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Cost Effective StrategiesCost Effective Strategies

ForFor

Worldwide Trademark Clearance andWorldwide Trademark Clearance and

ProtectionProtection

Wednesday, December 6, 2006Wednesday, December 6, 2006

Presented byPresented by

ACCACC’’s Intellectual Property Law Committees Intellectual Property Law Committee

Sponsored bySponsored by

Kilpatrick Stockton, LLPKilpatrick Stockton, LLP

Panel

Philip Davison, Trademark Counsel – Yum! Brands, Inc.Virginia Taylor, Partner – Kilpatrick Stockton LLPGeorges Nahitchevansky, Partner – Kilpatrick Stockton, LLP

Cost Effective Strategies For

Worldwide Trademark

Clearance and Protection

Virginia Taylor, Partner

Kilpatrick Stockton, LLP

Bravery Is Required

The Stakes Are High

Mistakes can have serious consequences

but

We cannot just say no

Some Marks are inherently almost

impossible to clear for

registrability and enforcability

Common laudatory terms.

Highly diluted terms and combinations

Similar marks will exist in many countries

Example: XTRA-PRO

Weak Diluted Marks may be

available for use, if:

No industry conflict

Not concerned about enforceability

but

Numerous potential objectors will exist.

Distinctive marks are easier toDistinctive marks are easier to

clearclearExample: CERTEGY

Help decision-makers choose a mark that has

good availability prospects

Set realistic expectationsTime

Cost

Degree of certainty needed

Risk-tolerance

Trade-offs will govern speed and scope of clearanceprogram

Perfect certainty is a practical impossibility

If time permits, phased

clearance is most cost effectiveExample:

On-line screening to narrow the list

U.S. commercial search and WISS for a few goodcandidates

Cross reference WISS against available on-line databasesmay identify significant multi-country issues

Country-by-country advice for key markets and identifiedobstacles.

Where time is short:Phasing may not be possible

Borderline marks may have to be rejected

earlier based on on-line and WISS searches

Simultaneous clearance of multiple marks in

key countries will be costly.

Results may be unsatisfactoryNo proposed marks completely clear

Favorite candidate unavailable

Looming deadlines

Problem-solving approach is needed

Salvaging the favorite markModify spelling/add additional element

Thorough investigation to fully evaluate risks

and resolution options

Acquire a senior mark

Acquire the conflicting mark

Ultimately it is the business

managers who must decide

what risks are tolerable

Remember:Registration is essential to protection and

enforcement in most countries

Apply before you announce the new nameand before your local distributor or business

associate does

Multi-National filing strategiesWhere to file:

Countries where the products or services will be launched

initially

Countries where there are potential distributors

Important expansion markets

Countries with the capacity to manufacture competing or

counterfeit goods.

Multi-National filing strategies(continued)

What to file:

Words, designs or both?

Limited classes or broad protection?

English only or local language also?

Balancing costs and protection is a business decision

Costs increase geometrically with more variations, classes

and countries

Filing OptionsU.S. Priority application followed by national

filings and/or Madrid extensions

Often the easiest and cheapest

but

Limited specifications may inhibit future

enforcement

Filing Options (continued)Initial filing in another Madrid Protocol

jurisdiction that allows broad specification

Applicant must either have local presence orsubsidiary

May result in split trademark ownership or across-border asset transfer with unwanted taximplications

Filing Options (continued)Simultaneous filings in U.S. and key national

and regional registries

Logistically complex

Often more costly

Most often used where applicant is a U.S.-basedIP holding company

Maintaining SecrecyPriority application filed by a specially created

entity

Intent to Use application with vaguely wordedspecifications

Difficult to hide from competitors who knowindustry events and watch newly filedapplications in key class.

Like clearance strategies, filing

programs must balance business

costs and risks.

Cost Effective Strategies For

Worldwide Trademark

Clearance and Protection

Georges Nahitchevansky, Partner

Kilpatrick Stockton, LLP

Infringement is Likely

The Do Nothing Approach

Choosing The Right Battles

What Rights Do You HaveInitial Analysis

What kind of jurisdiction is involved

(common law or registration based)

Do you own a registration in the jurisdiction

in question

Have you used the mark in the jurisdiction in

question

Are you vulnerable to a counter-attack

How Strong Are Your Rights

• What goods and services are covered

• How well known is the mark

• How has the mark been used in the

jurisdiction

How to ProceedConsiderations

What kind of infringement is involved

Is this a recurring problem

Are multiple jurisdictions involved

Is an investigation warranted

What are the Available OptionsPart 1

Demand letter (can work, but beware)

-- unjustified threats provisions

Opposition or cancellation action

Court action

-- can be costly and last a long time

-- be clear on the pitfalls and benefits

-- how will a decision be enforced

The Kodak.ru Enforcement

Nightmare

What are the Available OptionsPart 2

Other alternatives can also be used

- Revise your filing strategy

- Détente/co-existence

Coexistence and the InternetThe Imaginarium Example

Toys “R” Us, Inc. (US) -- Imaginarium.com

Step Two SA (Spain) – Imaginarium.es

Coexistence and the Arms Race.

. .

Avoid An Unnecessary Arms

Race

Considerations

Time frame involved

Cost

Degree of certainty needed

Risk-tolerance

Ability to enforce judgments/decisions

Practical Considerations

Make sure key jurisdictions are coveredappropriately

Keep track of how the mark is being used and whatis being planned in the future

Create evidence files (do not wait to the lastminute)Revise and adjust your filing strategy

Re-evaluate your enforcement approach periodically

Be vigilant and use watch services for key marks

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