Protecting Nontraditional Trademarks Under Trademark, Copyright and Design Patent Law

Using Conventional and Unconventional Approaches to Establish, Register and Enforce Marks

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, March 28, 2017
Recorded event now available


This CLE webinar will provide guidance to IP counsel on the challenges and processes involved in trademarking and protecting nontraditional categories. The panel will offer approaches for registering and enforcing marks involving uniquely identifiable packaging, shapes, sounds and other nonconventional aspects.

Description

Trademark protection extends beyond traditional names and logos to other categories, such as shape, sound, touch, colors, motions and more. These nontraditional trademarks are more difficult to register, though they fulfill the essential trademark function of uniquely identifying the commercial origin.

Examples of registered nontraditional trademarks include the NBC “chimes” and the Coca-Cola bottle shape, but Pepto Bismol could not register its pink color. Counsel are also looking to design patent law and copyright law as a means to protect nontraditional trademarks.

Trademark owners doing business in Europe must consider differences vs. U.S. law in how nontraditional marks are governed and the challenges those differences present. Counsel must be aware that graphical representation is required to get protection in Europe.

Counsel to trademark owners must understand the challenges involved in proving, registering and protecting nontraditional trademarks to determine how to overcome hurdles and protect these marks.

Listen as our authoritative panel of trademark practitioners discusses the challenges involved in nontraditional marks, strategies for registering such trademarks and best practices for enforcing rights in nontraditional trademarks.

Outline

  1. Nontraditional marks and challenges faced with each
    1. Sight
    2. Sound
    3. Touch
    4. Single colors
    5. Motion
    6. Hologram
    7. Product packaging
    8. Product configurations
  2. Registration of nontraditional marks
    1. Clearing the mark
    2. Functionality test
    3. Acquired distinctiveness
    4. Inherent distinctiveness
  3. Protecting nontraditional marks
    1. Using copyright law
    2. Using design patent law
  4. Protecting nontraditional mark in Europe
  5. Enforcing nontraditional marks
    1. Policing use of marks
    2. Challenge of subjective character of nontraditional mark
    3. Nominative fair use defense
    4. Substantial evidence of non-functionality and secondary meaning
    5. Litigation strategies

Benefits

The panel will review these and other key issues:

  • What unique challenges arise in the various types of nontraditional trademarks?
  • What approaches should counsel consider to successfully register nontraditional marks?
  • What tactics have proven effective for counsel in nontraditional trademark litigation?

Faculty

Theodore H. Davis, Jr., Partner
Kilpatrick Townsend & Stockton, Atlanta

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He has particular experience in trade dress disputes and with large-scale trademark clearance and registration projects. He has served on the Board of Directors of the International Trademark Association.

Robert D. Litowitz, Partner
Kelly IP, Washington, D.C.

Mr. Litowitz has over 30 years of experience in litigating patents, trademarks, and other intellectual property rights before U.S. district courts, the ITC, and the TTAB. He has extensive experience leading and managing a range of litigations on such diverse subjects as pharmaceuticals, healthcare products, designs, product configurations, words, symbols, golf courses, and books.

Linda K. McLeod, Partner
Kelly IP, Washington, D.C.

Ms. McLeod's 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.


Recordings

CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?


Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email customerservice@straffordpub.com to place your order.

Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H

How does this work?


Webinar

Strafford webinars 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.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

Program Materials

Requires Adobe Reader 8 or later. Download Acrobat FREE.

or call 1-800-926-7926

CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I liked the topic and the fact that Strafford kept to the time schedule.

Susan Piperno

Gottlieb Rackman & Reisman

In an area such as this, where outcomes can seem very subjective, it was helpful for the speakers to discuss many specific examples, and to provide citations to the decisions in their materials.

Anjanette Stinson

Mirixa

Very targeted information with experienced presenter.

Chris Larus

RKMC.com

I appreciated the opportunity to obtain information so easily and I thought the presenters had good information and were concise in their presentations.

Jayne L. Sebby

Sebby Law Office

Very informative — one of the best run programs in a plethora of on-line offerings.

Jeff Michelman

Stinson Morrison Hecker

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.