Non-Traditional Trademarks: Sound, Color, Shape, Scent and More
Establishing, Registering and Enforcing Non-Conventional Marks
Recording of a 90-minute CLE webinar/teleconference with Q&A
Conducted on Tuesday, December 15, 2009
Recorded event now available
This CLE seminar will review the challenges and processes involved in trademarking and protecting non-traditional categories. The panel will offer strategies for registering and enforcing marks involving uniquely identifiable packaging, shapes, colors, sounds, and other non-conventional aspects.
Description
Trademark protection extends beyond traditional names and logos to other categories, such as shape, sound, touch, colors, motions, and more. These non-traditional trademarks are difficult to register but fulfill the essential trademark function of uniquely identifying the commercial origin.
Non-traditional marks are a valuable marketing tool. NBC's chimes, MGM's lion roar, and the Coca Cola bottle shape were all successfully registered. However, Pepto Bismol failed in efforts to register its pink color, and Harley Davidson gave up trying to trademark the sound of its motorcycles.
Companies and their counsel must understand the challenges involved in proving, registering and protecting these non-traditional trademarks to determine how to overcome these hurdles and protect these marks.
Listen as our authoritative panel of trademark attorneys discusses the challenges involved in non-traditional marks, strategies for registering such trademarks, and best practices for enforcing rights in non-traditional trademarks.
Outline
- Non-traditional marks and challenges faced with each
- Sight
- Sound
- Touch
- Single colors
- Motion
- Hologram
- Product packaging
- Product configurations
- Registration of non-traditional marks
- Clearing the mark
- Functionality test
- Acquired distinctiveness
- Inherent distinctiveness
- Enforcing non-traditional marks
- Policing use of marks
- Challenge of subjective character of non-traditional mark
- Nominative fair use defense
- Substantial evidence of non-functionality and secondary meaning
- Litigation strategies
Benefits
The panel will review these and other key questions:
- What unique challenges arise in the various types of non-traditional trademarks?
- What strategies should counsel consider to successfully register non-traditional marks?
- What are effective approaches for counsel in non-traditional trademark litigation?
Faculty
Stephen R. Baird,
Shareholder
Winthrop & Weinstine, Minneapolis
He heads the intellectual property and trademark and brand management practice groups, and his practice emphasizes trademark law, related unfair competition law and copyright law. He counsels clients on trademark usage and clearance, branding strategies, portfolio management, litigation and enforcement, Internet domain name disputes, licensing and prosecution.
Linda K. McLeod,
Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Her practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark clearance and prosecution, and client counseling. She gained significant expertise while serving as Administrative Trademark Judge and Interlocutory Attorney with the TTAB. She sat on panels that decided cases involving a variety of marks, including product configurations and color trademarks.
Stephen Feingold,
Partner
Kilpatrick Stockton, New York
His practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex trademark litigation matters and sophisticated transactional projects. He advises clients with large global portfolios on how to effectively and efficiently manage and utilize these assets to further their business objectives privacy issues and other Internet-specific problems.
Ordering
Online CLE - Audio Recording
Includes audio streaming of full program plus handouts (available 24 hours after live seminar).
CLE:
Pre-approved for participatory or non-traditional/alternate format credit in: CA, HI*, NY*, WV*.
Pre-approved for self-study credit in: AK, AZ, MO, MT, TX, VT, WA.
Upon request, also available in: CO, CT*, FL, GA, ID, KY, LA, ME, NC, ND, NE, NH, NM, NV, OR*, SC, TN, UT, WI*, WY. If you are applying for credit in one of these states, make sure to select those states when placing your order.
(*Indicates that Strafford must report attendance.)
Online CLE Audio $297.00
Available 24 hours after the live event
Recorded Event
Includes full event recording plus handouts (available after live seminar).
CLE: Pre-approved for self-study credit in: AK, AZ, CA, CT, HI, MO, MT, NY, TX, VT, WA, WV. Upon request, self-study credit is also available in: CO, FL, GA, ID, KY, ME, ND, NE, NH, NM, NV, OR, UT, WI, WY. If you are applying for self-study credit in one of these states, contact Strafford CLE at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.
MP3 Download (Audio Only) $297.00
Available 24 hours after the live event
Webinar Download (Slide Presentation with Audio) $297.00
Available three business days after the live event
CD (Audio Only) $297.00
plus $9.45 S&H
Available ten business days after the live event
DVD (Slide Presentation with Audio) $297.00
plus $9.45 S&H
Available ten business days after the live event
Webinar/Teleconference
Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program). Please note that our webinars do not feature videos of the presenters.
CLE Credit
Strafford's live seminars qualify for CLE in every state that accredits webinars. They offer you a high quality, cost effective, and convenient CLE option, with no lost travel time or expenses.
Customer Reviews
Convenient and well-organized. Well-run program.
Michael V. Kruljac
IMERYS
The analyses of the various cases brought the subject matter together in a coherent manner.
Michael Minter
Miles & Stockbridge
Speakers were knowledgeable enough to talk about the subject matter in an easily digestible manner.
Daniel M. Cleary
Gotham Insurance/New York Marine & General Insurance
The speakers were well versed and kept my attention throughout the program.
Natalie Kossak
Independent Fiduciary Services
I attend a lot of these lectures and Strafford's presentation addressed important issues I rarely hear about. I really learned something for a change.
Rebekah J. Poston
Squire, Sanders & Dempsey
Intellectual Property Law Advisory Board
Shareholder
Winthrop & Weinstine
Partner
Fulbright & Jaworski
Partner
Winston & Strawn
Partner
Antonelli Terry Stout & Kraus
Partner
Mayer Brown
Partner
Duane Morris
Partner
Reed Smith
Partner
Gibson Dunn & Crutcher
Partner
Holland + Knight
Partner
McDermott Will & Emery
Partner
Orrick