. I see it as an olive branch in an effort to form a larger network to support each other as we push to find answers to these evolving brand authenticity questions.”

Category: Programs
Published: 10/20/2017 10:33 AM

Source: TM NEWS

INTA's Leadership Meeting: Exciting Educational Sessions


The switch of the Leadership Meeting from the warmer climes to a cooler Washington bring a refreshing change to a meeting that many attendees consider a more low-key, intimate gathering than the much larger Annual Meeting. 

With four days of educational sessions and networking opportunities this meeting is a great way to wrap up the 2016-2017 committee term and begin planning for the next year and implementation of INTA’s 2018-2021 strategic plan. 

A quick look at the program makes it clear that there are quite a few interesting sessions. One such session is The Impact of Plain Packaging and Brand Restrictions on IP Rights. The issue of plain packaging is gaining in both importance and concern, and a detailed discussion on the topic is highly relevant at this time.

The panel representing both industry and practice will consider the ramifications of Draconian plain packaging regulations, which are severely impinging on IP rights across several industries.

Governments in numerous jurisdictions have adopted, or are in the process of adopting, plain packaging regimes as well as more highly standardized packaging regulations, which makes this a timely discussion for trademark owners.  

In many cases, the argument boils down to health policy versus trademark rights. Any legislation that prohibits or severely restricts the use of trademarks and prevents them from fulfilling their functions in the market place is, in theory, detrimental to consumers, trademark owners, and the economic well-being (e.g. jobs) of society in general. 

The denial of trademark rights, including the denial of the right to use trademarks, violates the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) as well as the Paris Convention. Categorizing trademarks as a personal property right elevates them to the same level of respect as other forms of property rights and limits the government in its ability to restrict or forbid the use of marks.  

Plain packaging laws severely impair the functions of trademarks, create a dangerous precedent for other sectors, increase the risk of consumer confusion, violate international treaty obligations (as well as the laws of an individual jurisdiction), limit competition, and significantly increase the risk of counterfeit products being made available in the market.  We as a trademark community must object to overly restrictive measures that prohibit or restrict the use of trademarks and other brand imagery.

This panel takes place on Wednesday, November 8, 10:20 am – 11:20 am. The panel will look at the relevant case law. Although plain packaging judgments to date relate almost entirely to the tobacco industry, insight will be given to what is on the global stage with respect to further brand restrictions. The panel will also consider the impact of these restrictions and whether they are working or not. 

To discuss plain packaging, and other hot topics such as the Madrid Protocol, new gTLDs and influencing policy makers, please join us at the upcoming Leadership Meeting for what promises to be an excellent event.  

Published: 10/13/2017 4:57 AM

Source: TM NEWS