daily news · 2012. 5. 8. · inta on facebook, twitter and linkedin. the annual meeting’s...

I n the past month the Madrid System forinternational trademark registrationreceived a big boost with the Philippines

joining in April and Colombia and Mexicoon the cusp of becoming members.

On March 28, the Constitutional Courtin Colombia ruled that the law approvingthe country’s accession was enforceable,removing the last hurdle to accession. Anofficial was later quoted as saying theinstrument of accession would be depositedwith WIPO in June. Designations wouldthen become available three months later.

On April 25, the Mexican Senate unani-mously voted to approve the legislation thatwill allow it to join. And the following weekthe Philippines said it had deposited itsinstrument of accession with WIPO.

The last countries to join the MadridSystem were Israel and Kazakhstan in 2010,and before that Liberia in 2009 and

Madagascar in 2008. More important isthat Colombia would be the first countryother than Cuba to accede in LatinAmerica, which has long been the biggestregional gap in the Madrid system.Countries such as Argentina and Brazilmight then be encouraged to acceleratetheir legislative processes to join the treatyto which their neighbors and trading part-

ners have become parties.Mexico also is significant given the size

of its economy. “Mexico is a G20 countryso its membership would be a big step forMadrid,” said Laura Cruz, ExternalRelations Manager, Latin America at INTA.“There are also positive signs in theDominican Republic, and Peru is interestedtoo. We are seeing a trend in the region ofgovernments opening up markets to encour-age global trade, and recognizing how theMadrid Protocol can support that.”

WIPO will hold its annual MadridSystem Users Meeting tomorrow morningfrom 11:00 am until 2:00 pm in Room 103AB, with a representative from thePhilippines flying in to discuss its recentaccession. In a newly expanded session,there will also be more time to ask ques-tions of the three other invited offices—Egypt, Switzerland and the EU.

T his year’s INTA President hopes to usehis term to counter what he refers toas widespread “anti-IP sentiment.”

Gregg Marrazzo, who is Senior VicePresident and Deputy General Counsel at TheEstée Lauder Companies, manages a portfolioof 21,000 trade marks covering more than 25brands. In an interview with the INTA DailyNews, he talks about how controversy overthe Stop Online Piracy Act (SOPA) and

Protect IP Act (PIPA) risks giving intellectualproperty a permanently negative connotation.

“That’s not going to change anytimesoon, and INTA is really uniquely situated toaddress some of those concerns,” he says.

Marrazzo, whose wife owns a small busi-ness, says “your brand is the way you commu-nicate” and stresses that INTA has the oppor-tunity to educate the public. “Underneath allthis, I really do believe that the vast majority

of people would say thatcopying someone’s intel-lectual property iswrong,” he says, adding:“So the question is, howdo we provide peoplewith the facts? And Ithink that is what weneed to address.”

Interview with Gregg Marrazzo: pages 4-5More about INTA’s work in Washington: page 3

News

David Warr onINTA’s newofficePage 3

Interview

Sarah Deutschof VerizonCommunicationsPage 6

Feature

Become a TVstar at theGrand Finale6

News 2-3 | Interview 6 | Quiz 9 | Calendar 8-9 | Exhibitors 14 | Schedule 16 | Weather 79°F

O n Tuesday, INTA will unveil a con-sumer awareness campaign aimedat educating teenagers about the

potential harms and risks of counterfeitgoods. It’s an Association-wide and long-term goal to expand the program to otherparts of the world. For now, the campaignis focused on 14-18 year-olds in the U.S.—an important age group, says JessicaTuquero, INTA’s CommunicationsManager. “Their purchasing power is justdeveloping,” Tuquero adds. “They’re goingto be the next generation of consumers. It’s

the perfect age to reach them and arm themwith as much information on this issue sothe next time they’re approached by coun-terfeiters, they understand what’s at stake.”

INTA teamed up with marketing firmAMP Agency to gauge how teens perceivedcounterfeit goods through focus groups inNew York and Boston.Teens from other citiesincluding Los Angeles,Chicago and Atlanta com-pleted assignments andquestionnaires to let INTA

know how to best educate their peers.“One of the most interesting things is thatthey prefer peer-to-peer information,”Tuquero says. “They appreciate their peers’opinions and feedback. They respondednegatively against any celebrity spokesper-son. The teens suggested they would bestlearn through ads, video diaries and simu-lations of buying counterfeit products.

Through the research, INTA learned thefollowing: social media is asource of information andinfluence for teens, thecounterfeit goods theycited most were fashionand electronics, and many

of them had either bought or knew someonewho had bought counterfeit products. “Atfirst, we didn’t see any remorse from theteenagers about buying counterfeit goods.There’s a perception out there that it’s a vic-timless crime,” Tuquero says. “But once weeducated small groups about some harmfuleffects of counterfeit goods, they understoodit a bit more and said they wanted to thinktwice before buying counterfeit goods.”

The campaign will reach teens throughsocial media and partnerships with educa-tors. At Tuesday’s press conference, INTAPresident Gregg Marrazzo will deliverremarks. High school students from theWashington, D.C. area will also attend.

Madrid System set to expand

INTA campaign targets teens

A mission to educate

More than 9,300 attendees registeredonline for this year’s Annual Meeting.With more expected to register onsite,this Annual Meeting is set to be the bestattended INTA event ever.

Countries with more than 100 regis-trants (as of April 20):

173

167

140

133

132

South Korea 121

Argentina 102

U.S. 3,424

UK 446

Germany 380

China 342

Canada 307

France 228

Japan 220

India 212

Mexico 212

Switzerland

Brazil

Australia

Italy

Spain

Attendanceset to behighest ever

DailyNewsPublished by

www.inta.org www.managingip.com

Saturday, May 5, 2012 134th Annual Meeting, Washington D.C.

10th Anniversary

WIPO Deputy Director General BinyingWang will take part in tomorrow’sMadrid System Users Meeting

INTA-TVWhen INTA-TV debuted at the AnnualMeeting last year in San Francisco, itwas an experiment. INTACommunications Manager JessicaTuquero says the Association wanted tosee how attendees would respond to thededicated TV channel. “It got greatattendee feedback,” she says. “Peoplethought it was interesting and that it wasfun to watch what had happened the daybefore.”

This year, INTA-TV reporters will havemore room for creativity. Attendees shouldexpect more in-depth interviews, particu-larly with government officials.

INTA-TV will be aired throughout theWalter E. Washington ConventionCenter, the hotels affiliated with theAnnual Meeting, on the INTA website,and INTA’s YouTube channel atINTA_TV1.

Social mediaAttendees can stay updated on theAnnual Meeting through INTA’s varioussocial media accounts. For interestingtidbits on the ground, room changes andannouncements, attendees should visitINTA on Facebook, Twitter andLinkedIn. The Annual Meeting’s hashtagon Twitter is #INTADC, which willensure everyone’s tweets will show up atthe site’s hospitality area.

Portal The INTA portal holds the course materi-als and speaker bios for all of the ses-sions. For the first time ever, the attendeedirectory is entirely online this year andmay be accessed at the portal. A new fea-ture will show when attendees havechecked in at registration. A copy of thefinal program, with all of the roomnames, floor plans and DC sites, is also

online. “It’s a one-stop shop for all of theinformation they’ll need in DC,” saysINTA program development managerSarah Bourke O’Connell.

INTA appAccessible on iPhone, Android andBlackBerry devices, the INTA app containseverything from the full schedule with allof the sessions and receptions, to theattendee directory. A new feature this yearallows attendees to make their own per-sonal schedules, with client meetings anddinner dates, on the app.

INTA storeLaunched in January, the INTA store hasavailable for purchase T-shirts, caps, totebags, polos and jackets. Attendees mayplace orders at the INTA booth, where the2012 Annual Meeting T-shirt will be avail-able onsite. To spread the message, a photocontest is encouraging members to takepictures of themselves doing their favoriteactivities while wearing INTA gear. “Wewant to see what members do during theirfree time,” says Tuquero.

The pictures will be posted on INTA’s

Facebook page, and the winner will win anew iPad tablet. The deadline to enter thecontest is June 29, and the winner will beannounced the week of July 2.

INTA’s Mentor ProgramA one-year commitment for trademarkprofessionals, professors and law students,the Mentor Program features two types ofexperiences: the INTA LeadershipDevelopment, which helps participantsdevelop committee leadership skills andprogress within the association, andProfessional Development, in which amentor will offer career guidance to amentee.

INTA’s senior academic programs coor-dinator, Carin Diep-Dixon, says mentee-applicants will be asked to indicatewhether they prefer a mentor from theirregion, a male or female mentor, theirareas of interest and expertise, andwhether they’re a law student or a lawyer.Mentors are asked the same questions aswell as what they’re looking for in amentee.

To sign on, members must complete anonline application at applications.inta.org.

INTA has developed several new features and programsfor members. Here are some of the things theAssociation has in store.

News New programming

INTA Da i ly News Saturday, May 5 2012 www.manag ing ip .com2

Features for 2012

T urn right out of the ConventionCenter, walk five blocks down MStreet, take a right on to

Connecticut Avenue and walk up as far asthe statue of Doctor John Witherspoon.

Congratulations: you’ve just arrived atINTA’s latest office location.

While the Association has long beenactive in Washington DC thanks to itsPolitical Action Committee, and has had

consultants for many years, the opening ofthe office—INTA’s fourth worldwide—sig-nalled a greater engagement with lobbyingand government relations. It coincidedwith the hiring of David Warr as

Washington Representative. He is joined inthe office by staff member Michelle King,who liaises with the USPTO, while con-sultant Jon Kent continues to advise ongovernment relations. The office also pro-

vides a base for INTA staff visitingWashington DC from New York.

“INTA wanted to be able to have a per-manent staff as well as just a consultant,”says Warr, who joined INTA from Bristol-Myers Squibb in February 2011. He addsthat he spends much of his time on the phonetalking to government officials andCongressional staff members, as well asgoing to social and networking events in thecity. The office is close to Dupont Circle andjust 15 minutes walk from the White House.“You have to be able to build relationshipsindividually agency-by-agency,” says Warr.

Many trade associations are based inWashington DC, but INTA has been head-quartered in New York since its foundationin 1878. It now has offices in Brussels andShanghai, and the new Washington presencemakes it easier for the Association to haveregular contact with members of Congressas well as organizations such as theDepartment of Commerce, the Departmentof State, the Federal Trade Commission, theOffice of the United States TradeRepresentative (USTR) and of course theUSPTO. Warr has connections with many ofthese agencies from his time at BMS, wherehe was Director, International GovernmentAffairs and Policy. “We have an open doorto the USTR, and we’re developing a rela-tionship with the FTC,” he says.

The increased engagement is necessary at atime when legislative action affecting trade-mark owners is increasing, with discussionson anticounterfeiting bills, gTLD expansionand USPTO funding just some of the exam-ples of topical issues. Warr emphasizes theneed for relevant associations to build coali-tions where they agree on policies, and try tobuild broad support. He says one of the les-sons of the recent failure of the SOPA andPIPA bills is that antipiracy efforts need to be“rebranded”. He adds: “We need to empha-size that it’s about consumer protection andsafety if we want to win wider support.”

News Washington office

www.manag ing ip .com INTA Da i ly News Saturday, May 5 2012 3

INTA’s work in Washington

David Warr

Profile Gregg Marrazzo, INTA President


G regg Marrazzo’s introduction to trademark lawevokes the plot of a classic romance novel.Running out of money as a budding young law

student, Marrazzo started working full time in the legaldepartment of Gulf & Western, where he finally met thecareer of his dreams. “One of the things I was doing therewas trademark work, and I just fell in love with it,” recol-lects this year’s INTA President.

That love is rooted primarily in the marriage of law andbusiness. “There’s such a connection between the businessside and the legal side,” says Marrazzo. “There’s some-thing so wonderful about working on a product, seeing iton counter and knowing that you had something to dowith getting it there.”

Perhaps it is partly this romantic view of trademark workthat brought Marrazzo to where he is today. As Senior VicePresident and Deputy General Counsel at The Estée LauderCompanies, Marrazzo and his brands know a thing or twoabout romance. The company’s portfolio of 21,000 trade-marks and more than 25 brands includes names such as EstéeLauder, Clinque, MAC and Bobby Brown. “It’s run as almost25 separate businesses because each of our brands appeals toa different segment of the population,” says Marrazzo.

And Marrazzo’s responsibilities at Estée Lauder donot end with trademarks. He is also responsible forglobal patent and copyright protection and enforce-ment, since the company integrated those departmentsinto one IP group in July last year. “It is a trend with-in the broader IP community to try to get more collab-oration between patents, copyrights and trademarks sothat you can provide your clients with a bundle ofrights,” says Marrazzo. While he admits there’s been“a bit of a learning curve on the technical side”, thisapproach helps him to “look at things more holistical-ly,” he says.

Curbing counterfeitsThis holistic approach is applied in other ways as well.From flea markets to rogue websites, luxury goods arebeing copied at a faster rate than ever, requiring ever moreinnovative enforcement strategies. While policing suchactivity and taking direct action is important, Marrazzosays The Estée Lauder Companies try to focus on the bigpicture. “We try to take a more broad-based approach anddevelop relationships with the police, the StateAdministration for Industry & Commerce (AIC) in Chinaand the trademark offices in China and other countries,”says Marrazzo. “I’ve been using the word holistic a lot, butthat seems to be the best approach. I think that by andlarge it’s better to be positive and ask for assistance insteadof pointing out the shortcomings of a particular adminis-tration’s efforts.”

Marrazzo is planning to extend that philosophy beyondThe Estée Lauder Companies to his tenure as INTAPresident, in order to counter what he refers to as wide-spread “anti-IP sentiment”. With the breakdown earlierthis year of legislative efforts to curb rogue sites via billssuch as the Stop Online Piracy Act (SOPA) and Protect IPAct (PIPA), the term intellectual property is in very real

The romance of trademarksINTA President Gregg Marrazzo is charged with protecting some of the biggest names in makeup, fashion andfragrance. He spoke with Eileen McDermott about curbing counterfeits post-SOPA, combating “anti-IP sentiment,”and the origins of his trademark romance.

“I really do believe that thevast majority of people wouldsay that copying someone’sintellectual property is wrong.”

danger of taking on a permanently negative connotation.“That’s not going to change anytime soon, and INTA isreally uniquely situated to address some of those con-cerns,” says Marrazzo.

Since the demise of SOPA and PIPA was at least partial-ly rooted in “a lack of understanding” on both sides, INTAhas the opportunity to educate, says Marrazzo.“Underneath all of this, I really do believe that the vastmajority of people would say that copying someone’s intel-lectual property is wrong. I don’t think there is much dis-pute. So the question is, how do we provide people withthe facts? And I think that is what we need to address.”

INTA’s roleTo help answer that question and more, one of Marrazzo’spresidential goals will be to provide forums for membersto discuss the options available for protecting trademarksafter SOPA and PIPA via webinars and seminars, as well asto help inform government. Says Marrazzo: “I think it’simportant for us to try to educate the public and help themunderstand that we’re not trying to overreach. A lot of it iseducational, and sorting through what happened.”

That applies outside of the US as well, as theAssociation tries to assist on international efforts to curbcounterfeits, such as the Anti-Counterfeiting TradeAgreement (ACTA). As the European Union considerssigning the agreement, INTA has urged the EU Court ofJustice to make a “considered and quick assessment ofACTA” in order to help counter the “heightened sense ofmistrust and misinformation that has proliferated in onlineconversations”.

Whatever the outcome on ACTA, Marrazzo is keen tofurther the internationalization of the Association duringhis presidency by continuing to meet with trademarkoffices from around the world, as well as through interna-tional programming and publications. This includesexpanding recent efforts to file amicus briefs outside of theUnited States. “Developing countries may not have theexpertise in IP or trademark law, so we can really helpthere by filing briefs and working with various judiciariesto help them understand and model laws,” says Marrazzo.

But doing so is not always a straightforward process.“One of the impediments we have is that there are a lot ofcourts for which an amicus process just isn’t in place, soyou have to either get one of the parties to include your fil-ing with one of their papers or maybe write a letter to thecourt,” he explains.

Despite these difficulties, in 2011 INTA submittedbriefs to courts in Australia, Canada, the EU, Indonesia,Paraguay and Moscow.

Ready to reignIn Marrazzo’s role as this year’s INTA President, heremains inspired by the early “connection” he felt to trade-mark work and among people in the trademark bar, andlooks forward to the Annual Meeting as a chance to fosterfriendships, as well as business opportunities. “I madefriends early on at INTA that remain friends to this day.We can disagree vehemently about a position, yet we canstill enjoy one another’s company. I think that type ofcamaraderie goes a long way in helping to solve prob-lems.”

It is Marrazzo’s intention to share that camaraderie andlove of trademarks with the outside world and to demon-strate that strong trademark laws are in the public’s bestinterest. “To me that’s really important,” says Marrazzo.“My wife is a small business owner, and big or small, yourbrand is the way you communicate. You should be able toprotect it, as long as you do it properly.”

Profile Gregg Marrazzo, INTA President


Marrazzo leads a team of 20 at Estée Lauder, including ninelawyers, six paralegals and five administrative staff.

What is your role at Verizon?I’ve been at Verizon 21 years and am now Vice President& Associate General Counsel, Verizon Communications.It’s really my second law job. I worked at Morgan Lewisfor five years after graduation. When my daughter wasborn I began a part-time job at Bell Atlantic. After a num-ber of years, when the Internet began to hit and the issuesbecame more urgent, I switched to a full-time job here andhave been here through various mergers and re-namings.

I’m in charge of trademark, copyright, Internet policy andpatent licensing work for Verizon. The trademark practice isour bread and butter and it’s been fun protecting the Verizonbrand and getting to know people through INTA. We’ve gotabout 6000 marks. We used to have more but have prunedthe portfolio wisely. It’s about budget and making sure theassets we keep are the ones that make sense. You don’t wantto pay maintenance fees on things that aren’t strategic.

We look to get protected almost everywhere. Verizon’sbusiness is the former MCI and that is located in almostevery country in the world so we have global protectionfor the VERIZON brand and logo. The other major brandin the US is FIOS. That’s the name of our high-speedInternet and cable-type service.

Is enforcement a challenge?We don’t have a lot of counterfeiting. That would target ourmanufacturers more than us in the service industry. But we seea ton of infringements—both classical trademark infringe-ment and cybersquatting. We use the UDRP and the Anti-Cybersquatting Consumer Protection Act in the United States.

We’ve been thrilled with the results. Verizon spends US$3billion a year on advertising, so that’s more than the marketcapital of many large companies. As a result our brand isalso targeted by cybersquatters who seek to exploit con-sumer confusion. We’ve brought a number of lawsuits andACPA actions and built up a portfolio of domain names.We’ve then been able to measure the traffic of what we wonback. The names we got back resulted in 33 million new vis-itors to our website and over 300,000 sales a year. We meas-ure them the same way a cybersquatter measures them andhave been able to bring value back to our portfolio.

The key is we’re looking at which misspellings get hits.For example, Verizon could get hundreds of thousands ofhits a month. We redirect all the traffic back to the mainwebsite. We could easily own 100,000 to 200,000 domainnames. Some are not worth registering—they have to beworth the price of the registration fee.

Do you welcome the expansion of the domainname system?One of the benefits of being located in Washington is thatour legal department encourages an active policy role forits attorneys and you get the opportunity to work on inter-national issues as well.

Interview Sarah Deutsch


Two decades in the telecoms industrySarah Deutsch’s role at Verizon has changed over the 21 years she has beenthere, with the rise of the Internet and a series of corporate changes, as sheexplains to James Nurton.

Continued on page 10

Classified


DE SOLA PATE & BROWNAttorneys & CounselorsCaracas, Venezuela

Intellectual property attorneys specializing in trademarks, patents,copyrights, foreign investment, technology licensing, franchising,

trademark litigation and unfair competition.

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ProsecutionInfringementLitigationIP

8:00 am–12:00 pm

Mediation Training

(Day 3 (half day), Advance registration

required, CLE credit available)

8:00 am–5:00 pm

Academic Course on International

Trademark Law

(Day 2, Advance registration required, CLE

credit available)

8:30 am–4:00 pm

Tours

Depart from WCC unless otherwise noted on

individual confirmation

9:00 am–7:00 pm

Registration

Hospitality

10:00 am–12:00 pm

Committee Meetings

10:00 am–12:00 pm

Brunch Table Topics

11:00 am–1:00 pm

How to Integrate Real Life into Your

Trademark Class

Adjunct Professors Special Interest Group (SIG)

(Open to all attendees)

11:00 am–2:00 pm

Madrid System Users’ Meeting (MSUM)

Organized by World Intellectual Property

Organization (WIPO)

11:30 am–1:30 pm

Trademark Administrators Brunch

(Advance registration required)

11:30 am–4:30 pm

In-House Practitioners Luncheon and Workshop

(Exclusive to in-house practitioners only;

Advance registration required; CLE credit

available)

12:00 pm–5:00 pm

Exhibition Hall

12:15 pm–2:15 pm

Committee Meetings

12:30 pm–1:30 pm

INTA Annual Meeting Orientation

1:00 pm–3:00 pm

Luncheon Table Topics

2:00 pm–3:00 pm

Speed Networking

2:30 pm–4:30 pm

Committee Meetings

3:30 pm–4:45 pm

Rise and Shine: Getting the Most Out of

Your Committee Participation

5:00 pm–7:00 pm

Welcome Reception: Washington Reinvented

7:30 am–5:00 pm

Registration

Hospitality

8:00 am–10:00 am

Continental Breakfast

8:30 am–5:00 pm

Tours


individual confirmation

9:00 am–10:15 am

Opening Ceremonies and Keynote Address

INTA President’s Address

Gregg Marrazzo, 2012 President, International

Trademark Association, The Estée Lauder

Companies Inc. (United States)

Keynote Address

Leonard A. Lauder, Chairman Emeritus of The

Estée Lauder Companies Inc. (United States)

9:00 am–7:00 pm

Academic Day

10:00 am–4:00 pm

Exhibition Hall

10:15 am–12:15 pm

Committee Meetings

10:30 am–11:30 am

Speed Networking

10:30 am–11:45 am

Concurrent Sessions

CM01 Protection of Indigenous Rights: An

Increased Need

CM02 Exploring the Outer Limits of

Trademark Law

IM01 Industry Breakout: From the Frying Pan

into the Fire: Navigating Emerging Issues in

Cyberspace

WM01 How to Deal with Restrictions on

Advertising and Trademark Use in Regulated

Industries

(Attendance is first come, first served and

there is a limit of 100 attendees)

10:30 pm–4:30 pm

INTA/American Red Cross Blood Drive

12:00 pm–1:00 pm

Speed Networking

12:00 pm–1:15 pm

Concurrent Sessions

CM20 Trolling the Trademark Waters

CM21 The Great Dilution Debate: Fifteen Years

After Enactment, Has the Federal Trademark

Dilution Act Lived Up To Expectations?

RM20 Regional Update: European

Community (OHIM/ECJ)

RM21 Regional Update: Latin America

WM20 Practical Tips to Strengthen the

Relationship between In-House and External

Counsel



1:30 pm–2:30 pm

Speed Networking

1:30 pm–3:30 pm

Committee Meetings

1:30 pm–3:30 pm


1:30 pm–3:30 pm

Past Presidents Luncheon

(By invitation only)

3:00 pm–4:00 pm

Speed Networking

3:30 pm–5:30 pm

Committee Meetings

3:45 pm–5:00 pm

Concurrent Sessions

CM50 Trademarks and Industrial Designs: A

Balancing Act?

CM51 Doing the D.C. Shuffle: How Do the

Trademark Attorney, Lobbying and Ethics

Mix?

IM50 Industry Breakout: Trademark

Challenges and Opportunities in the

Pharmaceutical World

RM50 Regional Update: China, Japan, South

Korea

WM50 Traps for the Unwary in Transatlantic

Trademark Practice



4:30 pm–6:00 pm

INTA Political Action Committee (PAC)

Reception

(By invitation only to non-corporate INTA

Members whom are U.S. citizens or perma-

nent residents)

5:00 pm–7:00 pm

Academic and Young Practitioner Happy

Hour

5:30 pm–6:30 pm

India Reception


6:00 pm–7:00 pm

Non-Profit Organization Reception

(Open to Non-Profit INTA Members and Non-

Members only)

6:00 pm–7:00 pm

China Reception


9:00 pm–11:30 pm

President’s Dessert Reception


ACADEMIC DAY EVENTS

STUDENT TRACK: 9:00 am–7:00 pm

9:00 am–10:15 am

Getting Your Foot in the Door: Resume and

Cover Letter Writing for a Trademark Position

10:30 am–11:45 am

What to Say to Land the Job: How to

Answer the Tough Interview Questions

12:00 pm–1:30 pm

Getting Involved with INTA: Working Lunch

for Law Students

1:45 pm–3:00 pm

Networking 101

3:15 pm–4:30 pm

Careers in Trademark Law: A Panel

Discussion for Law Students

5:00 pm–7:00 pm


Hour

PROFESSOR TRACK: 9:00 am–7:00 pm

9:00 am–10:15 am

Opening Ceremonies and Keynote Address

10:30 am–11:45 am

Exploring the Outer Limits of Trademark Law

12:00 pm–1:30 pm

Professor Luncheon

2:00 pm–3:15 pm

Trademark Scholarship Symposium

(Session I)

Trademarks and the First Amendment

Likelihood of Confusion and Trademark

Strength

Foreign Equivalent and Personal Names

3:30 pm–4:45 pm

Trademark Scholarship Symposium

(Session 2)

Trademarks and the First Amendment

Likelihood of Confusion and Trademark

Strength

Foreign Equivalent and Personal Names

5:00 pm–7:00 pm


Hour

Sunday,May 6 Monday, May 7

Schedule


Actual style guides used by companies for the control oftheir internal and external branding?

Answer: Global Trademark Research, Corporate Style Guides

Visit www.inta.org/CorporateStyleGuide

7:30 am–5:00 pm

Registration

7:30 am–5:00 pm

Hospitality

8:00 am–10:00 am


Attention Non-Profit Organizations–Stop by

breakfast and join in on the conversation!

8:00 am–10:00 am

Committee Meetings

8:00 am–10:00 am

Breakfast Table Topics

8:30 am–10:00 am

INTA Roundtable Hosts Breakfast


8:00 am–4:00 pm

Tours


individual confirmation.

9:00 am–4:00 pm

Exhibition Hall

10:30 am–11:30 am

Speed Networking

10:00 am–12:00 pm

Association Brunch


10:15 am–11:30 am

Concurrent Sessions

CT02 Competitor’s Use of Keyword

Advertising and Search Engine Optimization

(SEO): Hey! They’re Using My Trademarks!

RT01 Regional Update: Europe

RT02 Regional Update: Southeast Asia,

Hong Kong, Australia and New Zealand

WT01 Alternative Approaches to Combating

Counterfeiters



11:45 am–1:00 pm

Concurrent Sessions

CT20 Reverse Confusion: Setting a Higher

Standard for the Likelihood of Confusion

Test

CT21 The Living Brand: Borderless

Extensions Limited Only by the Imagination

CT22 The Intersection of Trademark and

Publicity Rights with U.S. First Amendment

Free Speech Rights

RT20 Regional Update: India, Pakistan,

Middle East

WT20 The Evolving Nature of Ambush

Marketing



12:00 pm–1:00 pm

Speed Networking

1:15 pm–3:15 pm

Committee Meetings

1:15 pm–3:15 pm


1:30 pm–2:30 pm

Speed Networking

3:00 pm–4:00 pm

Speed Networking

3:30 pm–4:45 pm

Concurrent Sessions

CT50 Social Media–An Ever-Changing,

Challenging and Competitive World: How to

Provide Legal and Business Advice to

Clients

CT51 Copyright Law for Trademark Lawyers:

Copyrights in Logos, Packaging and Product

Designs

CT52 Appellations d’Origine: Made in

Europe

IT50 Industry Breakout: Consumer

Products—Don’t Mess With Our Family (of

Marks)!

3:30 pm–5:30 pm

Committee Meetings

5:00 pm–7:00 pm

In-House Practitioners Reception

(Exclusive to in-house practitioners only)

6:00 pm–7:00 pm

Government Officials Reception


7:30 am–2:00 pm

Registration

7:30 am–4:00 pm

Hospitality

8:00 am–10:00 am


8:00 am–10:00 am

Committee Meetings

8:00 am–10:00 am

Breakfast Table Topics

8:30 am–4:00 pm

Tours


individual confirmation.

10:00 am–2:00 pm

Exhibition Hall

10:15 am–11:30 am

Concurrent Sessions

CW01 Annual Review of U.S. Federal Case

Law and TTAB Developments

RW01 Regional Update: Africa

10:30 am–11:30 am

Speed Networking

11:45 am–1:00 pm

Concurrent Sessions

CW20 Trademarks 2.0: The Impending

Rebirth of the Intangible Asset

CW21 All Dressed Up, But Where to Go? The

Challenges of Proving and Defending Trade

Dress Claims

CW22 Registration and Protection of

Nontraditional Trademarks in China, Europe

and the United States

IW20 Industry Breakout: Game Plan 2012—

Brand Protection and the Business of Sports

12:00 pm–1:00 pm

Speed Networking

1:15 pm–3:15 pm


7:00 pm–11:00 pm

Grand Finale: INTA Headlines

Newseum

Schedule


Tuesday, May 8 Wednesday, May 9

Be sure to pick up the INTA Daily News each day for a detailed scheduleincluding room locations and last minute updates!

Ready-made andcustomizablePowerPoint®presentations explainingtrademark basics for usein client presentations orpresentations to non-trademark colleagues?

Answer: GlobalTrademark Research,Trademark BasicsPresentations

Visit www.inta.org/TrademarkBasics

INTA DailyNews 2012

Win an INTAportfolio!

We have one of these special

prizes to give away each day

of the INTA Annual Meeting.

To win today’s prize just

answer the question:

When was the INTA Annual

Meeting first held in Washington, DC?

Send your answer by email to

[email protected] by 6.00 pm

today. The winner will be

announced in tomorrow’s

INTA Daily News.

Check tomorrow’s issue for

another chance to win.

Gino van Roeyen@GinovanRoeyen

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On internationalized domain names (IDNs) we under-stand the need for expansion. We’re a bit concerned abouthow trademark owners will monitor and police theirmarks in those new character sets as there are no servicesto provide us with notices of infringement.

On the expansion of gTLDs we believe ICANN is mak-ing a huge mistake to the detriment of brand owners andconsumers, and we think it will lead to more cybersquat-ting and abuse.

I don’t think it can be stopped at this point.Unfortunately we’re going to have to watch the damageoccur because ICANN is not listening to the governmentsor law enforcement officials or brand owners or con-sumers who have raised concerns.

Brand owners need to be more engaged inside andoutside of ICANN. Right now only a small subset ofpeople participate. Unfortunately those people are out-voted and outnumbered by the registrars and registrieswho have a lot of votes at ICANN. ICANN itself standsto make tons of money and there are all these peoplemaking money from those bidding on gTLDs to gamegeneric names, providing back-end services and adviceto brand owners. The whole issue is being driven bydefensive registration and fear rather than a true need todo this. Many of the founders of the Internet like TimBerners-Lee and Esther Dyson have come out and saidthis expansion is unnecessary.

How is your time split?I guess a third of my time is trademarks, where the issues arehuge, a third copyright—I was one of the original negotiatorsfor the telecoms industry for the DMCA—and a third patentlicensing which is a new area to me which I’m enjoying.

What kind of work do you do in-house?We tend to try to do as much as we can in-house. Our teamis about six people working on trademark issues full-time.We do searching and UDRP in-house and much of ourenforcement. We rely on outside counsel to bring cyber-squatting actions and foreign counsel to help with search-ing abroad and for other thorny issues. We use outsidecounsel fairly judiciously. Our department has been able tocover its costs over the past four years thanks to theenforcement actions we bring.

What do you look for from outside counsel?Many of them provide services on a flat-fee basis. That’sbeen a very creative win-win option for us to handle largevolumes of searching. It reduces costs.

Often the choice of firm is driven by the reputation ofparticular lawyers who are extremely skilled in the field.We use one firm for cybersquatting work because theyhave ability to find cybersquatters and technical ability. Inthe copyright area there are only a handful of lawyers whounderstand the issues for a company like Verizon so gener-ally we rely on particular individuals.

In the city itself there are amazing free museums.Some of the smaller places I recommend are thePhillips Collection in Dupont Circle and theCorcoran Gallery of Art. The National Arboretumhas blooming azaleas and a bonsai collection and Irecommend going to Georgetown and walking alongthe towpath, where donkeys would tow goods.There are also great stores and the famous cup-cake stores.

If you want to come into Virginia, go to Old TownAlexandria for the day. It has the world’s smallesthouse, built between two houses. It has greatrestaurants and is by the water. The TorpedoFactory which is now an art gallery is worth visiting.

I love it here—it’s very green and there are noskyscrapers here as nothing is higher than theWashington Monument.

Interview Sarah Deutsch


Continued from page 6

Telecoms and trademarks

What do you recommend to do in the DC area?

Providing pragmatic and global solutions since 1978

Our Intellectual Property service includes:• Trademarks, designs and patents• Opposition and cancellation proceedings• Intellectual property rights protection• Arranging customs seizures and enforcement

ContactsAngus ForsythTel: (852) 2533 2543 Email: [email protected] Lai LamTel: (852) 2533 2545 Email: [email protected]

Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s RoadCentral, Hong KongChina Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,Guangzhou 510613, China

www.sw-hk.com

Classified

www.manag ing ip .com INTA Da i ly News Saturday, May 5 2012 1 1

The Global IP Resource START YOUR FREE TRIAL TODAYVisit us at booth #639, 641

Reception photos

2012 Pre-Annual Meeting receptions

Ahmedabad, India – Y.J. Trivedi & Co. Bogota, Colombia – Cavelier Abogados Buenos Aires, Argentina – Pagbam AbogadosIstanbul, Turkey – Gun Avukatlik BurosuMehmet Gun & Partners

Lagos, Nigeria – O. Kayode & Co. Los Angeles, California – Zuber & Taillieu LLP Madrid, Spain – J&A Garrigues, S.L.P.Manila, Philippines – Cesar C. Cruz & PartnersLaw Offices

Moscow, Russia – Gowlings International Munich, Germany – GruneckerNew York, NY, USA – International TrademarkAssociation Pretoria, South Africa – Spoor & Fisher

Rio de Janeiro, Brazil – Dannemann SiemsenBigler & Ipanema Moreira / MontauryPimenta, Machado & Vieira de Mallo Rome, Italy – NCTM Studio Legale Associato

Shanghai, China – International TrademarkAssociation / Unitalen Attorneys at Law

Zeist, Netherlands – De Gier Stam &Advocaten


E very Annual Meeting is special, butINTA is particularly excited aboutthe next two upcoming Annual

Meetings in Dallas, Texas, USA and HongKong, as it will be their first time in each city.

Planning for an Annual Meeting typical-ly begins more than a year and a half beforethe conference with the appointment oftwo co-chairs. Joseph Ferretti, PepsiCo,Inc./Frito-Lay, Inc. and Purvi Patel, Haynes

and Boone, LLP, both Dallas locals, havebeen selected to chair the Annual Meeting2013. Ferretti and Patel are working withtheir Project Team to create an exciting andinformative program for attendees and are

striving to make the meeting even morespecial than usual, as it will be the last onefor INTA Executive Director AlanDrewsen. The Project Team was puttogether last year and consists of 38 otherdedicated volunteers who are responsiblefor various aspects of the programming.

The Dallas–Fort Worth–Arlington met-ropolitan area is home to over one-fourthof all Texans as well as Fortune 500 com-panies such as Yum! Brands, Inc. andAT&T. After a full day of exciting pro-gramming and meetings, history buffs canvisit the Dallas Heritage Village for a viewof life in 19th century Dallas, foodies canexplore all of the best Texas-style bar-beque, steak houses and hot restaurants inDallas and shoppers can enjoy an after-noon in the Bishop Arts District or at theNeiman Marcus flagship store.

The 2014 Annual Meeting will beINTA’s first in Asia, and the Association isparticularly excited to be in Hong Kong,one of the world’s freest economies with acompetitive finance and business centerand a large exporter of branded goods andservices. David Stone, chair of thePrograms Committee and co-chair of theAnnual Meeting in Hong Kong, describesthe venue as “incredibly exciting,”explaining that the city is sophisticated andvibrant. “It will be different and it will befun,” he told the INTA Daily News. “Thetiming is just about perfect.”

Stone and his co-chair Xuemin Chen,Zhongzi Law Office, are already knee-deepin planning. Stone says that at this stage theplan is to focus the programming in themornings and cater to the expected increasein attendance from Asia and the Middle East.One idea that is being thought through is tooffer some session in local languages. “That’sbeen tried before with Table Topics, but we’dlike to kick it up a level,” says Stone.

The Annual Meeting will be held at thecentrally located Hong Kong Conventionand Exhibition Centre in Wan Chai North,with all of the main hotels close by. HongKong as a venue may be unfamiliar to manyregular Annual Meeting attendees, but itshould prove welcoming to INTA. It is afast-paced city that balances a modernizedway of life with traditional Chinese prac-tices. Under British colonial rule for 156years, the city grew from a small fishing vil-lage to a global financial center and nowhas a population of over 7 million.

Sightseers can head up to Victoria Peakfor beautiful views of the city, or take a ferryto Lantau Island and Tian Tan Buddha. Foodlovers will have no shortage of options, fromhigh-end international restaurants in Sohoand Gough Street, to amazing local cuisine inMong Kok. Those who want to see a differ-ent side of Hong Kong can take a short ferryride to Cheung Chau Island, one of severalfishing villages surrounding the main island.

It’s not too early to start making yourplans now for Dallas and Hong Kong!

Next stop: Dallas, then Hong Kong

Preview Future INTA meetings


101domain, Inc. 531

A

Acumass 528, 530

AIPPI 629

ALM Media 114

American Intellectual Property

Law Association (AIPLA) 124

Anaqua 209

Appleby 400, 402, 404

Applied Marketing Science 515

Asesores Del Caribe, S.A. 237

Asia IP 241

Avantiq 247

B

Beijing Sanyou Intellectual

Property Agency Ltd.

215, 217, 219

Beijing Sino-American Tianlu

Intellectual Property Agent

Co., Ltd 208

BizSolution Information

Technology (Beijing & Toronto)

120,122

Bloomberg BNA 507

Brand Institute, inc. 109

BrandProtect 235

BrandShieldTM 126

Burns & Levinson LLP 108

C

Cardinal Intellectual Property,

Inc. 632

Caribbean Trademark Services

George C.J. Moore, Barrister &

Attorney 102

CheckMark Network 610

China Law & Practice 643

Christodoulos G. Vassiliades &

Co. LLC 631

CKR Global (a Canpro King-

Reed LP company) 509

ClickIPR by Lall & Sethi 231

Client Connection, Inc. 633

Computer Packages Inc. (CPI)

301, 303, 305

CONSOR Intellectual Asset

Management 608

Corporation Service Company

309, 311, 313

Corsearch 611

CPA Global 423

CSI - Confidential Security &

Investigations 435

D

Darts-ip 514, 516, 518

DataDot Technology Ltd. 630

Dennemeyer & Associates

440, 442

Dennemeyer Group 441

Dependable Solutions, Inc. 536

DomainTools 212

E

EisnerAmper LLP 534

Envoy International Limited

628

Evizone Ltd 645

G

Georg Pintz & Partners

Trademark.EU 336

Getting The Deal Through 210

GEVERS Validations-Valipat

S.A. 214, 216, 218

Global IP Estimator 511

Globalaw 636

GoDaddy.com, LLC 527, 529

Grant Thornton Yafi & Co 409

I

ICM Registry LLC 112

inovia 110

Intellectual Asset Management

(IAM) 541

Intellectual Property Magazine

(IPM) 340, 342

INTELSonline 128

Inter-American Association of

Intellectual Property (ASIPI)

106

International Trademark

Association (INTA) 603

IPmetrics Intellectual Property

Consulting 113

IPR Group. Patent and

Trademark Attorneys 341, 343

J

JAPAN PATENT OFFICE 626

The John Marshall Law

School 104

Joseph Lee & Associates

Ltd. 623

K

Keisen Associates 111

Kessler International 408, 410

Key-Systems 141

Korean Intellectual Property

Office (KIPO) 429

L

Leaders League 206

Lehman, Lee & Xu 201

LexisNexis 101

Licensing Executives Society

642

The Luzzatto Group 412, 414

M

Managing IP 639, 641

MARCASUR 130

Markify 433

MARKPRO Global 328, 330

Marksmen Inc. 523, 525

Med-ERRS® 517

Melbourne IT DBS 347

Meritas- Law Firms

Worldwide 107

Mikhailyuk, Sorokolat &

Partners - Patent and

Trademark Attorneys 317

Mohajerian Inc. 434

Morningside Translations 537

N

National Intellectual Property

Rights Coordination Center

634

Novagraaf 314, 316, 318

O

O P Solutions, Inc. 606

OAPI Organisation Africaine

de la Propriété Intellectuelle

436

OHIM 323

Onscope 618

Oxford University Press 519

P

Park IP Translations 431

Patentattorney.com and

Trademarkattorney.com 640

Patrafee 223

Patrix IP Helpware 401

Pham & Associates 331

Practical Law Company 535

Practice Insight 233

S

S.M.D. Markeur 415, 417,419

Safenames LTD 117,119

SGA2 209

Singh & Associates

333, 335, 337

Sjiem Fat & Mahabir 332, 334

Stevens Hewlett & Perkins

(SH&P) 437

Sugimura International Patent

and Trademark Attorneys 115

Sunfaith China Limited 338

T

Thomas M. Cooley Law

School 315

Thomson Reuters 123

Trademarkia 627

The Treadstone Group, Inc. 319

U

University of New Hampshire

School of Law formerly (Franklin

Pierce Law Center) 625

USPTO 430,432

V

Vantage Asia Publishing

Limited 533

W

WebTMS 416, 418

Western Union Business

Solutions 622, 624

Wolters Kluwer Law &

Business 614, 616

World Customs Organization

(WCO) 532

World Intellectual Property

Organization (WIPO) 501

World IP Review (WIPR) 243

World Trademark Review

(WTR) 543

World Vision 229

The Exhibition Hall is open Sunday afternoon, all day Monday and Tuesday,and until 2:00 p.m. Wednesday

Exhibitors


Exhibitors/Booth Number

Exhibitors


HALL 'E'ENTRANCE

EXIT

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CONCOURSE

EXIT EXIT EXIT EXIT EXIT EXIT

DOCKSLOADING

ROLL-UPDOOR

ROLL-UPDOOR

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BAG PICK-UP

BAG S STORAGE AREA

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BLOOD DRIVE

EN

TRA

NC

EE

XH

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FLO

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EN

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IBIT

FLO

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#190 ROUNDS

HOSPITALITY AREA

ADDITIONALHOSPITALITY AREA

SPEEDNETWORKING

NETWORKINGLOUNGE

FREEMAN SERVICECENTER

BREAKROOM

ESAE

OFFICEOFFICE

Freeman

OFFICE

101

20'

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INTA

606608610

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30'

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643645647649651

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10'HK, Dallas

Hospitality Sponsor

E ver wanted to see Pulitzer Prize-win-ning photographs, the Berlin Walland the Unabomber’s hut, all under

one roof? Then make sure you don’t miss theAnnual Meeting Grand Finale on Wednesdaynight, which this year takes place atWashington DC’s Newseum. While there,you can also see how a TV studio works,read pages from historic newspapers and tryyour hand at presenting a news report, allwhile making connections with more than4,000 Annual Meeting attendees.

Opened at its current location at 555Pennsylvania Avenue four years ago, theNewseum boasts 250,000 square feet ofexhibits about the history of news makingon seven levels. Entrance is normally US$22for adults, but at the Grand Finale INTAattendees can enjoy the whole experiencefor free. And don’t miss the top-floor ter-race with its views of the Capitol, NationalMall and Washington Monument.

Many of the exhibits are grand in scale,such as the largest section of the Berlin Wall

outside of Germany, the radio mast from theWorld Trade Center, a bomb-damaged CNNtruck from Bosnia and a Bell Jet Rangernews chopper, which hangs in the atrium.

But if you have time there are also fas-cinating smaller things to see, such as thecollection of newspapers from around theworld from the seventeenth century to thepresent, which can be viewed in their orig-inal form and also close-up on 10 touch-

screen TVs (level 5). This beingWashington, there are also plenty ofexhibits relating to politics, ranging from ahistory of presidential elections (level 6) topictures of the “First Dogs” (level 2). Andsports fans will not want to miss the mem-orable photos, including iconic images ofMohammed Ali and the Olympics, by NeilLeifer (concourse level).

Reflecting the world of news today, the

Newseum is highly interactive, with the stat-ic exhibits complemented by videos, movietheaters and a recreation of the office of NBCjournalist Tim Russert (level 4). And, for anyINTA attendees who have always wanted tobe a TV star, there are eight stations whereyou can take a microphone, stand before thecamera and find out what it’s like to be areporter (level 2). Who knows, it could be thebeginning of a new career!

Today’s Schedule | Saturday, May 5, 2012All events take place at the Washington Convention Center (WCC) unless otherwise indicated.

7:00 am – 8:00 am Academic Course Networking Breakfast 149 AB

8:00 am – 5:00 pm Academic Course on International Trademark Law—Day 1 154 AB

8:00 am – 5:00 pm Advanced Mediation Training—Day 2 143 ABC

8:00 am – 5:00 pm Tour Booth East Registration

12:00 pm – 7:00 pm REGISTRATION East Registration

12:00 pm – 7:00 pm HOSPITALITY Hall D

1:00 pm – 3:00 pm LUNCHEON TABLE TOPICS 150 AB

1:00 pm – 3:00 pm Volunteer Service Project 103 AB

3:30 pm – 5:30 pm TEA TIME TABLE TOPICS 150 AB

5:45 pm – 7:00 pm Table Topic Moderator Appreciation Reception 150 AB Foyer

7:00 pm – 11:00 pm 2012 INTA GALA (pre-registration required) National Portrait Gallery, 8th & F Streets NW

A world of news at the Grand Finale

daily news · 2012. 5. 8. · inta on facebook, twitter and linkedin. the annual meeting’s...

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