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 premium CLE webinar with Q&A
This CLE course 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.
Outline
- Nontraditional marks and challenges faced with each
- Sight
- Sound
- Touch
- Single colors
- Motion
- Hologram
- Product packaging
- Product configurations
- Registration of nontraditional marks
- Clearing the mark
- Functionality test
- Acquired distinctiveness
- Inherent distinctiveness
- Protecting nontraditional marks
- Using copyright law
- Using design patent law
- Protecting nontraditional mark in Europe
- Enforcing nontraditional marks
- Policing use of marks
- Challenge of subjective character of nontraditional mark
- Nominative fair use defense
- Substantial evidence of non-functionality and secondary meaning
- 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
Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of... | Read More
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.
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Robert D. Litowitz
Partner
Kelly IP
Mr. Litowitz has over 30 years of experience in litigating patents, trademarks, and other intellectual property... | Read More
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.
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Linda K. McLeod
Partner
Kelly IP
Ms. McLeod's practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark... | Read More
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.
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