The 2012 annual meeting of the International Trademark Association (INTA) was the association’s 134th meeting. With nearly 10,000 IP professionals from across the globe, it was its largest yet.
With recent reports on trademark “bullying,” the breakdown of SOPA/PIPA and ICANN’s gTLD expansion, the term “intellectual property” could risk negative connotations. Public hostility to IP means companies must reconsider how to enforce their marks.
INTA President Gregg Marrazzo urged public education on IP’s value and importance. INTA launched “Unreal,” an awareness campaign targeting the next generation of consumers – teenagers – on trademark importance and harms/risks of counterfeits.
Leonard Lauder keynoted, sharing Estee Lauder tales. Their lawyers cleared “Clinique” for use, until, one month before launch, the product “Astringent Clinique” was discovered. Handled for $100,000, the lesson was learned: “You can never be too careful.” Lauder said he loved the name “Origins” so much he bought the company (that held senior rights to the mark). “Country Mist” had to change its name to “Country Moist” in Germany because “mist” translates as “manure” there. Touching on INTA’s “Unreal,” Lauder said a trademark is a “guarantee of brand promise. Counterfeiting breaks that promise.”
With more than 2000 applications submitted/in progress, totaling more than $350 million in application fees, it’s no surprise ICANN’s gTLD expansion was a hot topic. Marrazzo attributed “confusion and an array of potentially harmful illegal practices” to it, noting hopes that TAS will be the system’s only malfunction and not an indication of things to come.
A concerned trademark community noted the proposed Trademark Clearing House is “far behind” in development. One speaker warned that protecting just 5 trademarks in the sunrise period for only 150 of the expected 2000 gTLD extensions could cost nearly $150,000, concluding, “it’s both not as terrible, and also much more terrible, than you think.”
Yahoo’s J. Scott Evans advised, “Know exactly why you did, or did not apply.” With so much uncertainty regarding timing and impact, Evans contends disputes and litigation over a particular domain string or outcome of an auction are likely. If so, it could impact timing of the second round of gTLD applications – “it could be very far away.”
Social media brings brands much closer to customers, but complicates trademark enforcement. Twitter’s global brand protection manager stressed its policy in dealing with impersonators and infringers. As Twitter, Facebook and Pinterest become key marketing tools, it’s important for brands to know when to embrace, ignore or pursue infringers/impersonators. “The reality is,” Adam Palmer of Symantec observed, “that cybercriminals move at the speed of light, but we move at the speed of law.”
A sesison on “trademark trolls” particularly stood out. A trademark “troll” – defined as the attempted enforcement of rights by an individual who (allegedly) has no business owning them – example: word leaks of a new brand name, so someone attempts to register the domain name, buy AdWords on Google and set up a fake company using the name, all to try to assert prior rights.
With these “quasi-rights,” the troll then makes it “easier” for the legitimate company to buy the name from them rather than go through the legal process of having it transferred or cancelled. In case this all sounds theoretical or rare – FACT: $24 million is the estimated cost to defend against notorious troll Leo Stoller’s trademark oppositions and lawsuits.
Related: “non-traditional trolling,” when a party claims it owns the unownable, such as asserting rights in descriptive marks or phrases/cultural movements. With recent news stories of trademark “bullying,” brands’ aggressive enforcement of legitimate rights now fall in the “troll” category.
• Linguistic and legal differences make it important to understand the requirements for trademark use in Asia. Register a local language of your mark before a squatter gets the chance.
• In Latin America, registration is key to enforcement. In certain jurisdictions individuals were registering the mark far ahead of a foreign brand owner. In other cases, brand owners registered the marks, but didn’t use within allotted time, allowing third parties to step in, forcing brand owners to essentially buy back that which is theirs
• At “The Living Brand” session, P&G, Caterpillar and Fremantle Media discussed brand extension, citing Yamaha’s pianos and motorcycles , as well as Hooters’ expansion to airlines and energy-drinks. On instant brand recognition and “at least you know who you’re in bed with (your own biggest fan),” “Virgin” was held as the success to which all aspire. Risks of cannibalization, equity dilution and SKU proliferation all need to be considered too.
As one tweet from @ipkat nicely summed it up: “Saying farewell to IP friends old and new, I realize how much I learn each year from them -- such friendship is a renewable resource.”
Jerome McDonnell is Group Trademark Director for Interbrand.