Intellectual Property Issues Intellectual Property Issues in International Commercein International Commerce

International Law SectionInternational Law SectionIdaho State BarIdaho State Bar

October 27, 2011October 27, 2011

Brad FrazerBrad FrazerHawley TroxellHawley Troxell208.388.4875208.388.4875

bfrazer@hawleytroxell.combfrazer@hawleytroxell.com

Why do you care?Why do you care? Hypothetical: Your client starts selling its Hypothetical: Your client starts selling its

patented mousetrap in the U.S. under the patented mousetrap in the U.S. under the trademark “Mouseraser.” Six weeks later, trademark “Mouseraser.” Six weeks later, you learn that a company in Sweden is you learn that a company in Sweden is selling the patented mousetrap there under selling the patented mousetrap there under the brand name “Mousey-Racer.”the brand name “Mousey-Racer.”

Hypothetical: Two months later, that same Hypothetical: Two months later, that same Swedish company starts selling mouse Swedish company starts selling mouse poison in the U.S. under the “Mousey-Racer” poison in the U.S. under the “Mousey-Racer” brand. That same company also registered brand. That same company also registered the domain names “mouseraser.se,” the domain names “mouseraser.se,” “mousey-racer.com” and “mouseraser.cn.”“mousey-racer.com” and “mouseraser.cn.”

Types of Intellectual Property Types of Intellectual Property (“IP”)(“IP”)

1.1. PatentsPatents2.2. TrademarksTrademarks3.3. Domain Names (and Twitter usernames? Domain Names (and Twitter usernames?

Facebook pages?)Facebook pages?)4.4. CopyrightsCopyrights5.5. Trade SecretsTrade Secrets6.6. IP created by contract (“NDA’s”)IP created by contract (“NDA’s”) Focus today on trademarks and domain Focus today on trademarks and domain

namesnames

What are trademarks?What are trademarks?

A trademark or service mark is any A trademark or service mark is any word, slogan, logo, symbol, sound, word, slogan, logo, symbol, sound, color, smell, or other item that serves color, smell, or other item that serves as a means of commercial source as a means of commercial source identification of a product or service.identification of a product or service.

E.g., Nike, Coke, Geico Gecko--or E.g., Nike, Coke, Geico Gecko--or Geico CavemenGeico Cavemen

Types of U.S. Trademark Types of U.S. Trademark ProtectionProtection

Common Law™ - unregisteredCommon Law™ - unregistered– In the U.S., trademark rights arise through use, not In the U.S., trademark rights arise through use, not

through registration.through registration.

State Registration – the “truly local”State Registration – the “truly local” Federal Registration® - interstateFederal Registration® - interstate Registration in the U.S. requires acceptable Registration in the U.S. requires acceptable

“trademark use.” “trademark use.”

Trademark Electronic Search System(Tess)

Record 1 out of 1 (6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND

Goods and Services

IC 004. US 001 006 015. G & S: Oil based metal cutting fluid and oil based metal removal fluid for industrial metal working. FIRST USE: 20000131. FIRST USE IN COMMERCE: 20000131

Mark Drawing Code

(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND

Serial Number 76079064

Filing Date June 20, 2000

Current Filing Basis

1A

Original Filing Basis

1A

Supplemental Register Date

December 18, 2001

Registration Number

2560618

Registration Date April 9, 2002

Owner (REGISTRANT) Midwest Biologicals, Inc. CORPORATION INDIANA 3404 State Road 101 Woodburn INDIANA 46797

Attorney of Record

Mark F. Smith

Description of Mark

The mark is a scent mark having the scent of bubble gum.

Trademark Electronic Search System(Tess)

Record 1 out of 1

(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND

Goods and Services

IC 009. US 021 023 026 036 038. G & S: computer hardware and computer operating software, microprocessors, integrated circuits and semiconductor devices. FIRST USE: 19941000. FIRST USE IN COMMERCE: 19941000

Mark Drawing Code

(6) FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND

Serial Number 75332744

Filing Date July 29, 1997

Current Filing Basis

1A

Original Filing Basis

1A

Published for Opposition

November 16, 1999

Registration Number 2315261

Registration Date February 8, 2000

Owner (REGISTRANT) Intel Corporation CORPORATION DELAWARE 2200 Mission College Blvd. Santa Clara CALIFORNIA 95052

Attorney of Record

J PAUL WILLIAMSON

Description of Mark

The mark consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT.

Type of Mark TRADEMARK

Register PRINCIPAL

Live/Dead Indicator

LIVE

Advantages to Federal Advantages to Federal (U.S.) Registration:(U.S.) Registration:

Constructive notice nationwide of TM owner's Constructive notice nationwide of TM owner's claim. claim.

Evidence of ownership of the trademark.Evidence of ownership of the trademark.

Jurisdiction of the federal courts may be Jurisdiction of the federal courts may be invoked.invoked.

Registration can be used as a basis for Registration can be used as a basis for obtaining registration in foreign countries.obtaining registration in foreign countries.

Registration may be recorded with U.S. Registration may be recorded with U.S. Customs Service to prevent importation of Customs Service to prevent importation of infringing foreign goods. infringing foreign goods.

InfringementInfringement

Is the defendant using a confusingly Is the defendant using a confusingly similar trademark to sell or advertise similar trademark to sell or advertise a related line of goods or services?a related line of goods or services?

Is there a likelihood of consumer Is there a likelihood of consumer confusion as to the source of the confusion as to the source of the infringing goods?infringing goods?

bfrazer@hawleytroxell.com / bfrazer@hawleytroxell.com / @bfrazjd@bfrazjd

What are domain names?What are domain names? A domain name correlates words to a A domain name correlates words to a

numeric identifier called an “IP numeric identifier called an “IP Address” that tells your web browser Address” that tells your web browser where to look for a particular web site.where to look for a particular web site.

Top-level domains, e.g., .com and .net Top-level domains, e.g., .com and .net (gTLDs).(gTLDs).

Second-level domains, e.g., “Amazon.”Second-level domains, e.g., “Amazon.” ccTLDs—e.g., .tw (Taiwan), .uk (United ccTLDs—e.g., .tw (Taiwan), .uk (United

Kingdom), .cn (China), .se (Sweden); Kingdom), .cn (China), .se (Sweden); also are Top-level Domainsalso are Top-level Domains

Are trademarks and domain Are trademarks and domain names the same thing?names the same thing?

Amazon.com is bothAmazon.com is both What about Golden Acres Retirement What about Golden Acres Retirement

Community, whose website URL is Community, whose website URL is boiseretirement.com?boiseretirement.com?

Consider the impact of the new Consider the impact of the new gTLDs!gTLDs!

International Considerations: International Considerations: Always protect your IP in the Always protect your IP in the

United States first!United States first! Creates priority dates for other Creates priority dates for other

jurisdictions. jurisdictions. Utilizes a familiar, definitive Utilizes a familiar, definitive

regulatory and statutory scheme.regulatory and statutory scheme. Builds value and good will.Builds value and good will.

International Considerations: International Considerations: Always search in the other Always search in the other

jurisdictions before jurisdictions before commencing commerce!commencing commerce!

Dangers: infringement liabilityDangers: infringement liability Dangers: impoundmentDangers: impoundment Dangers: injunctionDangers: injunction

International Protection--International Protection--TrademarksTrademarks

Trademarks are “territorial.”Trademarks are “territorial.” National filingsNational filings Centralized filingsCentralized filings

– Madrid Protocol (EU is now a contracting Madrid Protocol (EU is now a contracting party)party)

– Community Trademark (EU)Community Trademark (EU)

International Protection—International Protection—Trademarks (cont’d)Trademarks (cont’d)

““First-to-File” Jurisdiction?First-to-File” Jurisdiction?– E.g., China, Germany, Japan E.g., China, Germany, Japan – Versus a “common law,” first-to-use Versus a “common law,” first-to-use

jurisdiction (U.S., Canada, Australia)jurisdiction (U.S., Canada, Australia)– Conflicts are inevitableConflicts are inevitable

Many times a combination of Many times a combination of approaches is needed.approaches is needed.

International Protection—International Protection—Domain NamesDomain Names

Aggressive and proactive registration of Aggressive and proactive registration of ccTLDs (.co is a lot like .com)ccTLDs (.co is a lot like .com)

ICANN UDRP—maybe; policies vary by ICANN UDRP—maybe; policies vary by registrar and registry. See registrar and registry. See http://arbiter.wipo.int/domains/cctld_db/index.htmlhttp://arbiter.wipo.int/domains/cctld_db/index.html

Anticybersquatting Consumer Protection Act?Anticybersquatting Consumer Protection Act?

Other International IssuesOther International Issues Licensing and IP OwnershipLicensing and IP Ownership PiracyPiracy Agreement on Trade Related Aspects of Agreement on Trade Related Aspects of

Intellectual Property Rights  (TRIPS) Intellectual Property Rights  (TRIPS) Anti-Counterfeiting Trade Agreement (ACTA)Anti-Counterfeiting Trade Agreement (ACTA)

– Signed October 1, 2011, by United States, Australia, Signed October 1, 2011, by United States, Australia, Canada, Japan, Morocco, New Zealand, Singapore, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea and South Korea

Strategy Targeting Organized Piracy (STOP!) (Strategy Targeting Organized Piracy (STOP!) (http://www.stopfakes.gov/ ) )

U.S. Customs and Border ProtectionU.S. Customs and Border Protection

Take-AwaysTake-Aways

Protect IP in the United States first.Protect IP in the United States first.

Perform searches in target jurisdictions.Perform searches in target jurisdictions.

Protect IP in other jurisdictions quickly.Protect IP in other jurisdictions quickly.

– Note on patents and disclosures . . .Note on patents and disclosures . . .

Use Treaties and Border Enforcement.Use Treaties and Border Enforcement.

Q & AQ & A