Category: Intellectual Property

The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?

Barnes & Thornburg LLP‘s Internet and Technology Group recently had an article, The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?, featured in The National Law Review:

The Internet Corporation for Assigned Names and Numbers, often referred to as ICANN, has now released its list of 1,930 applications for proposed new generic Top-Level Domain Names (“New gTLDs”). A list of the New gTLDs and the respective applicants is available here.Much speculation has been made about how these New gTLDs, if successful, will impact the Internet. Brand owners and others are advised to be diligent in preventing others from securing any New gTLDs that may adversely affect their rights.

As expected, many of the applications seek registration of New gTLDs that correspond with generic terms such as .business, .city, .computer and .beer. Still, numerous other applications include domains that correspond with brand names, such as .google, .hbo, and .ferrari.  In many cases, more than one applicant has sought registration of the same New gTLD. Additionally, some of the New gTLDs requested, undoubtedly correspond with trademarks belonging to others.

To address potential disputes over New gTLD applications, ICANN offers several types of pre-delegation dispute resolution procedures to address objections to registration, including:

  1. Legal Rights Objections;
  2. Community Objections;
  3. String Confusion Objections (objections based on confusing similarity to existing top level domains such as .com or .info); and
  4. Limited Public Interest Objections (for example, objections based on human or civil rights); and
  5. Intergovernmental Organization objections

Prior to ICANN’s approval of a New gTLD, third parties will have an opportunity to file a formal objection to a proposed application on the above-stated grounds. Currently, the objection filing window is anticipated to be seven months, from June 13, 2012 to Jan. 13, 2013.

Most objections will likely consist of Legal Rights Objections and Community Objections.

Legal Rights Objections

Brand owners are strongly encouraged to review the list of New gTLD applications to help identify potential legal rights violations.  If a potential violation is identified, brand owners can initiate an arbitration proceeding requesting that an independent panel determine whether an applicant’s potential use of the applied-for New gTLD would be likely to infringe the brand owner’s trademark rights.  To address any such concerns, brand owners may seek to prevent the registration of applied for gTLDs that:

(i)  take unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark;

(ii)  unjustifiably impair the distinctive character or the reputation of the objector’s mark; or

(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

Community Objections

Established institutions that are associated with clearly delineated community may also have a basis to object to New gTLD applications.  To prevail, an objector must demonstrate there is a substantial opposition to registration of that New gTLD by the community and that the use of the New gTLD will cause a material detriment to the rights or legitimate interests of its associated community and the broader Internet community.

© 2012 BARNES & THORNBURG LLP

Patents for Financial Services Summit

The National Law Review is pleased to bring you information about the upcoming Patents for Financial Services Summit:

The protection of patents and IP is critical to the financial services industry due to the increasingly competitive marketplace and the growth of patent trolls. You must ensure protection of your own innovation to remain competitive and take great care to avoid infringing on the patents of others. World Research Group’s 9th Annual Patents for Financial Services Summit, which is being held on July 25-26, 2012 in NYC is intended for in-house legal executives to engage in networking opportunities, shared best practices, hear cutting-edge case studies, and discuss new rules and regulations impacting financial services patent policies. This two-day Summit will consist of informative educational sessions and interactive panel discussions led by senior-level patent counsels and experts on patent trends and strategies.

Join our Patents for the Financial Services Summit and benefit from in-depth discussions on ways to grow patent strategies, practical case-studies and interactive panel discussions, featuring experienced and highly knowledgeable IP counsels, regulators, law firms and technology experts.

The 9th Annual Patents for Financial Services Summit addresses key issues and uncovers the latest developments including, but not limited to the following topics:

  • The America Invents Act and its impact on patent procedures and litigation
  • Implementing a successful monetization program to determine the most valuable and effective use of IP
  • Learning the newest updates from recent Supreme Court cases
  • Legal update on the US Patent Office Examination of financial services inventions post-Bilski
  • Aligning your IP department and outside counsel with corporate business objectives to impact the bottom line
  • Effectively managing your legal department activities and budget
  • Ensuring you consistently allocate resources to the right risks or opportunities, including identifying the cases to try and the cases to settle
  • Communicating with outside counsel to ensure an updated knowledge of the ever-changing legal landscape
  • Altering patent protection strategies to account for recent court decisions
  • Social media update on managing control over protected IP
  • Avoiding and managing patent litigation
  • Defending against patent trolls
  • Incentivizing employees and finding new ways to encourage creativity

Supreme Court of Texas to Federal Circuit: Don’t Mess with Texas but Feel Free to Mess with Texas Patent Attorneys; SCOTUS May Weigh In on “Arising-Under” Jurisdiction

Recently an article about Texas Patent Attorneys by Adam Auchter Allgood and Paul Devinsky of McDermott Will & Emery appeared in The National Law Review:

In a 5-3 decision, the Supreme Court of Texas, while specifically stating that it is not bound by the holdings of the U. S. Court of Appeals for the Federal Circuit, has relied on the Federal Circuit opinions in Immunocept (IP Update, Vol. 10, No. 10)and Air Measurement (IP Update, Vol. 14, No. 8) in determining that the federal courts possesses exclusive jurisdiction for state malpractice claims “arising-under” underlying patent matters. Minton v. Gunn, 355 S.W.3d 634, 653 (Supr. Ct. Tex., Dec. 16, 2011) (Green, J.) (Guzman, J., dissenting, joined by Medina, J. and Willett, J.). This decision is now at the U.S. Supreme Court as the subject of a petition for cert.

Minton is only one of a series of cases to explore the “arising under” jurisdiction of the Federal Circuit. The statute 28 U.S.C. §1338, which provides the federal courts with exclusive jurisdiction for any civil action “arising under” federal law relating to patents, has come under extensive scrutiny lately by the Federal Circuit. In several cases in which attorney malpractice was alleged in connection with patent procurement or enforcement, Circuit Judge O’Malley has taken the opportunity to present her views on the limits of the jurisdiction of the Federal Circuit to hear such disputes which are grounded in state law. For example, Judge O’Malley has dissented from the dismissal of a petition seeking an en banc review of the 2010 precedential Federal Circuit opinion in Davis v. Brouse McDowell, L.P.A. (see IP Update, Vol. 13, No. 3), which found federal jurisdiction over a legal malpractice action involving missed deadlines in which no patent actually issued. Recent cases in which Judge O’Malley has aired her view on this jurisdictional issue include the following:

  • Memorylink Corp. v. Motorola, Inc., Case No. 10-1533 (Fed. Cir., April 11, 2012) (per curiam order) (O’Malley, J., dissenting from the denial of the petition for rehearing en banc)
  • Minkin v. Gibbons, P.C., Case No. 11-1178 (Fed. Cir., May 4, 2012) (Reyna, J. (O’Malley, J., concurring in the result and conceding that under controlling Federal Circuit case law, the Federal Circuit is compelled to hear the case; but explaining why, in her view, it is not “proper” to do so)
  • Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP, Case No. 11-1297 (Fed. Cir., April 23, 2012) (Clevenger, J.) (O’Malley, J., concurring and urging en banc consideration of the jurisdictional issue)
  • Byrne v. Wood, Herron & Evans, LLP, Case No. 11-1012 (Fed. Cir. March 22, 2012) (per curiam) (O’Malley, J., concurring in the Court’s opinion on the malpractice claim that address the issue on appeal, while noting that controlling Federal Circuit authority “compels us to do so”; but also pointing out the “federalism considerations” that mitigate against doing so)
  • USSPS, Ltd. v. Avery Dennison Corp., Case No. 11-1525 (Fed. Cir., April 17, 2012) (per curiam) (O’Malley, J., joined by Mayer, J., concurring while voicing what she regards as “significant” federalism concerns that are raised by the Federal Circuit’s exercise of jurisdiction over “these purely state laws claims”)

While Judge O’Malley, a former federal district judge who presided over more than 100 patent and trademark cases, continues to follow the binding Federal CircuitDavis precedent, it is clear that she feels that it is an incorrect application of Supreme Court case law. Both state and federal courts are applying the four-part standard enumerated by the Supreme Court in 2005 in Grable, 545 U.S. 308, for the general “arising-under” jurisdiction of §1331 to the specific patent section of §1338. In Judge O’Malley’s view federal question jurisdiction, as discussed in Grable, exists if resolving a federal issue is necessary to resolution of the state-law claim; the federal issue is actually disputed; the federal issue is substantial; and federal jurisdiction will not disturb the balance of federal and state judicial responsibilities.

Malpractice cases involving patents usually are one of two varieties involving either patent prosecution errors or non-asserted defenses during infringement litigation. Judge O’Malley tends to disagree with the application of the third Grable factor since most of the issues underlying malpractice claims are case-specific, factual inquiries and require only application, not interpretation of federal patent law and would have little or no bearing on other cases. As to the fourth factor, Judge O’Malley asserts that malpractice cases do not implicate any underlying patent rights themselves. Any patent issue that is decided will only inform the state law standards of causation or damages and would not have binding effect on other patent cases.

The majority in Minton (as well as controlling Federal Circuit case law) however, rely on the argument that a “case within a case” exists in malpractice claims, since patent issues must be analyzed in order for the plaintiff to prove a proximate causal connection that the harm or loss would not have occurred without the attorney’s malpractice. The Minton Court (like Federal Circuit precedent) is based on the rational that litigants benefit from judges who are familiar and experienced with complicated patent rules and that there is a strong federal interest in the uniform application of patent laws.

Practice Note: With the Texas Supreme Court decision in Minton currently teed up before the U.S. Supreme Court, Judge O’Malley may find her desired Federal Circuiten banc review bypassed as the issue may receive direct consideration by the Supreme Court. Certiorari briefs are currently being filed with the Supreme Court (Docket No. 11-1118). On April 26, Memorylink also filed a petition for cert to the Supreme Court drawing on Judge O’Malley’s dissent in Memorylink v. Motorola, arguing that by asserting jurisdiction on state law malpractice claims, the Federal Circuit is disturbing the appropriate balance between state and federal courts.

© 2012 McDermott Will & Emery

Has Someone Applied to Register Your .BRAND? Top Five Things You Need to Know

The National Law Review recently published an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The Registration of Brands:

You’ve heard about the planned expansion of the domain name system, but what does it really mean for trademark owners?

Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs are Internet extensions such as .com, .org and .net found at the end of a domain name. Under the new system, a business could apply to own its .BRAND. An automobile company could apply to own .CARS. A city government could apply to own .CITY. The possibilities, seemingly, are endless.

ICANN received 1900 applications for new gTLDs during the first application period, which is now closed. Google announced last week that it had applied for the gTLDs .GOOGLE, .YOUTUBE and .LOL among others. Canon Inc. announced that it has applied for the gTLD .CANON in order to “increase the convenience and effectiveness of its online communications.” The domain name registry Donuts Inc. announced that it has applied for 307 new gTLDs. The timeframe and process for reviewing the applications are somewhat fluid but the first new batch of gTLDs is slated to become active in early 2013. The remaining batch of applied-for gTLDs will not go live until 2014 or later. So what should trademark owners do now to prepare for the new regime?

1. Review and Analyze the List of Applied-For gTLDs

In what ICANN calls “Reveal Day,” on Wednesday, June 13, 2012, ICANN will publicly post a listing of all applied-for gTLD character strings. This will be the first public glimpse into which entities have applied to own which new gTLDs. Although some companies have announced publicly that they have submitted applications to participate in the new gTLD program, most have remained silent throughout the initial application phase. But all will be revealed on Reveal Day. Trademark owners should carefully review the list of applied-for gTLDs in order to determine if any conflict with pre-existing trademark rights. But remember, the list of applied-for gTLDs have not been approved by ICANN yet. There is time to take action if necessary to protect your trademark rights.

2. Submit a Comment to ICANN

What can you do if you learn on Reveal Day that someone has applied to register your .BRAND? Following publication on Reveal Day, interested parties may submit comments related to proposed new gTLDs to ICANN for consideration by the independent evaluators assessing each application. During the comment period, trademark owners can submit comments regarding potential trademark infringement, dilution, and related concerns raised by particular applications for gTLDs. Application comments received within 60 days of Reveal Day, i.e., by August 12th, will be available to the evaluation panel performing the initial evaluation reviews of all pending applications. Initial evaluation of the applications is expected to begin in early July.

3. Use Dispute Resolution Procedures to Object to Infringing gTLDs and/or Domain Names

Separate from the comment procedure, and prior to the approval of an applied-for gTLD, a formal objection process will be available to trademark owners. ICANN has appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” (LRO) to a pending application. A Legal Rights Objection can be filed where the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. The LRO process offers a good option for trademark owners who believe that their trademark rights may be encroached upon by a particular applied-for gTLD. But the process comes with a price tag of $10,000 fee for arbitration of a LRO by a single-member panel. The applicant of the challenged gTLD similarly is required to pay a $10,000 fee. If the applicant fails to do so, the objection will be deemed successful. The sole remedies available for a LRO are the success or dismissal of the objection. Monetary damages are not available through this process.

Many anticipate that the problem of “cybersquatting” will dramatically increase with the expansion of the gTLD system. Cybersquatting refers to the bad faith registration of a domain name that contains another’s brand or trademark. If an applied-for gTLD is approved by ICANN and domain names registered using the new gTLD infringe upon your trademark rights, the Uniform Domain Name Dispute Resolution Policy (UDRP) remains available to resolve domain name disputes. Under the UDRP, domain name disputes are typically resolved in approximately 45-60 days and the associated filing fees are relatively low (approximately $1500 to resolve a dispute involving up to 5 domain names). WIPO has stated that the UDRP is “the only proven mechanism in place to absorb the impact of gTLD expansion.”

Another alternative currently contemplated by ICANN is the Uniform Rapid Suspension System (URS). The URS is intended to be a faster, more cost-efficient complement to the UDRP. It is intended for cases of trademark abuse. Unlike the UDRP, which allows a trademark owner to obtain the transfer of a domain name that impairs its trademark rights, the sole remedy available under the URS is the temporary suspension of a domain name for the duration of the registration period (which may be extended for one year). While the URS substantive criteria mirror that of the UDRP, there is a higher burden of proof for complainants. ICANN has not yet selected a vendor for the URS System.

4. Register Your Trademark With ICANN’s Trademark Clearinghouse

In connection with the launch of new gTLDs, ICANN plans to form a Trademark Clearinghouse. The Trademark Clearinghouse is intended to serve as a single database of authenticated, registered trademarks and will eliminate the need for trademark holders to register their marks in many different databases as new gTLDs are introduced. ICANN will require every new gTLD operator to utilize the Clearinghouse, which will be available globally and have the capabilities for validating trademark data from multiple global regions. As a result of these functions, the Trademark Clearinghouse is expected to play an important role in ensuring ongoing protection of trademark rights under the new scheme. If you are a trademark owner and have not applied to register a gTLD, registering your trademark with the Trademark Clearinghouse is an important step in protecting your trademark rights in the new gTLD world. The fee for initial trademark authentication and validation services is expected to be less than $150 US per submission/trademark.

Trademark owners who lodge their marks with the Clearinghouse will obtain certain advantages and notifications during “sunrise” periods that will apply to registrations of second-level (to the left of the “dot,” such as “secondlevel” in secondlevel.BRAND) domain names within newly launched gTLDs. In addition, registrants of second-level domain names will receive (at least for some period of time) notifications of trademarks that are an identical match to their newly registered domain names. Second-level domain name registrants, though, are not prevented from registering the sought-after domain name based on registration of a trademark with the Clearinghouse. They are simply put on notice that the domain name may conflict with another’s trademark rights. Importantly, notice to domain name registrants will not be provided except where the match with a trademark is identical. So, if the second-level domain name contains a misspelling of a trademark, no notification will be given to the registrant.

5. Apply to Register Your Trademarks and Service Marks

Having federally-registered trademark rights will offer valuable protection as the new domain name system becomes a reality. To the extent that you are using or plan to use a trademark or service mark in connection with the offering of goods or services and have not yet applied for federal trademark protection, you should consider doing so now. A federal trademark registration provides many valuable benefits. To start, it provides the owner with rights on a national (as opposed to a regional) level. A federal registration also provides you with the exclusive right to use the mark on or in connection with the goods or services listed in your registration. In connection with the new gTLD system, a federal trademark registration will help to strengthen and reinforce your trademark rights. It will also establish ownership of a particular trademark and, therefore, standing, to submit a legal right objection or other challenge to an applied-for gTLD or second-level domain name.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Generic Top-Level Domain Names Summit

The National Law Review is pleased to bring you information about the upcoming Generic Top-Level Domain Names Summit:

World Research Group is proud to announce the Generic Top-Level Domain Names Summit : The Challenges and Opportunities Facing the Financial, Pharmaceutical, Consumer Goods, and Other Branding Companies Since ICANNs Program, which will be held onSeptember 13, 2012 in Los Angeles, California. This event will discuss the implications and affects of ICANN’s new top level domain program, the risk and opportunities presented by this revolutionary transformation, and discovering what the next steps are for these companies.

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012

The National Law Review is pleased to bring you information about an upcoming conference:

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012 in Washington, DC

The marcus evans 5th Product and Pipeline Enhancement for Generics Conference will host industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally as they share best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.

Featuring case studies from leading generics experts, including:

  • Richard Dicicco, Chairman at Harvest Moon Pharmaceutical
  • Dr. Vijay Soni, Executive Vice President, IP, BD and Product Portfolio at Glenmark Pharmceuticals
  • Candis Edwards, Senior Vice President, Regulatory Affairs & Compliance at Amneal Pharmaceuticals
  • Gregory Fernengel, Senior Intellectual Property Counsel at Ben Venue Laboratories, Inc.
  • Markus H. Meier, Assistant Director, Health Care Division, Bureau of Compensation at Federal Trade Commission
  • Vishal K. Gupta, Chief Scientific Officer, Vice President, Research & Development at CorePharmaLLC
  • Sherri Leonard, VP, Business Development and Portfolio Management at OrchidPharma, Inc.

Attendees will leave this conference with a better understanding of:
1. Current and upcoming FDA proposals and regulations to ensure compliance
2. Innovation in the drug pipeline
3. Portfolio management and business development
4. How to protect the company’s patents’ and intellectual property
5. Expanding the commercial reach through biosimilars
6. Market changes and future industry developments

Testimonials:

“Great in-depth coverage of hot topics in an intimate setting that lent itself to excellent discussions.” – Novartis

”Terrific chance to connect with other industry traders to exchange ideas and explore solutions to the challenges we all face.” – OrchidPharma

Entrepreneur’s Guide to Intellectual Property – Blog Series: Trademark

An article by Laura M. Konkel of Michael Best & Friedrich LLP recently had an article regarding Trademarks published in The National Law Review:

What is a Trademark?

A trademark is any word, slogan, logo or other device that helps consumers identify and distinguish the source of a product or service. Even smells, sounds, colors, product shapes and packaging designs can be trademarks – e.g. the color brown applied to vehicles used for delivery services (owned by UPS), the musical notes G, E and C played on chimes when used in connection with television broadcast services (owned by NBC Universal) and the well-known shape of the curved COCA-COLA bottle. When consumers see or hear these unique trademarks, they know what company is offering the product or service without the need for words.

As a source indicator, a trademark helps consumers decide whether they want to buy or avoid a product or service based on their prior experiences with something else bearing that trademark. For example, a consumer who had a positive experience with a FORD vehicle may decide to buy another FORD vehicle in the future. Thus, a trademark that builds a positive reputation in the marketplace is an invaluable business asset.

Selecting Strong Trademarks

When developing a new brand name it’s tempting to pick a term that describes the product or service. For instance, if you are launching a new detergent, the name ULTRA CLEAN may be appealing because you want consumers to immediately understand that it is a superior cleaning product. However, as a general rule, terms that describe a characteristic of the product or service, or attribute quality or excellence to it (e.g. ULTRA), are very weak source identifiers that do little to set your product apart from those of your competitors.  Descriptive and laudatory terms are also subject to little, if any, trademark protection, meaning it will be difficult to prevent competitors from using an identical or nearly identical product or service name.

More distinctive brand names generate more consumer recognition and are entitled to more protection. The strongest trademarks are fanciful or coined terms, which have no dictionary definition (e.g. KODAK film or EXXON petroleum). Arbitrary trademarks, which are comprised of terms with common meanings but not in relation to the product or service for which they are used (e.g. APPLE computers) are also very strong. Suggestive terms, which hint at a characteristic of the product or service without immediately describing it (e.g. COPPERTONE sunscreen), are also capable of trademark protection.

Clearing Trademarks for Use

Before adopting and investing money into a new trademark, you should first determine whether someone else is already using the same trademark, or a very similar trademark, in connection with a related product or service. If you use a trademark similar to one already used by a competitor, it may erode the source-indicating function of your competitor’s trademark and cause consumer confusion, subjecting you to a trademark infringement claim. If you infringe another’s trademark rights, you will have to rebrand your product or service and you may also be liable for monetary damages.

For this reason you should have a qualified attorney conduct a clearance search before adopting a new trademark. A clearance search typically involves a review of federal and state trademark databases, as well as other sources of information such as company name databases and the Internet. After completing a survey of current trademarks in the marketplace, your attorney will provide an opinion as to whether your new trademark poses an infringement risk. It is recommended that you conduct a clearance search in each country in which you intend to use your trademark.

Trademark Protection: Should I Register My Trademark?

In the U.S., rights in a trademark belong to the first person or business to use it. You need not have a federal registration to own trademark rights; however, without a registration, your rights will typically be limited to the geographic area in which your products or services are offered.  For example, if you operate ABC BAKERY in Portland, Maine and sell your baked goods only in that area, and you do not own a federal registration for your ABC BAKERY trademark, then you may not be able to prevent someone else from operating an ABC BAKERY in San Diego, California. If you are granted a federal registration for ABC BAKERY, it will constitute a legal presumption of your ownership of that trademark and your exclusive right to use it nationwide as of the filing date of your federal trademark application.  Other benefits of federal registration include public notice of your claim of trademark ownership, the ability to record your trademark with U.S. Customs and Boarder Protection Service to prevent importation of infringing or counterfeit products and the right to use the ® registration symbol.

There are many countries that, unlike the U.S., do not recognize unregistered trademark rights. In those countries, the first person or business to register a trademark acquires exclusive rights in it and can prevent others from using the same or similar trademark, even if that other party has already used the same mark in that country for many years.  For this reason it is important to consult with a trademark attorney to determine where trademark applications should be filed in order to protect your valuable trademark rights.

Proper Trademark Use

Trademarks are adjectives. A trademark should never be used as a noun or a verb.  It should always be used as an adjective that describes the common, generic name for the product or service.

Correct:

We use XEROX copy machines in our office.

I own ROLLERBLADE in-line skates.

My kids love OREO cookies.

Incorrect:

I made a XEROX.

Please XEROX these documents.

I’m going ROLLERBLADING.

My kids love OREOS.

If a trademark is used improperly as a noun or a verb it may become the generic description for, or synonymous with, a general class of products or services and lose its source-indicating function. Then, everybody will be free to use it.  Examples of well-known terms that were once trademarks include “aspirin” and “escalator.” These terms lost their trademark significance through improper use.

Be consistent. Always use a trademark in the same manner, and if you registered it, use it exactly as shown in the registration certificate. Do not change punctuation or make a two-word mark into one word (e.g. X-Y-Z WisconsinDGET vs. XYZWisconsinDGET).

Use the appropriate trademark symbol. The TM symbol can be used to identify any trademark, registered or unregistered.  It has no legal significance but indicates to others that you claim rights in the marked term. In contrast, the ® symbol can be used only to identify a federally registered trademark.

It is not necessary to mark every occurrence of a trademark with theTM or ® symbol, but it certainly doesn’t hurt. At a minimum, the first and/or most prominent use of a trademark on a product, on a package or in an advertising piece should be marked appropriately.

Distinguish trademarks from surrounding text. In addition to using theTM or ® symbol, you can also emphasize trademarks by printing them in all capital letters or in a bold, italic or other unique font. This helps make it clear to others that you are claiming trademark rights in a particular term.

Maintaining Trademark Rights

You must use a trademark to maintain rights in it. If you stop using a trademark for a period of time with no intention to use it again in the future, then you will abandon your rights in the trademark and it will become available for others to use.

Misuse of your trademark by others can also result in a loss of rights. If you don’t enforce your rights against infringers, your trademark will lose its source-indicating function, just as “aspirin” and “escalator” lost their trademark status (discussed above). If you discover that someone is infringing your trademark it is important to take action, or risk losing your rights.

© MICHAEL BEST & FRIEDRICH LLP

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012

The National Law Review is pleased to bring you information about an upcoming conference:

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012 in Washington, DC

The marcus evans 5th Product and Pipeline Enhancement for Generics Conference will host industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally as they share best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.

Featuring case studies from leading generics experts, including:

  • Richard Dicicco, Chairman at Harvest Moon Pharmaceutical
  • Dr. Vijay Soni, Executive Vice President, IP, BD and Product Portfolio at Glenmark Pharmceuticals
  • Candis Edwards, Senior Vice President, Regulatory Affairs & Compliance at Amneal Pharmaceuticals
  • Gregory Fernengel, Senior Intellectual Property Counsel at Ben Venue Laboratories, Inc.
  • Markus H. Meier, Assistant Director, Health Care Division, Bureau of Compensation at Federal Trade Commission
  • Vishal K. Gupta, Chief Scientific Officer, Vice President, Research & Development at CorePharmaLLC
  • Sherri Leonard, VP, Business Development and Portfolio Management at OrchidPharma, Inc.

Attendees will leave this conference with a better understanding of:
1. Current and upcoming FDA proposals and regulations to ensure compliance
2. Innovation in the drug pipeline
3. Portfolio management and business development
4. How to protect the company’s patents’ and intellectual property
5. Expanding the commercial reach through biosimilars
6. Market changes and future industry developments

Testimonials:

“Great in-depth coverage of hot topics in an intimate setting that lent itself to excellent discussions.” – Novartis

”Terrific chance to connect with other industry traders to exchange ideas and explore solutions to the challenges we all face.” – OrchidPharma

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012

The National Law Review is pleased to bring you information about an upcoming conference:

5th Product and Pipeline Enhancement for Generics Conference, July 17-19, 2012 in Washington, DC

The marcus evans 5th Product and Pipeline Enhancement for Generics Conference will host industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally as they share best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.

Featuring case studies from leading generics experts, including:

  • Richard Dicicco, Chairman at Harvest Moon Pharmaceutical
  • Dr. Vijay Soni, Executive Vice President, IP, BD and Product Portfolio at Glenmark Pharmceuticals
  • Candis Edwards, Senior Vice President, Regulatory Affairs & Compliance at Amneal Pharmaceuticals
  • Gregory Fernengel, Senior Intellectual Property Counsel at Ben Venue Laboratories, Inc.
  • Markus H. Meier, Assistant Director, Health Care Division, Bureau of Compensation at Federal Trade Commission
  • Vishal K. Gupta, Chief Scientific Officer, Vice President, Research & Development at CorePharmaLLC
  • Sherri Leonard, VP, Business Development and Portfolio Management at OrchidPharma, Inc.

Attendees will leave this conference with a better understanding of:
1. Current and upcoming FDA proposals and regulations to ensure compliance
2. Innovation in the drug pipeline
3. Portfolio management and business development
4. How to protect the company’s patents’ and intellectual property
5. Expanding the commercial reach through biosimilars
6. Market changes and future industry developments

Testimonials:

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When the Sky’s the Limit, Don’t Forget the Basics: Social Media, the Internet and Your Business

The National Law Review recently published an article by Charles H. Gardner of Much Shelist, P.C. regarding Social Media and Businesses:

In today’s diverse marketplace, social media sites, as opposed to a company’s own branded website, are poised to become a primary and potentially first point of contact with current and future generations of consumers. Techrevel.com recently reported that 56% of consumers who use Facebook, as an example, say that they are more likely to recommend a brand after becoming a “fan.” With the number of Facebook users approaching one billion, a strong social media presence has become a de facto mandate for businesses.

In response, start up and established businesses are growing more reliant on the Internet, and social media in particular, for marketing and sales. According to a recent Forrester Research study cited on Statistica.com, social media marketing expenditure is expected to grow to $5 billion in 2016, up from approximately $1.6 billion in 2011.

In this context, you may be exploring the possibility of making your company website more interactive. From a business perspective, creating a user experience on your branded website that is simpatico with social media reanimates the end user’s experience and revitalizes your brand. From a legal perspective, however, you may wonder how to enter (or expand your presence in) this pioneer media. How do you balance the advantages of interactivity with the added burdens of creating, maintaining and updating essential privacy, data security and other policies?

You can start by asking―and answering―the following questions:

Does your website have a privacy policy that is compliant with all federal, state and territorial laws?

Federal law (and several state laws) mandates that companies inform their users about the personally identifiable information (PII) they collect, how the company uses it, with whom the company may share it, and how users may “opt-out” of having their PII collected and shared. PII includes information such as name, social security number, biometric records, etc., that alone or when combined with other information such as date and place of birth, mother’s maiden name, etc., can be used to trace an individual’s identity. Because many states have regulations that are more restrictive than federal regulations, you should seek to comply with the laws of the most restrictive states. These laws may apply not only to information that you collect from your own company website, but also from your company social media pages.

Every company with a presence on the internet should have a privacy policy that is compliant, proactive and forward thinking. If you have a strong international presence, it should address issues of global compliance as well.

If your company website is interactive or likely to become interactive, are you following proper procedures to shield the company from liability?

Consumers are likely to continue their use of third-party social media sites, including Facebook, as an interactive first point of contact with a company. However, as branded company sites begin to mirror the functionality of traditional social media sites, company sites are including interactive features from blogs and community chat rooms to video sharing  and personalized profile pages that allow the posting of user-generated content (UGC). If your website includes these or similar features, then you are, in fact, also an interactive website.

There are two important legal protections for operators of interactive computer services. The Communications Decency Act (CDA) provides safe harbor (immunity from liability) for Internet Service Providers (ISPs). This shields an ISP from liability arising out of civil causes of action such as defamation, invasion of privacy, trade libel, etc. As a very general rule, as long as the provider is not a publisher of the content (importantly, they merely provide a place to post the content; they do NOT contribute to or edit it), they will not be held liable for the original posting of the offending UGC. While the term ISP is traditionally applied to services such as Yahoo!, Google, and AOL, recent case law suggests that if you operate an interactive computer service, you should, for the practical purpose of maintaining safe harbor protection, consider yourself a sort of ISP.

The Digital Millennium Copyright Act (DMCA) also contains important safe harbor provisions. Under the DMCA, “an operator of interactive computer services” is immune from liability for intellectual property (primarily copyright) infringement by a third party using the service provided that the provider follows certain registration, compliance and procedural guidelines.

Do you post and require users to agree to your company website’s terms of use?

One of the most valuable policies for a website owner is a terms of use policy (sometimes called “house rules” or a “user agreement”). Your terms of use tell your users what they can reasonably expect when using your site. For example, you may prohibit certain activities, such as hate speech, personal attacks, posting materials to which the user does not have the requisite legal rights, etc. By setting the ground rules of what you will allow on your site, you can monitor UGC for violations of the policy and remove or refuse to post such material objectively based upon your site’s posted terms and preserve your safe harbor protection. Remember, if an ISP edits or modifies content, it is treated as a publisher of content and can lose safe harbor protection. However, if an ISP removes content in its entirety for violating a documented policy, the ISP is not considered a publisher and is protected under the CDA for example.

A well-crafted terms of use policy, if correctly written and agreed to, also forms a “contract” between the end user and the website operator. For example, arbitration clauses can minimize the likelihood of class action lawsuits and the potentially negative publicity of high-profile trials. A transparent policy can also set reasonable expectations, engender goodwill and protect the company website owner.

Do you have internal procedures and policies in place to address data security, data breaches and personnel practices?

As soon as reasonably possible, before or after your site goes live, you should discuss data security with your attorney and a qualified information technology (IT) representative. Like privacy policies, data security policies should comply with federal law and regulations, as well as the laws of the most restrictive U.S. state or territory. It is wise to have written procedures for data protection and breaches, which should be provided to any personnel who will be dealing with the company’s electronically stored information (ESI), particularly to the extent that the ESI contains end users’ PII.

You should also have a separate personnel policy that educates your employees and contractors about the use of company technology, social media and the Internet, and that protects your company without unreasonably or illegally restricting your employees’ activities.

As a practical matter, social media is no longer merely an optional business tool. It is a primary source of communication, information and advertising. Developing sound social media and technology policies as early as possible can reduce your liability and exposure and allow your company room to grow in this new online world.

© 2012 Much Shelist, P.C.