T hough Budweiser was theofficial beer company spon-sor of the 2010 World Cup,

it was rival Bavaria that got all theattention.

The Dutch brewer received sig-nificant media coverage last yearwhen a large contingent of womenattended the Holland versusDenmark game in orangeminidresses bearing its logo. Thestunt led to arrests and charges byFIFA that the company hadengaged in ambush marketing. AsSouth African authorities attempt-ed to sort out what led to the inci-dent, the game was over. Bavaria,meanwhile, had made an impact.

“Ambush marketing is the type

of thing where there’s no such thingas bad publicity,” Ayala Deutsch,NBA’s senior vice president andchief intellectual property counsel,said yesterday at the panelTrademarks in Sports: AmbushMarketing and Protecting AthleteNames and Images.

Indeed, brand owners are beingincreasingly creative in findingways to benefit from the publicityof major sports events withoutbeing official sponsors. TheBavaria stunt falls under grassrootscampaigns, while others have usedsweepstakes, product giveawaysand implications of associationusing indirect references or images.

But a balance has to be struck.

Successful ambush marketing canconfuse consumers, and makeevents less attractive to officialsponsors—potentially reducingfuture revenues.

“This is not exclusively a con-sumer confusion protection issue,”Deutsch said.

To protect sponsors’ rights,many event organizers expect orrequire the host country to enacttemporary laws on ambush mar-keting. In November last year, anINTA Board Resolution set outprinciples and guidelines thatshould be considered when coun-tries consider adopting ambushmarketing legislation in order to

While many concerns remain aboutthe proposed launch of unlimitednew gTLDs, it is not too early for

brand owners to think about what theirstrategy should be.

“While it seems like a lot to take on, it’sall very manageable,” according to PaulMcGrady of Greenberg Traurig at a ses-sion yesterday.

McGrady summarized the risks of stay-ing out of gTLDs as well as the risks of get-ting involved. The most obvious downsideto staying out of the first round of newgTLDs would be permanent exclusionfrom a domain registered by a competitorthat covers a premium industry term.

He stressed that the only way to getinvolved in an auction over a generic termis to apply. “If you’re not in at thebeginning you can’t be there atthe end.” Another danger is thata company CEO could see a rivalbusiness running a gTLD andwonder why his firm doesn’t haveone. McGrady stressed the importance ofmaking sure the top levels of a companyare involved in the decision making: “The‘no’ needs to come from the person who’smost likely to be upset.”

Getting involved has its own risks.

Failure to restrict the registry properly dur-ing the application process could lead tounlimited cybersquatters registering inyour domain. Applying for a gTLD is alsoexpensive upfront and there is no guaran-tee of success. Finally, it is not yet clearthat consumers will move from .com tobranded TLDs.

The rest of the session gave an updateon the latest version of the draft ApplicantGuidebook for gTLDs. Susan Anthony ofthe USPTO, an IP advisor to the NationalTelecommunications and InformationAdministration, which holds a seat on theICANN Government Advisory Committee(GAC), advised the audience to readICANN’s April 15 statement clarifying itsposition on whether trademark use will

need to be shown to use the vari-ous rights protection mechanisms.

She also said that there wasstill a lot of negotiating to be donebetween the GAC and ICANNahead of the publication of the

final Applicant Guidebook, which isscheduled for May 30, and next month’sICANN meeting in Singapore. “Let’s justsay we live in interesting times, and we canexpect some very interesting decisions inthe next couple of weeks.”

Report

Strategies to beat counterfeitersPage 3

Profile

Policy in Asia-PacificPage 6

Interview

Timothy Ernst, Del MontePage 12

Attendees yesterday indicated viared and green paddles whether ornot they thought various hypothet-

icals posed a conflict for outside counsel,during an interactive session titled Ethics:Conflict Issues in Trademark Selection,Clearance and Prosecution. Audience mem-bers voted on whether they thought JamesCady of Pillsbury Winthrop Shaw Pittmanshould bow out of representing one of thefictional companies seeking his help to reg-ister the same or similar marks. The hypo-thetical involved Veni Vidi Vision, whichsought to register the mark SHAZOOM inthe U.S., and BSquared, which owned themark SHAZOOM in the U.S.

Tiki Dare of Oracle played in-housecounsel for Veni Vidi Vision and KellySmith played in-house counsel forBSquared. Audience members fromIsrael, Italy and South Africa providedadditional perspective, since rules gov-erning conflicts vary by country. Thetakeaways for in-house counsel? 1) Besure to communicate what potential con-flicts will and will not be tolerated; 2)identify all competitors who create anautomatic conflict; and 3) make enforce-ment strategies clear. Outside counselwhose clients are staying silent on thesepoints should “be proactive” in askingabout them, said Cady.

In-house practitioners gathered at a reception at the MarriottMarquis yesterday evening. A drawing was held and the winners were:

2012 INTA Annual Meeting Registration J.J. Kramer(Abercrombie & Fitch Co.)

INTA Program Registration (Excludes Annual & LeadershipMeetings) Clotilde Piednoel (Kraft Foods)

Copy of the 2011 US & International Trademark Law Handbook

Kari Wangensteen (Best Buy), Lisa Winger (Newell Rubbermaid),Karen Scarr (Gap Inc.)

The pros and cons of gTLDs

DailyNewsPublished by

www.inta.org www.managingip.com

Wednesday, May 18, 2011 133rd Annual Meeting, San Francisco

News 2 | Th ings to do 5 | Quiz resu l ts 6 | Recept ions 14-15 | Schedule 16 | Weather 57°F

Is there no such thing as bad publicity?

Continued on page 2

J. Thomas McCarthy was honored with aDistinguished Service Award at a specialGala Reception and Award Ceremony lastnight. The event at the San FranciscoMuseum of Modern Art was sponsored byDrinker Biddle & Reath LLP, the McCarthyInstitute at the University of San FranciscoLaw School, INTA and MarkMonitor.

minimize any detrimental effects on existingtrademark rights, other pre-existing rights,and fair uses.

In 2006, following the InternationalOlympic Committee’s decision to stage the2012 Games in London, the LondonOlympic Games and Paralympics GamesAct was introduced. The law outlines whatbrand owners can and can’t do in theiradvertising. Companies that aren’t officialsponsors, for example, can’t use “games”and “London” in the same advertisement.The Act is “unique, new and different—some might say draconian,” said JeremyDickerson of Burges Salmon in the UK.

Because the effects of ambush marketingtactics often outlast the events they’re con-nected with, the challenge for authorities isenforcing the rules. “This has to be donevery, very quickly,” Dickerson said. “Oneday would be too long, an hour aboutright.”

“I wish them luck getting that donequickly,” he added, drawing some laughsfrom the crowded room.

And the risk for events organizers is thattoo much enforcement can backfire, as theyare accused of being heavy-handed, as RossParsonage, of Rouse in Beijing, explained.But, he added: “If the law isn’t used againstthe large brand owners who are ambush-ing, why have it?”

As brand owners prepare for theLondon Olympic Games, they may look toBeijing 2008 for reference. Speedo andPuma both gained coverage on the heels ofthe successes of the athletes wearing theirlines, despite not being sponsors. Perhapsthe most iconic image of the Games was ofChinese gymnast Li Ning running across anunscrolling screen to light the torch. He, bythe way, helms a major sportswear compa-ny. “Ambush marketing has changed, andit’s no longer about fixed outdoor advertis-ing,” said Parsonage.

J udging by the enthusiastic note-tak-ing of attendees at Monday’sEffective Oral Presentation session,

we all need advice on public speaking.According to a survey provided by the

speakers beforehand, overcoming nervous-ness, making content interesting, andassessing what the audience really wants toknow are the biggest challenges in makinga speech.

It also found that energy and showinginterest were some of the most effectivequalities in a presenter.

While humor was also listed as one ofthe characteristics, the speakers cautionednot to overdo it.

“You want the audience to rememberthe substance of your talk, not just that itwas one great show,” said Michael Cassels,a partner at Marval, O’Farrell & Mairal inBuenos Aires.

Mei-Lan Stark, senior vice president ofFox Entertainment Group in Los Angeles,said the first thing to do is to go to differ-ent presentations, see what you respond to,and then try it on for size.

Referring to keynote speaker JohnAnderson’s speech from the opening cere-mony, Stark said reading from a script cansound natural for some people, but is diffi-cult for her.

“For me, I have catch phrases or pic-tures that trigger a story I want to tell,” shesaid. “If it doesn’t fit, find another style.”

Relying on PowerPoint may not alwaysbe the best option either.

“Know when not to use slides,” saidDavid Bernstein, a partner at Debevoise &Plimpton in New York, who added thatreading from slides is a no-no. Showingimages of opposing trademarks when dis-cussing a case may be helpful.

mandlandw Mandy Woodland

Good questions on how to deal with negative sm postings (by employees orcustomers). Case-by-case response, be practical, offlineRonColeman Ron Coleman

“Century Panel”: Sir Robin: #trademark has gone too far; I hope we’re pullingback from here, not going furthersrm5 srm5

Approaching mile 2 at Rubio’s #INTASF 5k. Just saw bison at Golden GatePark. Might not win this race.legallysocial Darren Cahr

1 out of 12 couples met through social media? Clearly, every film of the ‘80smust be remade, immediately.todyhy Tony Dylan-Hyde

Thanks #INTASF for Effective Websites and Online Tools session. Warning toinfringers, my 2.0 practice just went 5.0.Managing IP Managing IP

quote of the day 1: Jacob LJ: If trademarks are telling the truth, they shouldbe encouraged; if lying, they should be strangledIvoryblossum goldenrail

Bonus at the OHIM session: all the beautiful accents on the panel

#INTASF

News

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com2

F ashion designs are not easy to pro-tect in the U.S. Trademark, tradedress, design patent and copyright

law are all useful, but each has its disad-vantages. This was the message to hun-dreds of people that attend-ed yesterday’s industrybreakout session on thefashion industry.

To qualify for protec-tion as trade dress, a designmust show acquired dis-tinctiveness and non-func-tionality (either utilitarianor aesthetic). This is possi-ble. In Miche Bag v.Marshall (2010) the hand-bag producer successfullywon protection forremoval shells that wentover the bag. They wereconsidered non-functionalwhen combined with theother elements of the bag’sdesign. But clothing andparticularly dresses rarelypass this test.

Design patents are“probably the most fruitfularea of protection in fashion,” said speak-er Louis S. Ederer of Arnold & Porter.Fellow speaker Barbara Kolsun of shoebrand Stuart Weitzman described how shefiles several design patents every year. Theproblem is they are expensive ($6,000 to$8,000), time limited and take 12 to 18months to be registered. So StuartWeitzman only files design patents shoe

models it thinks will still be big sellers twoyears from now, beyond the normal fash-ion cycles.

“When you do get protection it’sgreat,” said Kolsun. “I call it a ‘bingo’—

you normally write yourcease and desist letter andget your money in prettyshort order.”

Copyright is difficult toget for fashion items unlessyou can show the design isseparable from its function-al role. While Kolsun gaveexamples of two belt buck-les that succeeded in gettingcopyright protection, fewother items of clothing havebeen successful.

There was great opti-mism at the end of last yearwhen the Senate JudiciaryCommittee approved a billto extend copyright to thefashion industry. But forthe fourth time in five years(similar bills were intro-duced in 2006, 2007 and2009) it has got stuck in

committee. “The problem is that there is asplit within the fashion industry and evenwithin brands themselves about the bene-fits of being able to copy designs,” saidspeaker Anne Gilson LaLonde, author ofGilson on Trademarks. “Many of the bigbrands have bridge or diffusion lines andthey genuinely don’t know if a law like thiswould hurt that side of the business.”

• Speak slowly and clearly• Don’t be intimidated by the audience• Have a mentor or trusted friend in

the audience for honest feedback• Have extra material available in

case it’s needed• Use colloquial expressions and

slang carefully • Avoid rarely used abbreviations and

acronyms• Avoid fancy animations• Use no more than six lines of text

and six words per line onPowerPoint slides

Advice on speaking

How to foil the fashion fakesMaster yourpresentationskills

Euromoney Institutional Investor PLC

Nestor House, Playhouse YardLondon EC4V 5EX United KingdomTel: +44 20 7779 8682 Fax: +44 20 7779 8500Email: mip@managingip.com

Editorial Team

Editor James Nurton Reporters Karen Bolipata, Simon Crompton, Eileen McDermott,Peter Ollier and Erica Poon

Production manager Luca ErcolaniWeb designer Joshua Pasanisi

AdvertisingGroup publisher Daniel ColeTel: +852 2842 6941Email: daniel.cole@euromoneyasia.comPublisher Alissa RozenTel: +1 212 224 3673Email: arozen@euromoneyny.comAsia manager Bryce LeungTel: +852 6126 3601Email: bryce.leung@euromoneyasia.com

Europe, Middle East & Africa manager Ali JawadTel: +44 20 7779 8682Email: ajawad@managingip.comNorth AmericaTom St DenisTel: +1 212 224 3412Email: tstdenis@iinvestor.net

Divisional director Danny Williams

Subscription hotline UK Tel: +44 20 7779 8999US Tel: +1 212 224 3570

Editorial TeamEditor James BushPhotography Orange PhotographyDirector Randi Mustello

Marketing & Programs TeamJesse Riggle (Design), Devin MatthewToporek (Marketing)

The INTA Daily News is produced by ManagingIntellectual Property in association with theInternational Trademark Association. Printed byEssence Printing Inc. The INTA Daily News is alsoavailable online at www.inta.org andwww.managingip.com. © Euromoney InstitutionalInvestor PLC 2011. No part of this publication maybe reproduced without prior written permission.Opinions expressed in the INTA Daily News do notnecessarily represent those of the INTA or any ofits members.

Charlize Theron’s Galliano dresswas copied within 24 hours

Continued from page 1

E ducation is essential to winning thelong term battle against fakes, saidspeakers at a session yesterday.

“We have to teach consumers about thesocial harms associated with counterfeitingnetworks,” said Ed Kelly, of LaRiviereGrubman & Payne.

Kelly works for a charity that is trying toeliminate human trafficking in SoutheastAsia, a problem that is linked to counter-feiting, and is trying to raise awarenessabout the poor working conditions andappallingly low wages that people makingcounterfeits in Asia have to endure.

“This is a problem that is not going togo away. It’s going get worse,” he said,adding that he wants it to become“uncool” and socially unacceptable to buycounterfeits.

In the U.S., David Tognotti of MonsterCable Products is facing the same problemof how to educate consumers not to buy

counterfeit versions of their products,especially the popular line of BEATS BYDR. DRE headphones.

Monster Cable has taken the directroute and has been using Twitter,Facebook, blogs and what Tognotticalled “organic viral videos” and edu-cate consumers about fakes. The compa-ny’s website also has a link to a counter-

feiting information page listing approvedsuppliers and domains known to sellfake products.

“We are trying to attack the demandside. I would hope more companies woulddo this, but a lot of companies are fearful.They don’t want consumers to know thatthere are fakes out there,” said Tognotti.He added that he hadn’t found it as diffi-cult to go public with the problem asexpected, but stressed the importance ofletting the top levels of the company knowabout the harm that counterfeiting is caus-ing.

The session, entitled CombatingCounterfeit Goods: From Detection toTake-Down, also dealt with a number ofpractical issues, including how to buildrelationships with Customs and lawenforcement officials. Roxanne Elings ofGreenberg Traurig also explained how totake down rogue websites.

News

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 3

T he United States Patent andTrademark Office (USPTO) willhost the 2011 National

Trademark Expo on October 14-15 atthe USPTO’s headquarters inAlexandria, Virginia.

The free two-day event is designedto educate the public about the valueof trademarks in the global market-place.

Exhibitors are invited to showcasetheir trademarks through educationalexhibits. The Expo will feature educa-tional workshops for adults and chil-dren, exhibits of authentic and counter-feit goods and costumed characters.

Owners of U.S. federally registeredtrademarks who wish to participate inthe Expo must submit an application byJune 15. Those applicants who areselected to exhibit in the Expo will benotified by July 15.

For more information, visitwww.uspto.gov/TMExpo, emailTMExpo@uspto.gov or contact SusanHayash at (571) 272-9362 or Carol Spilsat (571) 272-9226.

USPTO Announces2011 NationalTrademark Expo

Making counterfeits uncool

The art gallery is a collection ofartistic works by Annual Meetingattendees and their friends. Morethan 30 paintings, photographsand crafts have been on displaysince Saturday; on the INTAwebsite artist and purchaseinformation is available.

INTA’s artistic side

Preview Latin America

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com4

T hough Latin America’s major IP markets haverecovered from the recession at varying rates, theregion has positioned itself as an emerging market.

An increase in trademark filings and the success of region-al companies have cemented its status as a global player. Apanel today will discuss these changes, as well as recentcase law and fair use issues regarding social media.

Roberto Arochi, of Arochi Marroquin & Lindner, willaddress how brand owners can manage their portfolios,specifically when it comes to trade dress and registrationissues. Washington, DC-based Cristina Carvalho, of ArentFox, will review developments in Brazil involving socialmedia and domain names. “I will touch on laws comingdown the pipe on ambush marketing in light of two sportsevents Brazil will host—the World Cup in 2014 and the2016 Olympics,” she says. And Damaso Pardo, of PerezAlati Grondona Benites Arntsen and Martinez De Hoz,will explore Argentina’s progress in implementing theMadrid Protocol. “An open and interesting discussion hasbeen taking place in Argentina for the past five years,” hesays, adding that the overall environment is increasinglyfavorable to the country joining the international trade-mark system. Valdir Rocha, of Veirano AdvogadosAssociados in Brazil, will moderate the panel.

From trademark filings to secondary meaningLast year, 96,000 trademark applications were filed inMexico, an indication of the country’s economic recovery. ButArochi says the growth presents problems. “The problem isnot filing so many applications,” he says. “The problem is wedon’t have the vision to handle these trademark applications.”In addition, Mexico does not have a formal oppositionprocess, letters of consent are not binding and companiesunder common control can register similar trademarks.

Argentina, meanwhile, has had a slow but steady recov-ery. Trademark filings fell around 20% as a result of the2008 financial crisis, particularly from domestic compa-nies. But the decline forced clients to make more reasoneddecisions as to where and when to litigate. “The IP indus-try has evolved mainly in the enforcement area, where wehave seen more activity from customs and law enforcementagencies to cope with increasing levels of counterfeiting,”says Gustavo Giay of Marval O’Farrell & Mairal in BuenosAires. Brand owners also are increasingly devoting theirresources to online enforcement. “It is interesting to notethat most of the auction sites are actually owned by a fewcompanies, the leading one being based in Buenos Aires, soonline monitoring services throughout Latin America canbe based in one country such as Argentina,” Giay says.

Of the three countries, Brazil has emerged strongest,having been only marginally affected by the global down-turn. Former President Luiz Inácio Lula da Silva oversawthe country’s tremendous economic growth during histenure. “Because at the time of the financial crisis Brazilwas doing well, it attracted a lot of foreign investmentfrom investors who could not get good returns in Europeor the US,” Carvalho says.

Organization before the ProtocolWhen the Madrid Protocol Implementation Act cameinto law in the U.S. in 2002, it was thought that it wouldnot be long before Mexico followed. But that hasn’t hap-pened, and accession in Argentina and Brazil is also someway off, with practitioners saying that part of the prob-lem is simply that national IP offices are not ready.Backlogs, for example, remain significant. “If youassume that by adopting the Protocol Brazil couldincrease filings, I think it would be wise and prudent toput your house in order to handle the additional work,”says Carvalho.

But change may finally be coming. The TrademarkDirectorate of the National Institute of Industrial Property(INPI) in Brazil recently formed a Quality ManagementSystem to develop staff training programs and establishuniform examination standards.

Latin America emerges from downturnLatin America is emerging strongly from the economic downturn, withtrademark applications increasing. But, as Karen Bolipata reports, there aremany issues to be discussed in today’s session on the region.

CW22—Regional Update—Latin America and Mexico is at11:45 a.m. today.

Muir Woods National Monument

Just 11 milesnorth of theGolden GateBridge, theforest offersa refreshingbreak fromthe city.

President Theodore Rooseveltdeclared the park a national monu-ment in 1908. Try to spot foxes,squirrels, bats and other creatures(the black-tailed deer if you’re lucky)as you take a walk, or catch aglimpse of a few of the remainingsteelhead trout and Coho salmon atRedwood Creek. Visitor Center opensfrom 9:00 a.m. to 7:30 p.m. in thesummer, while the park opens from8:00 a.m. To 8:00 p.m. Free for chil-dren aged 15 and under, and $5 forages 16 and over.

Address: 1 Muir Woods Trail

Tel.: 415 388 2595

Contact: www.nps.gov/muwo

Rose Garden andFarmers’ Markets at Berkeley

Across the SanFrancisco Bay isa college townthat houses thefirst Universityof Californiaschool. In addi-

tion to bars and restaurants surround-ing the campus, floral fans will enjoythe Municipal Rose Garden at EuclidAvenue, which contains more than3,000 rose bushes and 250 kinds ofroses. A picnic area and hiking trailsare in the vicinity. Farmers’ marketsrun by the Ecology Center are heldevery Tuesday and Thursday at M. L.King, Jr. Way and Saturdays at RoseStreet. Open Tuesday 2:00 p.m. to7:00 p.m.; Thursdays 3:00 p.m. to 7:00p.m.; Saturday 10:00 a.m. To 3:00 p.m.

Locations: Various

Tel.: 510 981 5150 (rose garden); 510548 3333 (farmers’ markets)

Contact: www.ecologycenter.org/bfm

Squaw Valley at Lake Tahoe

Theweathermay begettingwarmer,but skiseason’snot over

just yet. Squaw Valley, the second-largest ski venue in Lake Tahoe andthe site of the 1960 Olympics, will beopen for skiing Fridays to Sundaysuntil May 30. Ski and ride until 2:00p.m. on those days, or opt for moresummery activities. The high camppool, hot tub and Umbrella Bar willbe open until 4:00 p.m. An all-daylift ticket costs $59 for adults, $39for youths aged 12 to 18, $12 for chil-dren under 12, and $39 for seniorcitizens aged 65 to 75.

Address: 1960 Squaw Valley Road

Tel.: 800 403 0206

Contact: www.squaw.com/ski-ride-free-spring

Yosemite National Park

Breathe in fresh air and enjoy thescenic nature at this renownedwilderness park. Famous for itswaterfalls, Yosemite also housesvarious wildflowers, meadows,sequoias and valleys. The park isopen 24 hours, but the HetchHetchy Entrance Station is onlyopen during the day. Check weatherand road conditions before yourescapade.

Address: 9039 Village Drive

Tel.: 209 372 0200

Contact: www.nps.gov/yose

San Francisco: out-of-town excursions

Things to do

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 5

Profile Policy work—Asia-Pacific

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com6

T he first challenge facing any global organizationthat wants to work in the Asia-Pacific region is oneof definition: which countries are in the Asia-

Pacific region and which are not? The region usually includes East Asia (Greater

China, Korea and Japan), Oceania (Australasia and thePacific Islands) and Southeast Asia (the countries inbetween). But opinion is divided on how far west theregion should go—what about Russia, most of whoseland mass is in Asia, the former Soviet republics ofCentral Asia, and the Indian subcontinent? INTA takesa pragmatic view, with the countries included depend-ing on the need and context. India is sometimes includ-ed in the Middle East, sometimes in Asia-Pacific, whileCanada makes an appearance in the Asia-Pacific amicuscommittee.

Once you have defined the region, the next challengefor brand owners to deal with the dauntingly diverse legalregimes—from common law to civil and from advanced tocounterfeiting hotspot. “It’s definitely fluid—it’s a dynam-ic region,” says Seth Hays, INTA’s Asia-Pacific externalrelations manager.

Using the membersThe size and diversity of INTA’s membership is crucialto its ability to keep up with the region. They are par-ticularly important in bringing important cases to theattention of the International Amicus Committee. Whilethat Committee has traditionally focused a lot of itsattention on North American and European decisions,it has submitted comments on Asia-Pacific cases in thepast, including in IKEA Inter Systems Inc. vs. BeijingCinet Co. Ltd—a case in which China’s Supreme

People’s Court ruled that registering a domain name canconstitute unfair competition and trademark infringe-ment. “We are eager to get more cases in China,” saysHays.

Laws in the region are frequently updated, whichkeeps the Asia-Pacific subcommittee of the Legislationand Regulation Committee busy. This was seen mostrecently in Australia, where INTA has commented onthe Federal Government’s 102-page IntellectualProperty Laws Amendment (Raising the Bar) Bill 201.Important proposed changes to Australia’s Trade MarksAct 1995 include expediting opposition proceedings,

eliminating unnecessary cases and tightening bordercontrol.

Elsewhere in the region brand owners are closelywatching China’s long-running attempt to amend itsTrademark Act. The latest draft for comment appearedlast year and INTA was able to use the expertise of theFamous and Well-Known Marks, Anticounterfeiting andNontraditional Trademark Committees and its Shanghaibranch office to submit bilingual comments to the gov-ernment.

Working with trademark officesAlso contributing to that discussion was Li Yongbo, apartner of Unitalen and chair of INTA’s recently foundedChina Trademark Office Practice Subcommittee. TheChina Trademark Office (CTMO) is the world’s busiest.Over 1 million trademark applications were filed in 2010and this is likely to increase again in 2011. The countryhad 4,885 million registered trademarks by the end ofMarch.

The deal with this rise the CTMO and the TrademarkReview and Adjudication Board (TRAB) recruited 400more examiners in 2008. Of those, 300 went to theCTMO, which enabled the office to slash trademark pen-dency from an average of 30 to 36 months to between 12and 18 months today.

Although practitioners have praised the increase inspeed, given the number of applications being processed,controversial decisions do occur. This is where the sub-committee can establish dialogue with the CTMO andobtain more information, especially when the explana-tion given is inadequate. “Our job is to connect withthem, to talk about examination decisions, oppositions

and disputes,” says Li. Educating trademark examiners is

an important part of INTA’s workthroughout the region. PeterDernbach has been leading efforts toencourage examiners to be clearerabout the evidence needed to suc-cessfully register a nontraditionaltrademark in the region (see box).

Roundtables are also regularly organized with govern-ment officials to raise awareness of brand owners’ con-cerns and encourage countries to amend and improvetheir trademark laws.

Counterfeiting—the next stageAnother topic likely to be discussed at any roundtable inthe region is counterfeiting. The problem is not restrictedto China, but is also affecting countries in Southeast Asia,such as Thailand, Vietnam, Malaysia, Indonesia and thePhilippines. Candice Li, INTA’s Anticounterfeiting externalrelations manager, helped to organize a successful confer-

ence in Hong Kong this year, which looked at what optionsbrand owners have to try and combat this problem in theregion.

At the same time as dealing with real world sellers ofcounterfeits, Li now has to focus on online sellers. InMarch this year the USTR singled out China’s Baidu andTaobao as online IP infringers. While Baidu has causedmost offense for linking to pirated music files, Taobaowas singled out for not doing enough to address the saleof fake goods. Going after these sites is not easy, says Li:“A large part of the problem is how you gather the evi-dence to show that counterfeits are on the site.”

Dealing with diversity in AsiaPeter Ollier looks at the challenge of coordinating INTA’s work in an area asdiverse as the Asia-Pacific region.

Asia-Pacific is a challenging region for brand ownerswanting to register non-traditional trademarks. “Inmany countries the law allows it, but in practice very fewnontraditional marks are registered,” says PeterDernbach, a partner of Winkler Partners in Taipei andchair of the Asia-Pacific Subcommittee of INTA’sNontraditional Marks Committee.

For example, Japan has a highly advanced trademarksystem, but examiners at the JPO remain reluctant togrant three-dimensional trademarks. The IP High Courthas repeatedly overturned decisions by the JPO not to

grant trademarks. Thesuccess of Coca-Cola in2008 in obtaining a reg-istration for its bottleshape has been fol-lowed by two morecourt successes withinthe past six months:Japanese drink makerYakult and French per-fume maker Jean PaulGaultier have bothobtained registrations.

Dernbach is helpingto answer three keyquestions about nontra-ditional marks: howbrand owners canobtain evidence, whatkinds of evidence areneeded to prove distinc-tiveness and how youcan conduct a search tocheck the availability ofa mark. INTA has alsoorganized roundtablesin Seoul, Taipei and

Bangkok that have looked at this issue. As part of atraining session in Malaysia foreign examiners werebrought in to pass on their experience of dealing withthese applications.

Making theory into reality

“Our job is to connect with them, to talkabout examination decisions, oppositionsand disputes”.Li Yongbo, Unitalen

INTA competitonwinners!

Photo contest winner: Purvi Patel, Haynes and Boone, LLP, USA

What is the tallest building in San Francisco? Answer: The Transamerica PyramidWinner: Jongsang Kim, LG Life Sciences, Korea

When was the last Annual Meeting held in San Francisco?Answer: 2001Winner: Victoria Doyle, Fried Frank, USA

Classified

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 7

DE SOLA PATE & BROWNAttorneys & Counselors

Caracas, Venezuela

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

trademark litigation and unfair competition.

Contact:Irene De Sola (irene@desolapate.com) and/orRichard N. Brown (rbrown@desolapate.com)

www.desolapate.comdplaw@desolapate.comTel. 58-212-7939898Fax. 58-212-7939403

De Sola Pate & Brown Attorneys & CounselorsTorre Domus, 16th FloorAv. Abraham LincolnSabana GrandeCaracas, Venezuela

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brought to Venezuela”

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

T rademark Reporter authors Jordan S. Weinstein ofOblon Spivak McClelland Maier & Neustadt andTheodore Davis of Kilpatrick Townsend &

Stockton will once again examine the hottest trademarkcases of the past year in today’s session reviewing key caselaw developments since last year’s Annual Meeting.

While In re Bose is now news of the past, Weinsteinsays that another case regarding the role of advice of coun-sel in fraud claims could be a game changer. In the federaland state courts, Davis will analyze three headline-grab-bers that raise important questions about the doctrine offunctionality and how courts are interpreting theTrademark Dilution Revision Act.

(Dys)FunctionalityIn 2010 and 2011, courts have been grappling with how toapply the concept of trademark functionality to wordmarks. In both Rosetta Stone v Google (4th Cir, 2010) andFleischer Studios v A.V.E.L.A (9th Cir Court of Appeals,2011) courts found pure word marks to be functional as amatter of law. Since the doctrine of functionality is normal-ly aimed at product designs and packaging, these cases“are a different animal altogether,” says Davis.

In Rosetta Stone, the US District Court for the Eastern

District of Virginia found in August last year that Googlecould not be held liable for trademark infringement, con-tributory trademark infringement, vicarious trademarkinfringement, trademark dilution, unfair competition orunjust enrichment for allowing advertisers to purchaseRosetta Stone’s trademarks to use as keywords to triggersponsored links.

Addressing the issue of intent to infringe, the court saidthat Google’s approach to aggregating information andproviding advertising space is “akin to a newspaper ormagazine selling advertising space.” Since Google does notsell its own products, “any argument that Google is tryingto palm off its goods as those of Rosetta Stone’s isunfounded,” said Judge Gerald Bruce Lee.

Lee also rejected Rosetta Stone’s argument thatGoogle’s intent is evident in its acknowledgment of the factthat using trademarked keywords in the text of sponsoredlinks can generate more revenue, saying that “evidence offinancial gain alone is insufficient evidence of intent.” Onthe point of actual consumer confusion, Lee said that“Rosetta Stone’s evidence of actual confusion—testi-monies of five individuals out of more than 100,000impressions over six years—is de minimis.”

But perhaps most controversially, Lee also found that

using trademarked keywords to identify relevant spon-sored links is a functional use, and that Google is thereforeprotected from infringement claims under the doctrine offunctionality. That doctrine says that “a product feature isfunctional ‘if it is essential to the use or purpose of the arti-cle or if it affects the cost or quality of the article’”.

INTA vigorously criticized this analysis in its amicuscuriae brief asking the Fourth Circuit Court of Appeals tohear the case (see box).

No Boop for youSeveral months later, in March this year, the Ninth CircuitCourt of Appeals affirmed a lower court’s ruling of summa-ry judgment dismissing a copyright and trademark infringe-ment action over unauthorized Betty Boop merchandise.

In Fleischer Studios v A.V.E.L.A, the plaintiff assertedAVELA had infringed its IP rights by selling merchandisefeaturing the iconic American cartoon character BettyBoop. But the Ninth Circuit found Fleischer Studios hadnot adequately shown chain of title to the character anddid not have a valid copyright. Further, the court held thatsince AVELA’s use of Betty Boop was functional and wasnever portrayed as “official” merchandise, there was notrademark infringement.

Preview U.S. case law review

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com8

Courts address functionality and advice of counselToday’s annual review of U.S. case law will cover key trends such as U.S. courts’ recent approaches to assessingtrademark functionality and how getting advice of counsel could change the game for fraud cases post-Bose.Eileen McDermott reports.

The court also said that the Supreme Court’s 2003 rulingin Dastar Corp v Twentieth Century Fox Film Corp teachesthat “where a copyright is in the public domain, a party maynot assert a trademark infringement action against analleged infringer if that action is essentially a substitute for acopyright infringement action.” Applying that case, thecourt held that Fleischer’s trademark claims were not validbecause the Betty Boop character is in the public domainand the trademark claims would essentially be a substitutionfor a copyright infringement action. “If we ruled thatA.V.E.L.A’s depictions of Betty Boop infringed Fleischer’strademarks, the Betty Boop character would essentiallynever enter the public domain,” wrote the majority.

INTA is arguing in its amicus brief urging the NinthCircuit Court of Appeals to re-hear the case that this analy-sis is a misinterpretation of Dastar because that caseinvolved whether a party copying a work for which thecopyright has expired is required to credit the originalauthor. “Appellant’s concern is that Appellees have used theBetty Boop trademarks on Appellees’ goods and are passingthose goods off as Betty Boop-brand merchandise, confus-ing consumers as to the source of those goods. Unlike theclaim in Dastar, that is the essence of a trademark infringe-ment claim,” said the INTA brief. Davis agrees, and calledthe court’s analysis on this point “a profound misreading ofDastar.” (INTA’s brief also argues that the court’s holdingson aesthetic functionality were in error.)

The MPAA, Edgar Rice Burroughs (creator of Tarzan) anda number of major professional sports leagues have also filedamicus briefs asking the court to re-hear the case for similarreasons to INTA. Davis authored the brief on behalf of MajorLeague Baseball, the National Basketball Association, theNational Football League and the National Hockey League.

If a rehearing is granted, the issues raised by Fleischerand the amici will be addressed either by the same panel ofjudges or a limited en banc panel of the court’s 26 activejudges. However, the court does have discretion to grant a

rehearing by the full court. Davis says that both Fleischerv. AVELA and Rosetta Stone “are significant in their ownright,” particularly because the judgments were a matter oflaw. “This is the kind of result you get without the benefitof briefing by the parties,” says Davis.

Advice is niceAt the TTAB, Weinstein says that the “game changer” thisyear was M.C.I. Foods v Brady Bunte, a case in which theBoard ruled that the defendant’s efforts to obtain advice ofcounsel as to the scope of goods for which it could registerits CABO PRIMO mark was enough to prove that it didnot intend to deceive the USPTO.

When M.C.I. Foods attempted to cancel Bunte’s markCABO CHIPS, Bunte replied by accusing M.C.I. of fraudagainst the USPTO because M.C.I. had never used its markfor tortilla chips, despite claiming use in its application forregistration. But the TTAB found that, because M.C.I. hadobtained advice of counsel in determining the scope of goodsfor which to register, it could not be charged with fraud.

The hitch was that M.C.I. merely stated that it hadobtained advice of counsel, and Bunte failed to ask forspecifics, says Weinstein. Based on testimony given byM.C.I.’s president, the Board determined that, “becauseMCI filed its application to register the CABO PRIMOand design mark with the advice of counsel, the overlyexpansive description of goods, while a false statement,falls short of constituting a fraudulent statement whichcarries with it an actual or implied intent to deceive theUSPTO.”

The Board went on to say that “it was incumbent uponBunte” to “[elicit] further testimony as to the actual adviceMCI received when it ‘discussed with counsel’ the list ofgoods it intended to include in the application and whetheror to what extent MCI relied on such advice.” However,the Board noted that “our finding here does not mean thatmere assertion that one acted on ‘advice of counsel’ will

make out a good defense to a charge of fraud. Rather, ourfinding should be taken as an indication that the chargingparty must be able to show at trial that the defense is inap-plicable or inappropriate under the particular circum-stances of the case at hand.”

“We’ll see new tactical movements being made by bothplaintiffs and defendants in fraud cases and a lot moreattorneys being deposed at the Board,” says Weinstein.And, because fraud has been such a hot topic since In reBose and the fraud line of cases so closely followed,Weinstein predicts that the impact of the ruling will be feltwithin the next six to 12 months.

Weinstein will also cover In re Chippendales USA, inwhich the Board allowed an applicant to file a secondapplication for the same mark covering the same goods inorder to attempt to prove inherent, rather than acquired,distinctiveness.

Preview U.S. case law review

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 9

“The functionality analysis was flawed because theCourt wrongly ignored that Rosetta Stone’s trade-marks are not functional features of Rosetta Stone’sproducts. Inventing new and misguided law, theDistrict Court focused only on Google’s purported‘functional use.’ This was a fundamental and criticalerror. Moreover, as a consequence of the error, theDistrict Court avoided reaching an important issue inthe case-determining the proper balance between (1)Google’s and its advertisers’ rights to make fair use oftrademarks, and (2) Rosetta Stone’s and other trade-mark owners’ rights to protect their marks againstcounterfeiting, infringement, and dilution.”

INTA’s amicus brief on functionality inRosetta Stone v. Google

CW01—Annual Review of U.S. Federal Case Law and TTABDevelopments is at 10:15 a.m. today.

Preview M&A

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com10

T here are more M&A deals today where intellectualproperty is a crucial factor, for two reasons. First, IPis seen as of greater importance by investors looking

to buy companies increasingly on the basis of intangibleassets. Second, IP has proved to be crucial to several dealsover the past few years—some of which have gone wrong.The result is the rise of the IP lawyer specialising in M&Awork, and the growing role of the in-house IP counsel.

A good example was the sale of the Australian branchof Schweppes by Cadbury for A$1.1 billion ($813 million)in 2009. Kristin Stammer, a partner at Freehills and themoderator of a session on M&A later today, representedCadbury on the deal. “It was a perfect example of thiskind of IP-rich transaction,” she says. “A big portfolio ofbrands, with several complex license arrangements—all ofthese made IP key to the deal.”

The biggest effect of having specialist IP counselinvolved was that issues were discovered earlier.Often, intellectual property is an afterthought ina transaction and is therefore not considereduntil it is too late to substantially change anyaspects of the deal. Whether you’re represent-ing the buyer or the seller, both need to be ableto do their own due diligence first in order tocommunicate effectively with the other side.

“I was working on a deal recently in Australiawhere there were over 800 licenses involved,” saysStammer. “When you have that degree of com-plexity a license specialist is required. Otherareas that always need checking are the registra-tions of patents and trademarks, names andupcoming renewals. It’s often surprising how manyerrors can be found in the simplest IP registrations.”

Stammer will chair a panel that has a good geographi-cal reach. Alongside her representation of Asia-Pacific, theteam includes Daniel Glazer from Patterson Belknap Webb& Tyler in the U.S. and Adrian Smith from Simmons &Simmons in the UK. Alongside them, giving the in-houseview, will be Elisabeth Bradley of Kraft Foods.

Increased deal flowBoth Glazer and Stammer are on the project team for this

year’s meeting in San Francisco, and had been inter-ested in including an M&A session for a while.

Glazer adds that a third reason for the increase inIP-intensive M&A is simply the improvement inthe economy, which is leading to more peopleworking on more deals. “This session wouldn’t

perhaps have been as useful at the 2009 or 2010Annual Meetings,” he says. “The deal flow now in

the U.S. is becoming much more consistent andanecdotally I hear that’s true in Europe as well.”

The biggest IP risk when you’re buying abusiness is infringement, in Glazer’s experience.Whether it is trademark or patent infringement,the litigation is costly, lengthy and extremely

disruptive to a business—which presumably theacquirer is trying to get running as quickly as possi-

ble. Patent infringement can often go all the way to trial,while trademark infringement will often lead to injunc-tions and, perhaps most disruptively, changing all themarks associated with the new business.

During the due diligence phase of a transaction, this iswhat external IP counsel will be focused on—the risk thatthe company being bought is infringing the patents ortrademarks of a third party. Part of this is working outwhether the company has performed all the searches it canto make sure it is not infringing, such as a freedom-to-operate search or other clearance searches.

The transaction is made a lot easier if this is obviouslythe case or the company is prepared to state that it is thecase. “Which is where the battle lines are drawn—over therepresentations and warranties,” says Glazer.

“Ultimately, it’s very difficult for either the buyer or theseller to get 100% certainty that there’s no infringement. At

Good IP management key to M&AA session today on mergers and acquisitions will present attendees with lists of draft covenants to consider. Butdon’t worry, says Simon Crompton. As long as your IP is in good shape, everything is easy.

$800 bnValue of global M&A

in Q1 2011

55%Growth of Q1 M&A,

2011 on 2010

the end of the day someone has to take on someunknown, unasserted infringement risk. And themore work the seller has done in advance—likethose freedom-to-operate searches—and the bet-ter it has run its company generally as regards IP,the more likely it is that the buyer will be pre-pared to take on some of the unknown, unassertedrisk.” Which, to return to Stammer’s earlier point, is agood reason to have specialist IP counsel working with theseller early. It could save the company taking on substantialrisk in its representations and warranties.

Specifically, the negotiations over the non-infringementrepresentation will be heavily skewed towards the buyer.This clause is now included as standard in all M&A trans-actions, whether stock purchase, asset purchase or merger.It says something along the lines of “the operation of thebusiness does not infringe third-party intellectual propertyrights.” The negotiation comes over whether this clause

will be qualified with something like “to the sell-er’s knowledge.” If that qualification is included,then the risk of unknown, unasserted infringe-ment passes to the buyer. The seller is only atrisk of being discovered to have hidden knowl-

edge of a potentially infringing product ormark.

Open-source codeThe use of open-source code in transferred software is anoth-er big risk in M&A. This code is available for anyoneto use in programming, generally without a fee, butunder certain terms and conditions. This caninclude licensing restrictions, such as the require-ment that if you make alterations to the code inorder to create something new, this is also madefreely available—in the spirit of open source.

Indeed, the most restrictive conditions require

that the code cannot be used in conjunction with any othersoftware, unless you are also prepared to make that soft-ware freely available. This could lead to a buyer beingforced to give up proprietary software that was a key tar-get of the acquisition.

Unfortunately, an increasing amount of softwareincludes open-source code because it is free, easily accessi-ble and usually very useful. “A few years ago you couldeasily put in a representation that said no software con-tains open-source code,” says Glazer. “Now it’s a big duediligence issue and hard to get into a contract.”

Sometimes a seller will be able to list the open-source codeused in proprietary software as part of the due diligenceprocess, and state the license terms of that code. It is muchharder to convince it to sign a representation taking respon-sibility for any adverse consequences of the use of that code.

So intensive diligence followed by intensive negotiation.It’s no wonder more IP counsel are being called into dealsearlier in the process.

With trademarks, the big issue is how much so-called qual-ity control has been exercised in recent years. In other words,how much money the seller has spent tracking misuse of thetrademark and enforcing its rights in the face of infringement.Lawyers report a big variation in the attitude towardsenforcement, even among the big western brands that haverecently been acquisition targets and for which intellectualproperty makes up a big proportion of their value.

Other important trademark issues include chains of titleand trademark liens. Fortunately, the speakers agree that the

size of the potential problems is directly related to howwell intellectual property has been managed in the

past, rather than to the size of the company or itsportfolio. Indeed, smaller companies with fewerbrands are often harder to deal with because theymay consider good trademark practice less of a

priority. So if your company’s IP is in good shape,don’t worry. If it isn’t, get it in order now.

Preview M&A

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 1 1

As part of today’s session, atten-dees will be talked through the kindof provisions often inserted intostock purchase agreements con-cerning IP. These include definitionsof the words ‘intellectual property’and ‘registered’, a disclosure sched-ule, representations of the owner-ship of IP and non-infringement,and pre-closing covenants.

In each instance the speakers willpresent a hypothetical proposalmade by the buyer and by the seller,with notes on how negotiations arelikely to run and the key positionstaken by each side. On pre-closing

covenants concerning the conductof business, for example, the sellerwill aim to use a brief text promisingnot to miss deadlines on registeredIP. The buyer will propose a muchlengthier text, in order to try toensure that absolutely no valuableIP is lost between the executiondate on a deal and its closing.

Other points to cover include so-called wrong pockets, which dealwith IP assets that are not part ofthe original transaction, but whichboth parties later decide should bepart of the deal. In that case theyare held by the seller for the benefit

of the buyer and transferred afterclosing. One of the lengthier provi-sions concerns a temporary trade-mark license, where there is a peri-od between the deal closing and thenew business rebranding and there-fore ceasing to use those trade-marks. Typically this lasts fewerthan 120 days, but where it is longerthe provision lengthens in parallel,to cover more eventualities.

These provisions will be availableduring the session as written mate-rials, so thankfully attendees willnot have to take down the detailthemselves.

IP provisions in an M&A deal

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: angusforsyth.office@sw-hk.com

Lai LamTel: (852) 2533 2545 Email: lailam.office@sw-hk.com

Head Office: 4/F & 5/F, Central Tower, No.28 Queen’s RoadCentral, Hong Kong

China Office: Suite 1704, Citic Plaza, 233 Tian He N. Road,Guangzhou 510613, China

www.sw-hk.com

9,600Number of global

M&A deals in Q1 2011

34%Percentage of

companies considering

acquisitions in

2011

Interview Timothy Ernst

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com12

Tell us about Del Monte’s historyDel Monte has been in California since the gold rush,when farmers started canning fruits and vegetables for theminers to take up to the hills. The DEL MONTE brandstarted back in the late 1800s and became the flagshipbrand of the company.

The company was originally named California PackingCorporation, but in 1967 it changed its name to DelMonte Foods in recognition of its flagship brands.

What are your key brands?Del Monte has two main businesses. We have the con-sumer or human food business and then we have the petfood business, which a lot of people don’t associate withDel Monte. On the human side, the principal brands arethe DEL MONTE brand, which is fruits and vegetablesmainly. We also have a brand CONTADINA, which is pri-marily tomato products, particularly Italian-themed toma-to products. Another brand is COLLEGE INN, which is abroth, like a chicken broth. Then we have another brandcalled S&W, which is a large brand on the west coast ofthe U.S. It has some following in the Middle East.

So that is the human side. We have a pet food business.Roughly we generate half of our revenues from pet. On thepet food side, some of our more well-known brands areMILK BONE, MEOW MIX for cat food, KIBBLES ‘NBITS dog food, 9 LIVES cat food and a number of othersmaller brands.

Does having a human and animal side affectyour trademark strategy?The answer is yes. Del Monte is somewhat unique. Up until1989, the company had global operations. In 1989 the com-pany was split into a number of different pieces. Parts of thebusiness were sold off, and the company that I work for (DelMonte Corp) kept the U.S. and South American business.

The Europe, Asia, India, Mexico, Canada sections wereall sold to different companies. We retain ownership of thetrademarks and granted licenses to these other companies,so because of that we maintain the trademarks. We haveregistrations in 172 countries, but we largely operate in theU.S. and South America. Because of this licensing arrange-ment we don’t sell into Europe, for example, because wehave given an exclusive license to companies there.

So our strategy on the human side is to maintain thetrademarks throughout the world, again focusing mainlyon our business in the U.S. The other brands S&W, CON-TADINA, and COLLEGE INN are mainly U.S. focused.We do sell into Mexico and Canada, but it’s small.

On the pet food side it is mostly US based. We do do somebusiness in Europe, the Middle East, and South America. Wedo a lot of business in Canada and some in Mexico. So ourregistration strategy is based on where we conduct business,although we do a lot of defensive filing in a lot of the majorcountries of the world to protect the brand.

Del Monte is famous for ‘the man from Del Monte’ad campaign in the UK. Are you aware of that?It was not in the U.S. and if you ask most people from theU.S. they will never have heard of the ‘man from DelMonte’. But for someone from the UK, if I mention I workfor Del Monte, they always mention ‘it’s the man from DelMonte’, always. It was a big part of Del Monte in the UK.I think that the campaign started when the company wasone company.

What is your role in the company?My title is Vice-President and Associate General Counsel.So I have a number of areas I am responsible for, includingintellectual property, which covers trademarks andpatents. I am also responsible for the commercial area,such as contracts and supply agreements. Regulation offood products, advertising, and Customs are my areas too,so a broad portfolio. The trademark work is probably20% to 25% of my time.

What is your background?I graduated from the University of Wisconsin, with a degreein history and economics. I went to law school at Universityof California Los Angeles. During law school I spent a yearin the University of Cardiff, where I studied law.

After graduating from law school I worked at two lawfirms in San Francisco, one named Pettit and Martin, for acouple of years. And then I was at the firm now calledBingham McCutchen. I was there for about three years.While at Bingham, one of my clients was called Californiaand Hawaiian Sugar Company, also known as C&HSugar. Ultimately they asked me to come in-house at C&HSugar; I was there for five years doing similar things towhat I do here, the general corporate, IP and regulatorywork.

C&H was interesting. It was a cooperative of Hawaiiansugar growers. They would put sugar on a ship toCalifornia, where it would be refined. I came to Del Montein 1995.

What kind of trademark problems does the com-pany face?We are sort of a unique food product. We don’t have a lotof counterfeiting. We do have some in China. Interestingly,corn seems to be the counterfeit item of choice. You’ll seefake DEL MONTE labels, as well as labels that are deriv-ative of the DEL MONTE label, but still infringing labels.It’s an irritant, particularly for our licensee in China,Kikkoman.

The biggest issues involve our licensing structure, so

the flow of products from one territory to another. So forexample Del Monte Europe has the trademark rights tothe DEL MONTE brand in Europe. Products may flowfrom the Philippines, let’s say, into Europe and from theU.S. into Europe. How to control or police that is diffi-cult. In almost all cases the product is not sent there by themanufacturer. It’s bought and through the chain of distri-bution ends up in another licensee’s territory.

So, Canada may complain about U.S. Del Monte prod-ucts in Canada. We will not sell our products to Canadawithout the licensee’s consent, but somebody may godown to COSTCO and buy several products and shipthem into Canada. Policing that is difficult, but it is anongoing struggle.

Do you face any trademark problems online?We get it a little bit. Del Monte is a little below the radar.It’s not the cybersquatters’ first choice. But we do get it,and we do go after cybersquatters in cases where we thinkit creates a problem. We don’t register every domain namein every country—it’s just not worth it to do that for us. Sowe do have some DEL MONTE countrycode domains, butwe don’t go after all of those. We’d spend all of our timeand money doing that, if we did.

Do you face any issues specific to your industry?On the pet food side it is very difficult to export pet foodproducts, particularly pet food products with beef, intoEurope, for example, or Asia, mainly because of mad cowdisease concerns. So that is a hindrance to the developmentof our international pet food business. That is a nut we aretrying to crack; how to expand our international pet foodbusiness. Probably partnering with a company in Europeor Asia would be the best way. We’ve got the brands readyto go.

It is a challenge maintaining and registering in all thecountries of the world. We are obligated do to that underour licensing agreements, but it is difficult to do when weare not operating the businesses in those areas.

So for example we have the cost of maintaining themarks in Asia, but for the most part we don’t do businessin Asia, so we don’t see the benefits of those registrations.We don’t get a royalty, so it’s an ongoing cost without theobvious benefit of royalty or sales.

Does the name DEL MONTE cause any difficulty?Del Monte means from the mountain. It’s a commonphrase in Spanish-speaking countries. Sometimes it’s hardto get and maintain registrations in Spanish-speakingcountries. They might argue that it’s descriptive, so youmight have a company that grows wine and wants to use‘from the mountain.’ It can be difficult to convince regis-trars sometimes that ‘from the mountain’ is something weown and should be protected.

What would you recommend to do in SanFrancisco?San Francisco is famous for its restaurants, so definitely trythe restaurants. The natural beauty of San Francisco isgreat. There is a place called the Marin Headlands, whichis just across the Golden Gate Bridge and west. There aresome beautiful wild spots there to look back and see thecity and bridge from. It’s very historic. Crissy Field is niceplace for a walk and there are some great museums inGolden Gate Park too.

Protecting the marks from the mountainVice-President and Associate General Counsel of Del Monte Corporation Timothy Ernst tells Fionn O’Raghallaighhow the company’s licensing structure affects trademark strategy, especially given the variety of products thecompany is involved with.

Barnes & Thornburg, Cliff House Davies Collison Cave, Ducca RestaurantBircham Dyson Bell and Nelligan O’Brien Payne, Twenty Five Lusk

Kirkland & Ellis, Salt House

Arochi Marroquín & Lindner, The Bently Reserve Cassels Brock, W Hotel Dumont Bergman Bider, Westin St. Francis

Fross Zelnick Lehrman & Zissu, Julia Morgan Ballroom Birch, Stewart, Kolasch & Birch, The San Francisco Borden Ladner Gervais, Jones

Remfry & Sagar, New Delhi Restaurant Boult Wade Tennant, Top Of The Mark Field Fisher Waterhouse, Terra Gallery

Foley & Lardner, W Hotel ASIPI, Hilton Union Square Latham & Watkins, W Hotel

Buchanan Ingersoll & Rooney, Fairmont Hotel H K Acharya, InterContinental Hotel

CCPIT, Marriott Marquis Gowlings, San Francisco City Hall World Trademark Review, Asian Art Museum

Receptions

INTA Da i ly News Wednesday, May 18 201 1 www.manag ing ip .com14

Duane Morris, Grand Hyatt Neal Gerber Eisenberg, 111 Minna Gallery

Gorodissky & Partners, Marriott Marquis Vivien Chan & Co, Intercontinental Gevers, Muir Woods

Bird & Bird, Mezzanine San Francisco Corsearch, Bimbo’s 365 Club

Rouse, Hotel Vitale Groth & Co, Waterbar K&L Gates, Sens Restaurant

Latham & Watkins, W Hotel Marks & Clerk, University Club

Bircham Dyson Bell and Nelligan O'Brien Payne, Twenty Five Lusk Chadha & Chadha, The Cellar

Fulbright & Jaworski, The Ferry Building Vossius & Partner, Pier 5 OHIM, Marriott Marquis

Knobbe Martens Olson & Bear, San Francisco Opera House Wan Hui Da, Cellar360 Lazewski Depo & Partners, Thirsty Bear

Receptions

www.manag ing ip .com INTA Da i ly News Wednesday, May 18 201 1 15

Today’s Schedule | Wednesday, May 18, 2011Most events take place at the Moscone Center West (MCW, 800 Howard Street) and the San Francisco Marriott Marquis (SFMM, 55 Fourth Street). Consult the Final Program for times and locations of invitation-only events.

7:30 am – 2:00 pm REGISTRATION MCW Foyer

7:30 am – 2:00 pm HOSPITALITY MCW Hall

8:00 am – 10:00 am BREAKFAST TABLE TOPICS MCW Rooms 2022-2024

8:00 am – 10:00 am PDA Group Council SFMM Nob Hill A&B

9:00 am – 10:00 am ESG Group Council SFMM Nob Hill D

PUBS Group Council SFMM Nob Hill C

9:00 am – 2:00 pm EXHIBITION HALL MCW Hall

10:00 am – 11:00 am PDA India Meeting SFMM Golden Gate Ballroom A

10:00 am – 11:00 am SPEED NETWORKING MCW Hall

10:00 am – 2:00 pm TOUR BOOTH MCW Foyer

10:15 am – 11:30 am CONCURRENT SESSIONS

CW01 Annual Review of U.S. Federal Case Law and TTAB Developments MCW Rooms 2002-2008

CW02 Regional Update—China MCW Room 2001

11:45am – 1:00 pm CONCURRENT SESSIONS

CW20 Trademarks and Domain Names in Mergers and Acquisitions and Other Corporate Transactions MCW Rooms 2002-2008

CW21 Celebrities and Brands: Image and Publicity Rights MCW Rooms 2003-2007

CW22 Regional Update—Latin America and Mexico MCW Room 2001

1:15 pm – 3:15 pm LUNCHEON TABLE TOPICS MCW Rooms 2022-2024

7:00 pm – 11:00 pm GRAND FINALE: California Academy of Science Shuttles depart from hotels beginning at 6:45pm

Shuttles for the Grand Finale will run every 10-15 minutes 5:30pm - 11:00pm from/to Hilton San Francisco, Westin St. Francis, Grand Hyatt, Palace Hotel, Marriott Marquis and InterContinental.

No Grand Finale shuttle service from Moscone West.