transcript   Transcript

Trademark Enforcement Update

Recorded on: Jan. 26, 2018
Running Time: 01:01:41

Full Transcript:

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Taken from the Web Program Intellectual Property Rights Enforcement 2018 Recorded January 2018 in New York

Trademark Enforcement Update [01:01:41]

Significant trademark issues continue to percolate in the courts and the U.S. Patent and Trademark Office.  This annual summary of leading cases will cover:

  • What does it take for a mark to become generic?  GOOGLE and TIFFANY survive initial assaults but face petitions for cert and possible appeal
  • What does it take to register a mark that is descriptive and where do you draw the line between descriptive marks and generic terms? The latest on COKE ZERO, BOOKING.COM and FIRST TUESDAY
  • “Strength of plaintiff’s mark” in various Circuit court tests vs. “fame of plaintiff’s mark” in the DuPont test applied by the TTAB in assessing likelihood of confusion:  Is there a difference in the two formulations?  Should there be?  The CAFC Joseph Phelps Vineyards v. Fairmont Holdings case reverses the “yes or no” TTAB “fame” analysis and advocates a sliding scale considering the “totality of the circumstances,” similar to other Circuit court tests. Prof. McCarthy agrees   
  • What does it take for a foreign mark owner to successfully assert rights in the US?  An update on ongoing litigation involving cross-border disputes over TRADER JOE’S, Bayer’s FLANAX and CASEMATE
  • What relief is available for infringement and how does willfulness affect the award?  How much of the $19 million award in Tiffany v. Costco was due to the finding that Costco willfully infringed the Tiffany mark?

Siegrun D. Kane, Kathleen E. McCarthy

The purchase price of this Web Program segment includes the following article from the Course Handbook available online:

  • PLI IP Enforcement Update 2018: Trademark Enforcement (October 20, 2017)
    Siegrun D. Kane, Kathleen E. McCarthy
Presentation Material
  • IP Enforcement and Litigation 2018: Trademark Update
    Siegrun D. Kane
  • Trademark Enforcement: Litigation Strategies
    Kathleen E. McCarthy
Siegrun D. Kane ~ Kane Advisors, LLP
Kathleen E. McCarthy ~ King & Spalding
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