Published Articles
  1. Guest Post By Robert Cumming: Initial Interest Confusion Under EU Trademark Law

    Guest Post By Robert Cumming: Initial Interest Confusion Under EU Trademark Law


     
     Introduction by Andrew Berger
    I am pleased to introduce Robert Cumming who I have enjoyed meeting at INTA and whose blog posts at.www.robertcumming.eu I read with interest.
    Robert is an experienced IP lawyer with Appleyard Lees, a 32-person firm of European patent and trade mark attorneys.  With a litigation background and qualifications as an English solicitor, Registered UK and European trade mark attorney and Trade Mark Litigator, Robert is just as happy advising on contentious matters as prosecution, strategy and licensing.  He has written and presented on keyword advertising and is working with INTA on a global report analysing the use of survey evidence in trade mark litigation.

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  2. Determining Genuine Use of a CTM in the EU after ONEL

    Determining Genuine Use of a CTM in the EU after ONEL

     

    Another issue that came up in a Table Topics discussion I moderated at INTA earlier this month was what constitutes genuine use sufficient to sustain a CTM in the European Union (EU). We briefly touched on Merken v. Beheer (better known as  ONEL) recently decided by The Court of Justice of the European Community (CJEU).
    Again because ONEL might not be well known to practitioners outside the EU I decided to summarize it and the guidance it provides.

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  3. Translating IP Translator For US Mark Holders Filing in Europe

    Translating IP Translator For US Mark Holders Filing in Europe

    I recently moderated a table topics discussion at the INTA annual meeting in Dallas on alternatives available to US mark holders when registering their marks in Europe. One of the issues that came up was Chartered Institute of Patent Attorneys v. The Registrar of Trademarks known as IP Translator (decision here). The case continues to cause problems for Community trademark filers seeking a community trademark (CTM) in the European Union (EU).

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  4. Coming On July 26: Accelerated Case Resolution Webinar Before the Trademark Trial and Appeal Board

    Coming On July 26: Accelerated Case Resolution Webinar Before the Trademark Trial and Appeal Board

     

    Those caught in costly trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board may be wondering how they might streamline their TTAB practice and achieve faster resolution on the merits. A webinar sponsored by the ABA Section of Litigation on July 26th may help.
    The focus will be on more efficiently achieving a merits determinations in inter partes proceedings before the TTAB. Mary Margaret O’Donnell of the Blue Filament law firm (and co-chair of the Trademark Subcommittee of the IP Litigation Committee) has organized and will moderate what looks to be a fine program.

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  5. How Brands May Navigate the Challenges Raised by ICANN’s Domain Name Expansion

    How Brands May Navigate the Challenges Raised by ICANN’s Domain Name Expansion

     
     

    Sometime in 2013 we may experience the largest expansion of the Internet namespace in history. On June 13, 2012, ICANN (the Internet Corporation for Assigned Numbers and Names) announced the receipt of 1,930 applications from 60 countries for 1,409 new generic top-level domains or gTLDs. (A gTLD is part of the domain name or string to the right of the dot, such as .com., .biz or .org.) A list of applicants is here.

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  6. Registering Your Mark In Europe? Consider These Three Alternatives

    Registering Your Mark In Europe? Consider These Three Alternatives

    If you are selling your trademarked goods or services in Europe, you may want to register your mark there. Your US trademark rights stop at our borders. But news of good brands travels fast. You don’t want to find when you expand to Europe that another has registered your trademark ahead of you in anticipation of reaping a profit from your purchase of it.

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  7. Andrew Berger to Speak at Intellectual Property and Technology Association at Cornell Law School on Brand Protection

    Andrew Berger to Speak at Intellectual Property and Technology Association at Cornell Law School on Brand Protection


     
    Andrew will speak to the Intellectual Property and Technology Association at Cornell Law School on Tuesday evening March 26, 2012 on How Brands May Protect Themselves Against New Forms of Online Attacks and Infringements. Information about the program is here.

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  8. Ten Considerations To Keep In Mind When Negotiating a License for Intellectual Property

    Ten Considerations To Keep In Mind When Negotiating a License for Intellectual Property


    I this week did a licensing program with Rand Brenner, President & CEO at Licensing Consulting Group. Rand is a licensing expert assisting clients in the acquisition and sales of licensing rights. His recent assignments include acquiring licensing rights for clients to several national brands including Major League Baseball, The NFL and NCAA Football.
    At the program I discussed ten considerations the parties to a license agreement should keep in mind when negotiating it.

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  9. Guest Blog Post: Why Did Apple Lose the First Round in Its iPad Trademark Dispute in China

    Guest Blog Post: Why Did Apple Lose the First Round in Its iPad Trademark Dispute in China

    Introduction by Andrew Berger:
    I am pleased to post another article by Vivien Chan focusing on IP in China. Vivien is the senior partner of Vivien Chan & Co., a Greater China law firm with offices in Hong Kong, Beijing and Shanghai with close to 30 years experience in labor & employment, mergers and acquisitions, technology transfers,  information technology, and related tax issues.

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  10. How to Protect Your Intellectual Property When Outsourcing

    How to Protect Your Intellectual Property When Outsourcing


    Thinking about outsourcing? Take a deep breadth and you may want sit down till the thought passes. Many outsourcing arrangements fail for a variety of reasons and even when they succeed the costs incurred may be more than the costs saved.
    One of the biggest risks is protecting your intellectual property (“IP”) when it is outsourced. There are no silver bullets that will guarantee protection.

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