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 video webinar with Q&A
This CLE webinar will guide 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
- Enforcing nontraditional marks
- Policing the use of marks
- Challenge of the 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 register nontraditional marks successfully?
- 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.
Close
Kelu L. Sullivan
Partner
Kelly IP
Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in... | Read More
Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in all aspects of trademark and copyright law, including portfolio management, licensing and litigation. She is particularly experienced in the management of large international trademark portfolios, and working with clients’ legal and business departments to achieve desired outcomes. She represents clients in federal district and appellate courts, managing every aspect of litigation, from complaints, to discovery, to presentation of the case in front juries. She has also presented difficult trademark cases on appeal, and successfully overturned three lower tribunal decisions.
Close