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CLIENTTIMES Vo l . 10 No.

Trademark Office
Layoffs Planned
USPTO: Reduction in force
will not affect services
The U.S. Patent and Trademark Office
plans to lay off up to one third of its
staff of trademark examining attorneys
in September, in a move intended to
realign the size of the office’s staff with
projected levels of trademark filings.
The USPTO is describing the
reduction in force as a prudent
business decision for the agency, which
is self-funded through application
fees. “Our projections for the next
two fiscal years show that the level
Continued on page 5

Introducing
Title Plus
Trademark Valuation: Added Coverage When You Need It

The How, When and Why See page 12.

by Weston Anson
In This Issue
Trademarks are valuable Trademarks or brand names do not
assets — but placing travel in a vacuum. Rather, the trademark 3 Stopping Online
a value on these is part of a larger group of intangibles, Copyright Infringement
assets can be a chal- known as the brand bundle, which
5 Trademark Filing
lenging experience. travel together. Thus, we typically start Rates Increase
In this article, we a trademark valuation by identifying
will explore the any other intangible assets that may 7 Canadian Trademark
Law for American Practitioners
basics of trademark valuation. First, be connected with that particular
when and how should the value of a trademark, such as marketing-related 9 Laws & Litigation
trademark be determined, and why? intangibles. Oftentimes, the list can be 11 International News
Second, we will look at the brand extensive. Some of the intangible assets
assets that are grouped with a trademark. and related IP can be part of a brand 12 Product Update

And third, we will briefly examine bundle (see sidebar, page 2) and there- 13 SAEGIS™ Update
methodologies to value those assets, fore connected to the trademark in a 14 SAEGIS™ Training
using summary case studies and some sale, license or other transaction.
15 INTA 2002
real-world royalty rates. Continued on page 2
15 Thomson & Thomson Events
“Trademark Valuation” continued from page 1
Testing For Value
Not all trademarks have great Motivations for Trademark Valuation:
value—some have little or no value Trademarks are valued for both legal and business reasons.
outside the context in which they are Valuation Motivations Who Cares?
used. For an initial assessment, there is
a series of questions or tests that can • Outright Sale • Mergers & Acquisitions Interests
be applied to a trademark before • Bankruptcy • Licensees, Franchisees
engaging in the valuation process. The • Licensing (fully paid up) • Shareholders
purpose of going through these is to
• Off-Balance Sheet Financing • Internal Asset Managers
avoid unnecessary valuation activity, and
• Joint Venture • Investors
to help establish where value may lie.
The first question is simple: Does • Reorganization • Investment Bankers
the trademark or brand name differen- • Sale and Leaseback • IPO Specialists
tiate the product or service with which • Working Capital Securitization • International Affiliates
it is associated? In other words, is this • Divestiture • Wall Street Analysts
trademark unique enough that it • Acquisition • The Media
actually sets apart the product that it is • Inter-Company Transfer • Other Stakeholders
connected to? That differentiation can • Mergers • Employees
take the form of identification,
imagery or perhaps implied content.
The second simple test is to identify duplicate product on which the
whether others would be interested in trademark is currently being used or
using the trademark, and who those via extension into other product areas.
other people or entities might be. If the answers to these three CLIENTTIMES
Naturally, if there is little or no interest questions are yes, then there is value.
Vol. 10 No.3 August 2002

The question then becomes how to PUBLISHER


The ClientTimes is published quarterly by
The Trademark or quantify that value. Thomson & Thomson, 500 Victory Road,
North Quincy, Massachusetts 02171.
Brand-Related Bundle It’s critical to understand that Subscriptions are provided as a courtesy to clients.
Thomson & Thomson is a Thomson Company.
valuation of intellectual property is
• Logo and logotype EDITOR
context specific, and trademarks are Scott Rutherford
• Sub-brands most affected by the context in which E-mail: editor.clienttimes@t-t.com
Tel (617) 376-7667 Fax (617) 786-7430
• Domain names they are valued. For example, in the
FEEDBACK / LETTERS
context of a bankruptcy, a trademark’s The ClientTimes welcomes reader feedback.
• Trade dress Letters may be published in full or part in a future
value will drop by 90% or 95%. On edition. Send letters to The ClientTimes,
• Related copyrights the other hand, if the trademark is c/o Thomson & Thomson, 500 Victory Road,
North Quincy MA 02171, or by e-mail to
• Secondary trademarks connected with a very successful brand editor.clienttimes@t-t.com.
• Advertising concepts and that brand is about to be acquired, CONTRIBUTED ARTICLES
then the value of the trademark goes Contributed articles are welcome.
• Graphics Articles should address in detail an issue of
up quite substantially. Context, as well intellectual property practice, written for
• Labeling and packaging design as the time frame in which a an audience of IP professionals.
For editorial guidelines, please contact the Editor
• Product shapes trademark is being valued, is a critical at editor.clienttimes@t-t.com.

• Web-based assets component of the process and another ONLINE EDITION AND ARCHIVES
Current and past editions of the ClientTimes
key test for value. can be found at the Thomson & Thomson
web site, www.thomson-thomson.com,
among third parties in acquiring or Valuation Methodologies in the site’s IP Library section.
otherwise using the trademark, then Twenty-five years ago, a trademark © Copyright 2002, Thomson & Thomson. Thomson
& Thomson®, T&T®, TRADEMARKSCAN® and
value exists only in the mind of the would be valued based on the instinct TRADEMARK ALERT® are registered trademarks
current trademark holder. of the company’s CEO, its bankers or and are used herein under license. SAEGIS™, Virtual
Gazette™ and SiteComber™ are trademarks and are
Thirdly, we ask the basic question of attorneys. Rough rules of thumb were used herein under license. DIALOG® is a registered
trademark of the Dialog Corporation. All other
whether a third party would pay to used to determine value based on trademarks are the property of their respective owners.
license or use the name, either on a Continued on page 4

2
Stopping Online Copyright Infringement
Taking Advantage of the Notice and Takedown Provisions of the DMCA
by Garry Berger

Much has been writ- direction of the user of material that “substantially” the following:
ten about the Internet resides on a system or network • A physical or electronic signature
and its effect on busi- controlled or operated by or for the of the copyright owner or a
ness. Arguably, one service provider,” so long as the person authorized to act on behalf
of the most positive p ro v i d e r : of the copyright owner.
impacts of the Internet (a) does not have “actual knowl- • The identification of the infringed
has been the oppor- edge” that the material in work.
tunity it has provided to individuals question is infringing,
and organizations to quickly deliver • An identification of the allegedly
(b) is not aware of any facts or infringing material along with
information to an intended audience.
circumstances which makes it reasonably sufficient information
By providing this means of instant
“apparent” that the material is to enable the service provider to
communication, however, the Internet
infringing, and locate the material.
has also opened the door to participants
who fail to understand—or intentionally (c) upon obtaining knowledge of • Contact information of the
disregard—their obligation to comply infringement, acts expeditiously complaining party.
with U.S. copyright law. to remove or disable access to • A statement that the complaining
The not-too-surprising result is the material. party has a good faith belief that
the increasing number of instances In addition, in circumstances where the use of the material has not been
of copyright infringement in the the service provider may exercise authorized by the copyright owner.
e l e c t ronic medium. Yet all too control over the activity, the provider • A statement that the information
often the actual damage to the must not receive a financial benefit is accurate and, under penalty of
copyright owner is too minimal to directly related to the infringement. perjury, that the complaining
justify the substantial litigation (17 U.S.C. § 512(c)(1)). party is authorized to act on
costs necessary to obtain an In order to qualify for the safe behalf of the copyright owner.
injunction. In many situations, the harbor provision, the service provider (17 U.S.C. § 512(c)(3)(A)).
“notice and takedown” pro v i s i o n s must also register with the Copyright In order to remain eligible for the
of the Digital Millennium Office the name and contact informa- safe harbor provision, in addition to the
Copyright Act (DMCA) offer an tion of an agent designated to receive requirements described above, upon
inexpensive and frequently satis- notices of claimed infringement. receipt of a proper notification the
f a c t o ry solution to this recurring
The Copyright Office maintains a service provider must respond “expedi-
problem for copyright owners.
directory of all such agents; a copy is tiously” to remove or disable access to
The Statutory Scheme maintained on the agency’s Web site the offending material. (17 U.S.C. §
Congress enacted the DMCA in (http://www.copyright.gov/onlinesp/list/). 512(a)(1)(C)). The prospect of losing
1998 in an effort to bring copyright Under Section 512(c)(3), a safe harbor immunity often renders this
law into line with the new reality of c o p y r i g h t owner (or authorized option preferable to a standard cease
the online distribution of content. representative) may seek the removal and desist letter to the infringing party
Under the DMCA, service providers of infringing material by providing or the more costly option of litigation.
are insulated from copyright infringe- notice to the service pro v i d e r’s Judicial Interpretation
ment liability in certain circumstances agent. The notice takes the form of Because the DMCA was enacted
under a series of “safe harbor” what is essentially a “cease and relatively recently, there is little case
provisions (see 17 U.S.C. § 512(a)-(d)). desist” letter an attorney ordinarily law interpreting its provisions. Two
Section 512(c) of the DMCA might send to the infringing party. recent court decisions, however, are
provides that service providers are The statute provides that in order informative to help practitioners to
immune from monetary liability for such notice to be effective, it
“by reason of the storage at the must be in writing and include Continued on page 6
3
“Trademark Valuation” continued from page 2
mythical valuation standards. The been used with hard assets. In valuing example, royalty rates in consumer
most abused valuation rule was that trademarks, the approach is adapted goods may range from 0.5% to 15%,
25% of operating income should be to look at the costs of replacement—in depending on the product category.
attributed to a trademark and the other words, an estimate of the cost of Therefore, the second step is to
capitalized value of that stream of replacing the trademark and recon- establish a specific royalty rate based
income would become the value. structing its market position. This is a on the specific strengths of the trade-
more physical approach. However, mark being valued. At my firm, we use
Fortunately, in the last 15 years we
properly applied, replacement cost or an approach that examines 20 key
have moved forward into a much
conversion values can represent the factors that are determinants of value
more rational world. Today, there are
minimum value of a trademark to its and royalty rates. Once the analysis
three primary trademark valuation
owner or a close competitor. has been done and a relative strength
methods:
But, whenever possible, my firm score established, the trademark is
• The market approach then assigned a royalty rate from the
prefers to use the income approach. In
• The cost approach range of comparable royalty rates
its simplest terms, it identifies the
• The income approach already researched.
specific income or royalty stream
The market approach depends on attributable to a trademark, based on The last few steps include estimating
comparison to the sale of similar assets either actual results or comparable the remaining useful life of the
in arm’s length transactions. This royalty rate transactions. This stream trademark or brand name, which may
follows the principle that the true of revenue is then projected over the run well beyond 20 years, although
value of a trademark or other asset is remaining life of the trademark (five, some may only have a remaining life
based on what another party has paid ten or even thirty years) and is calcu- span of two to five years, depending
to buy or rent a similar asset in the real lated and capitalized to reach the net on the currency and relative
world. The approach is comparative in present value of the trademark’s permanency of the trademark. Finally,
nature and is premised on the law of imputed cash flow or royalty stream. an appropriate growth rate for
substitution, but requires extensive Setting a Specific Value revenues attributable to a trademark
knowledge of comparable sale must be established, along with a
In basing value on relief from royalty,
transactions. Once comparable sales suitable discount rate to reflect the risk
it is fairly simple to identify royalty
are identified, they can be related to involved in acquiring and owning an
rates and income streams for similar
the trademark being valued. intangible asset such as a trademark. A
trademarks. However, those compara-
trademark valuation can then be
The cost approach has historically ble transactions may vary widely. For
calculated as shown in this table (left).
While the calculations shown are
Facts and Assumptions for Valuation
relatively simple, the two key issues
of a Consumer Services Trademark
are to identify appropriate comparable
royalty rates and to assess the relative
1. Range of comparable royalty rates 1.0 – 4.0%
strength of the trademark being
2. Relative strength score 59th percentile valued. Some of the key strength
measurements we use in our analysis
3. Most likely royalty rate 1.5 – 2.0%
include:
4. Remaining life span 12 – 15 years • Breadth and use of the trademark
• Uniqueness
5. Annual growth rate 2.0%
• Incremental profit margins
6. Discount rate 15.0% • Legal protection
• Competitive analysis
7. Current revenue base $406 million • Competition
• Legal status
8. Brand cash flow = 1.5 - 2.0% x 12 years x 2.0% growth
• Life cycle status
x 15.0% discount rate x $406 million annual revenues.
Royalty rates vary greatly based on
RANGE OF VALUE (NPV) $35.7 - $52.1 million the type of product and type of
Continued on page 6

4
“Trademark Office Layoffs” continued from page 1

Recovery in Trademark of applications is going to continue


to be far below a level to support

Filing Rates Continues the number of examiners we


c u rrently have on staff,” said
R i c h a rd Maulsby, the off i c e ’s
Filing rates continue to climb D i rector of Public Aff a i r s .
from late 2001 levels M o re than 90 trademark
examining attorneys were re a s-
Trademark filing rates the USPTO during the signed within the Patent and
continued to climb during The number of second quarter of this Trademark Office last year, away
the first half of 2002, trademark year. This figure, while from trademark operations, as the
according to USPTO applications filed lower than the second numbers of trademark applications
during the first
data. quarter filing rates of the fell by approximately one-third.
two quarters of
The number of trade- past several years, slightly The decision to move to layoffs
2002 showed some
mark applications filed outpaces the filing rate was made after the off i c e ’s
recovery from the
during the first two quar- experienced during the two-year plan did not forecast
sluggish fourth
ters of 2002 showed some quarter of 2001... second quarter of 1998. a re c o v e ry in the number of
recovery from the sluggish But while filing rates trademark applications.
fourth quarter of 2001, with trademark this year remain below past several The layoff will impact as many
activity slightly outpacing the levels years, the deficit is shrinking. The first as 135 of the USPTO’s current
experienced in 1998. However, quarter of 2002 saw 15% fewer filings roster of 383 examining trademark
filing activity remains substantially below than the first quarter of 2001. But, the attorneys. The agency stresses that
the levels experienced in 2000 and 2001. second quarter numbers show a nar- the reduction in force will bring
Preliminary data show just under rowing deficit, with 2002 trailing the their levels of staffing into line with
56,000 trademark applications filed at second quarter of 2001 by just 7%. current demand, and will not impact
the level of services they offer.
“The fact of the matter is, right
now, we have over 90 people that
Estimated Trademark Filings are being paid out of trademark
fees, that are doing work totally
at the USPTO
u n related to trademarks,” said
by Quarter M a u l s b y. “There will be no
impact. The bottom line is, there’s
simply no business to support
85K having that number of attorneys.”
80K —Scott Rutherford
75K
70K
65K
60K
55K
50K
45K
40K

SOURCE: USPTO data via SAEGIS™

5
“Trademark Valuation” continued from page 4 “Online Copyright Infringement” continued from page 3
trademark being licensed, from 3% to ensure that their clients provide proper court ruled that the copyright owner
15% in consumer goods, or from notification in order to trigger the had failed to “comply substantially”
0.3% to 5% in financial services—a service provider’s obligation to expedi- with the DMCA’s notification provi-
1700% difference between the highest tiously take down infringing works. sions in that:
and lowest royalty rates. In ALS Scan, Inc. v. RemarQ (a) the notice did not contain a
Summary and Conclusion Communities, Inc. (239 F.3d 619 statement “under penalty of per-
There are both business and legal (2001)), the Fourth Circuit rejected a jury” that the information in the
service provider’s argument that a copy- notice was accurate and that the
reasons for trademark valuation:
right owner’s notification letter was not writer was authorized to act on
b a n k ru p t c y, mergers and acquisi-
sufficiently detailed to trigger a take- behalf of the copyright owner;
tions work, litigation, outright sale,
down obligation under the DMCA. (b) the notice did not include a
or tax considerations such as in the
Plaintiff ALS Scan was in the business of “good faith belief” that the
case of a donation. They all require
creating “adult” photographs, which it use of the materials was
accurate valuation, which can be
displayed to the public on the Internet unauthorized; and
attained by one of three primary
and sold in the media of CD-ROMs and
methods—the market approach, the (c) the copyright owner refused to
videotapes. ALS Scan sent a letter to
cost approach, or the income approach. comply with eBay’s request that
defendant RemarQ, an online service
The most important element to he identify the listing numbers
provider with some 24,000 subscribers,
remember, however, is this: Decide of the offending material (as
stating that two of its Web sites were
what it is that must be valued. The opposed to listings which may have
displaying its photographs without
contained authorized copies).
trademark often has accompanying permission. When RemarQ refused to
brand assets such as domain names, comply with the take-down demand, The copyright owner’s failure to
sub-brands, marketing concepts, ALS Scan filed suit. provide proper notice relieved eBay of
designs and copyrights, etc. The any take down obligation, and
RemarQ argued that ALS Scan’s
manager of the valuation pro j e c t because eBay met the remaining
notice was defective because it failed to
needs to decide whether the trade- prongs of Section 512(c) (no actual or
include a list of the infringing works,
mark will be valued alone, or if all constructive knowledge independent
and failed to identify the specific works
assets related to the trademark are of plaintiff’s attempted notification
in sufficient detail to enable RemarQ
going to be grouped into a single and no right and ability to control the
to locate and disable access to them.
brand bundle and then valued. The infringing activity), the court granted
The Fourth Circuit disagreed, pointing
difference between the value of a summary judgment in favor of eBay.
out that the letter did identify two Web
naked trademark and a full bundle of sites on its system, including their spe- Conclusion
brand assets is substantial, both cific Web addresses, and asserted that Copyright owners can benefit from
in the time, cost and eff o rt virtually all of the images contained in the notice and take down provisions of
it takes to value and in the value those Web sites were its copyrighted the DMCA. A notification to the
conclusions. material. The court concluded that this service provider serving as the conduit
Weston Anson is Chairman of information “substantially complied” for the infringer is often more effective
CONSOR®, an intellectual asset with the notification requirement of than a standard cease and desist letter,
consulting firm headquartered in identifying the infringing material, and and is certainly less expensive than
therefore the service provider was no litigation. But, as demonstrated by
La Jolla, California. The firm
longer entitled to the DMCA’s safe recent case law, practitioners should be
specializes in trademark, patent and
harbor protections. careful to craft letters that comply with
copyright licensing, valuations, and
In another recent case, online auc- all statutory notification requirements.
expert testimony. Mr. Anson may be
reached at wanson@consor.com. tion service eBay was successful in Garry Berger is an attorney in New
asserting safe harbor protection under York. His practice includes corporate
Copyright © 2002, Weston Anson.
Section 512(c) in defending a copyright and intellectual property matters. He can
Published with permission.
infringement action arising out of the be reached at garry@bergerlegal.com.
The views expressed in this sale of pirated copies of a documentary The opinions expressed in this
article are those of the author and film on its Web site (Hendrickson v. article are those of the author and
are not necessarily the views of eBay Inc., 165 F. Supp. 2d 1082 are not necessarily the views of
Thomson & Thomson. (2001)). In Hendrickson, the district Thomson & Thomson.
6
The ABCs of Canadian Trademark Law
An Introduction for American Practitioners
by Eric Swetsky

The border between of discrimination may fairly be stores likely to deal with the goods
Canada and the expected from the public where a might be the same.
United States has trade(mark) consists wholly or in part The fifth leg of the test of confusion
been called the of words descriptive of the articles to is the degree of resemblance between
longest undefended be sold or the services to be rendered.” the trademarks in appearance, or
border in the world. The second leg of the Canadian test sound, or the ideas suggested by them
As neighborly as of confusion is the length of time the (all three of these elements are impor-
Canadians and Americans are, the competing trademarks have been in tant—the visual, phonetics and the
49th parallel that separates Canada use. The theory is that the longer the ideas conveyed by the marks).
from the United States is an interna- trademark has been in use, presum- The sixth leg of the test considers
tional border, and trademark law, as ably the wider awareness the mark has all of the surrounding circumstances,
all trademark lawyers know, is received, with a corresponding greater and Canadian jurisprudence shows
territorial in nature. potential for possible confusion (the that cases can turn on this element.
The purpose of this article is to opposite being equally true vis-à-vis This was nicely articulated by Mr.
provide trademark practitioners in the limited or no use). Justice Joyal in Clorox Co. v. Sears
U.S. with the fundamentals of the Canada Inc. (1992) 41 C.P.R. (3d)
Canadian test of trademark confusion 483 at 489 and 490 (Federal Court of
so they will be better equipped to “Since the signing of the Canada); affirmed (1993) 49 C.P.R.
interpret a Canadian trademark North American Free (3d) 217 (Federal Court of Appeal):
search report. Trade Agreement, a “(looking only at the first five legs
Under the Canadian Trademarks Canadian intent to use of the test of confusion) tends to
Act, the test of confusion is a six-part trademark application has create a technical approach to...the
test. Not all elements of the test have never been more impor- statute and, in the decision making
to be given the same weight. process… Doctrine in trademark mat-
tant to United States mar-
The first element of the test is ters, however, is quite clear that those
keters. More and more
inherent distinctiveness. Invented or (first five) fields of inquiry are not
businesses in the United exhaustive… it seems quite clear to me
coined words are granted a broader
States are expanding that a decision on the issue of
range of protection than are ordinary
dictionary words, or words that are today into Canada.” confusion…cannot be a sum of the
descriptive of their goods and services. individual (first five) tests… The
Perhaps the classic articulation of this surrounding circumstances are
principle comes from a 1949 judgment The third leg of the test of confusion overriding. It is in regard to those
of the Supreme Court of Canada, is the nature of the goods, services or (surrounding) circumstances…that the
delivered by Justice Rand, one of businesses—to what degree the nature case before me merits some findings
Canada’s most highly regarded jurists of the goods, services or businesses which are not specifically analyzed in
(General Motors Corpn. v. Bellows overlap. Generally, under Canadian the impugned decision (of the
[1949] S.C.R. 678 at 691): law, the degree of protection in this Opposition Board).”

“…It comes in the end, I think, to respect is elastic and can be considered Examples of some surrounding cir-
no more than this, that where a trader to be wider rather than narrower. cumstances that are frequently
adopts words in common use…some The fourth leg of the test is the advanced are survey evidence, the
risk of confusion is inevitable. …The nature of the trade. This element con- state of the Register (whether a key
Court will accept comparatively small siders such things as the channels of word in the mark is or is not common
differences as sufficient to avert distribution, nature and type of to other registered marks), and
confusion. (As well, a) greater degree customers and whether the types of Continued on page 8

7
“Canadian Trademark Law” continued from page 7

whether a mark is a member of a an invented word as the expression is more important to United States mar-
family of marks. Instances of actual used in the British jurisprudence or as keters. More and more businesses in the
confusion also fall within this category, the expression is used under the United States are expanding today into
and while only likelihood of confusion Canadian statute.” Canada. Simply put, a Canadian intent
needs to be proved, evidence of actual Second, Canada does not have a to use trademark application reserves
confusion can be weighty. Supplemental Register. Therefore, if a the right to your trademark in Canada.
Before concluding, it would be Canadian trademark is deemed by the
Eric Swetsky is a Toronto lawyer who
remiss not to point out two differences Trademarks Office to be entirely
practices Canadian trademark, copy-
between Canadian and U.S. treatment descriptive, the Applicant will have no
right, advertising and marketing law.
of descriptive trademarks. First, choice but to abandon the application
He is a member of the Canadian Bar
Canadian common law will not often (you can avoid this consequence by
Association Trademarks Committee
view descriptive words joined together seeking to register your mark in the
and is listed in Lexpert as an expert on
as being of the invented/coined variety. form of a design).
Canadian trademark law. He may be
This principle was nicely summarized Finally, it is worth mentioning that,
reached at 416-787-4376, by e-mail
by one of Canada’s leading text writ- as in the United States, a trademark
ateric@advertisinglawyer.ca, or on the
ers (Fox, The Canadian Law of application can be filed in Canada
Web at www.advertisinglawyer.ca.
Trademarks, 3rd ed. at page 99): “The based upon “intent to use” (we call it
mere joining together of two descrip- “proposed use”). Since the signing of The opinions expressed in this article
tive words to form a single word never the North American Free Trade are those of the author and
seen before in the English language Agreement, a Canadian intent to use are not necessarily the views of
does not necessarily make such a word trademark application has never been Thomson & Thomson.

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8
LAWS & LITIGATION
TRADEMARK NEWS that there was “no likelihood of that Warren would then pitch the idea
customer confusion as to the origin of to his friend, producer Steven Bochco.
Franklin Mint may continue
the Franklin Mint’s Diana-related Reportedly, Warren liked the idea and
to market Princess Diana-
products.” Accordingly, the District asked the Metcalfs to write a summa-
related items ry. The Metcalfs wrote their summary,
Court granted summary judgment
Diana Princess v. Franklin Mint Co. against the fund’s claim of false endorse- called it, “Give Something Back,” and
Since 1981 and Princess Diana’s widely- ment; the fund made a timely appeal. passed it to Warren, who then pitched
watched marriage to Prince Charles, it to Bochco.
On appeal, the Ninth Circuit Court of
the Franklin Mint has sold plates and
Appeals held that the “plain language” The Metcalfs were told that
other items with Diana’s name and
of the statute and the legislative history although Bochco liked the idea, he did
likeness. Although the Princess never
supported the lower court’s decision not have the bandwidth to develop it.
gave her formal approval to these The Metcalfs hired a writer to rework
not to apply California law. When
items, she did not attempt to prevent the summary into a screenplay, this
deciding the issue of false endorse-
their sale. time calling it “As Long As They Kill
ment, the Ninth Circuit went to great
After Diana’s death in 1997, a fund lengths to describe the circumstances Themselves.” Again they pitched it to
was established to ensure that profits under which it is appropriate to use the Bochco (via Warren), and again they
and donations were given to charities nominative fair use analysis versus the were told Bochco did not have time to
with which the Princess had worked classic fair use analysis. In this case, take on the project. The following
closely. Her estate gave the fund the the court applied the nominative fair year, the Metcalfs tried for a third
exclusive right to use Diana’s name and use analysis. A nominative fair use time, writing a new summary of the
likeness to raise money for these selected analysis “replaces the likelihood of idea entitled “About Face” and resub-
charities. The fund granted several customer confusion analysis set forth mitting it to Bochco (again through
companies permission to use Diana’s in Sleekcraft.” Using this analysis, the Warren), as well as submitting it to
name and likeness, but did not give Ninth Circuit affirmed the District CBS. The response was the same.
authorization to the Franklin Mint. Court’s grant of the Franklin Mint’s Eight years later, a television series
On May 18, 1998, the fund filed motion for summary judgment against called “City of Angels” premiered on
suit against the Franklin Mint alleging, the fund’s false endorsement claim. CBS. The series centered around an
among other things, false endorsement inner-city hospital in Los Angeles and
and violation of California’s post- the daily struggles of its mostly black
COPYRIGHT NEWS staff. Several episodes were written
mortem right of publicity statute. The
district court granted the Franklin Ninth Circuit Court of and produced by Bochco and starred
Mint’s motion to dismiss the post- Appeals applies extrinsic test Warren. The Metcalfs filed a copyright
mortem right of publicity claim, to determine if works are infringement suit against Bochco, CBS,
stating that the controlling law was substantially similar Warren and others.
that of Great Britain. British law does Metcalf v. Bochco After reading news- Although the lower court found
not recognize a post-mortem right of paper reports about the Army’s technique that the Metcalfs owned valid copy-
publicity. of introducing surgeons to combat-like rights in “Give Something Back”, “As
Since then, the California Legislature conditions by training them at inner- Long As They Kill Themselves” and
amended the statute to “cases in which city hospitals, Jerome Metcalf was “About Face”, and that Bochco had
the liability, damages, and other reme- inspired. He and his wife began to cr e- access to these copyrighted works. The
dies arise from acts occurring directly ate a story about an inner-city hospital court granted the defendants’ summary
in the state.” The fund filed a motion to in Los Angeles and the daily struggles judgment motion on the grounds the
reinstate the claim under the amended of its mostly black staff. They formed works were not substantially similar.
statute. In June 2000, the court found a corporation, called CCA, with the On appeal, the Ninth Circuit Court
the Franklin Mint’s use of Princess goal of developing the idea into a of Appeals employed an extrinsic test
Diana’s name and likeness did not movie. to determine if the works were
implicate the “source-identification Jerome pitched the idea to his substantially similar. The extrinsic test
purpose of trademark protection” and friend, actor Michael Warren, hoping Continued on page 10

9
Continued from page 9

LAWS & LITIGATION


Your focuses on “articulable similarities”
between such factors as themes, plot,
remove his foot from his mouth.
The Web site is owned by Gary

Opinion dialogue, characters, etc. After review -


ing the works, the court found that the
Cohn, who, so far, has been allowed to
keep the domain name despite

Counts similarities were “striking” and listed


many of them, including:
• The main character in both are
Falwell’s attempts to shut it down. In
October 2001, Falwell sent Cohn a
cease and desist letter. Then, in
handsome black surgeons that February 2002, Falwell filed a complaint
chose helping others over more with the WIPO Arbitration and
ClientTimes lucrative private practices. Mediation Center, claiming that Cohn
Reader Survey • Both surgeons have an established registered a domain name that is
love relationship with a young identical and/or confusingly similar to
Deadline professional woman but then Falwell’s common law trademark in
Extended become attracted to a hospital his name. Further, Falwell contended
employee. that Cohn had no legitimate interest in
• Both kiss the new interest but then the domain name, and claimed the
have a moment of intimacy with content of Cohn’s site did not fall
In our last issue the former love interest, which puts within the definition of a parody.
(No. 2, May 2002), a strain on the new relationship. The WIPO panel found that Cohn’s
we included a survey to ask
The Ninth Circuit Court of Appeals domain name was identical or confus-
your opinion about the
reversed the lower court’s decision, ingly similar to Falwell’s name, the
ClientTimes—to help us
holding that these similarities, taken mark in which Falwell claimed rights.
provide you with a together, allow the Metcalfs to survive However, they held that Falwell’s
publication that gives you summary judgment. rights are not protectable under the
the information you want
policy. Even though Falwell’s name is
in the format you prefer.
DOMAIN NAME NEWS well known, the panel said, Falwell
failed to show that it has been used “in
Jerry Falwell loses fight for
If you have not completed a trademark sense as a label of particular
rights to jerryfalwell.com
the brief 15-question form, goods and service.” WIPO clearly
you still can. We have Visitors to jerryfalwell.com may not indicates that the policy “should be
find what they expect. Instead of a limited to personal names that (have)
extended the survey period
Web site depicting evangelist Jerry been commercially exploited.”
through September 15.
Falwell in a positive light, the site
Further, the majority of the panel
instead pokes fun at Falwell for his
found that Cohn is making a
To take the survey, visit this well-publicized remarks that the
“legitimate noncommercial or fair use
Web site: http://ttdomino. September, 2001 terrorist attacks were
caused by the moral decline of of the domain name, without intent for
thomson-thomson.com/ct.nsf
America. The Web site shows cartoons commercial gain to misleadingly divert
(please enter the address
and altered pictures of the well-known consumers or to tarnish the trademark
exactly as shown,
right-wing preacher, one of which and that the use does fall within
including the http:// prefix).
shows Falwell at the pulpit sticking his the definition of a parody.” While
foot in his mouth. Another image Falwell’s WIPO claim was denied, the
shows Falwell alongside two other panel told Falwell that he may have a
Thank you for your time preachers, Pat Robertson and Franklin claim under the Anticybersquatting
and your feedback. Graham, the son of veteran evangelist Consumer Protection Act, as the
Billy Graham. In that image, Graham ACPA expressly provides protection of
and Robertson are helping Falwell to personal names.

10
INTERNATIONAL NEWS
Upcoming Changes to
India Trademark Law
India is preparing to make several
significant revisions to trademark
law. No exact implementation date
has yet been announced, but these
changes are anticipated to go into
e ffect within the next several
months.
With the revisions, it will become
possible to apply for service mark
registration in Classes 35 through 42
(India is not a member of the Nice
agreement). It will also be possible
to file multiple-Class applications
(separate fees will be charged for each
additional Class).
India will also allow collective
trademark applications, making it
possible to ask for protection of a
mark for goods or services belonging
to an association of persons.
The term of a trademark registration
is being revised to 10 years from the
date of registration, with renewal
periods of the same length. The new
India trademark law will also abolish the
distinction between the A and B register,
as was previously done in the UK.
Special Signs must be the organiza- Jamaica Extends
tional body behind the event. Special
Opposition Period
Special Signs Signs will be given a protection period
Under a new trademark law,
of four years from the registration
Registration in China the opposition period for new
date, which is also the advertisement
China has added a new chapter to t r a d e m a r k s in Jamaica has been
date. Unlike trademarks, for which a
the Chinese Trademark Bulletin extended from one month to two
three-month opposition period is
addressing “Special Sign Registration months. This term begins as of the
observed, Special Signs are not open
Announcements,” addressing symbols actual date of receipt of the Official
used for national or international for opposition purposes.
Gazette at the Registry.
cultural groups, sporting events and While Special Signs may only be For example, the Jamaican Gazette
technological events held in China. approved for registration in certain dated January 23, 2002 was received
These Special Signs are published in classes of goods or services, they are at the Registry on April 26, 2002—
a separate chapter of the Bulletin and broadly protected. Later trademark and therefore, the two-month period
have a different number sequence. rights, even on different goods or of opposition extended until June 26.
They can be Chinese or non-Chinese services, or other intellectual property This expiration date is considered
characters, designs, abbreviations, rights (such as copyright or design final, however, and no extensions will
emblems or mascots. patent) should not conflict with be granted.
The applicants or owners of these registered Special Signs. Continued on page 12

11
PRODUCT UPDATE
perspective and context needed to print report or to receive an online
Web Page Lookups
determine whether a cited domain report in your SAEGIS Inbox.
Now Included name and Web page is of any concern. It’s the information you need to
Now, your Thomson & Thomson full Because while you wouldn’t want to decide how to proceed—in the most
search includes Web Page Lookups— waste time investigating a domain informed, efficient way possible.
the first page of the Web site, when name that’s otherwise insignificant,
To learn more about WEB PAGE
available, for each domain name cited in you also wouldn’t want to overlook a
LOOKUPS, please call 800-692-8833
your search report. Also, we provide potential threat because it may be
or visit www.thomson-thomson.com.
you with the site’s “meta tags”—the site camouflaged on the surface.
description and keywords built into the Web Page Lookups. Look for them Continued from page 11
site—whenever available. in the Domain Name section of your
INTERNATIONAL NEWS
Web Page Lookups give you the search report—whether you prefer a
Change to Malta
Opposition Procedure
Introducing Title Plus. The process for opposing
trademarks on the Mediterranean
island of Malta has changed.
Formerly, all trademark applications
in Malta had been published in the
Malta Government Gazette, and
the date of publication marked the
beginning a two-month opposition
period. Under the new system,
trademarks will no longer be pub-
lished in advance. Instead, a notice
will be published in the Gazette
Added coverage when you need it. when a trademark registration
certificate has been issued, and any
Having the right amount of coverage is critical for protecting your creative
person may challenge the registered
works. That’s why we’re proud to introduce Title Plus—the latest addition
to Thomson & Thomson’s line of title research services. trademark within the five years
following the date of publication.
The entertainment industry relies on our U.S. Title Availability Search to
help determine the availability of titles, and satisfy Errors and Omissions International
insurance requirements. For large-scale merchandising plans, there’s the
Entertainment Availability Search (EAS).
Trademarks in Ireland
For the first time, the Irish
Now, there’s a new option to meet your title research needs. Title Plus Trademark Journal has published
takes the Title Search and provides additional trademark sources, including details of international trademarks
business names and common law trademark information. It’s for those
seeking protection in Ireland.
times when your project is high profile, but doesn’t require the trademark
clearance of the EAS. International trademark registra-
tions seeking protection in the
Whether you choose the U.S. Title Availability Search, Title Plus or the EAS Republic of Ireland are open to
for your creative works, you’ll rest assured. Our expert analysts will help opposition within three months of
you select the right search for your creative work—and help you save both
the date of publication in the Irish
time and money.
Trademarks Journal. Ireland
became a member of the Madrid
Protocol in October 2001.
800-356-8630 • www.thomson-thomson.com

12
UPDATE
Announcing Improved SAEGIS Invoices
We’ve implemented changes to your SAEGIS™ invoice that will make it easier to fit SAEGIS into your workflow.

Subtotal by
Reference Number
We’ve made it easier for you to
charge back your SAEGIS activity.
The reference number
SAEGIS invoices are now subto-
or text you entered
taled by reference number, with when running your
the applicable discount and searches.
The total activity
tax applied. This client-driven charge for all searches
initiative makes it easier to fit your related to this
reference.
SAEGIS invoice into your billing The corporate
discount applied to
practices.
activity under this
reference.
The dates on The taxes applied to
which your activity under this
searches were run. reference.

The total amount due


for activity under this
reference.

Online Account History


Now, you can access past invoices online (from 1997 to present). Individual users have access to their own invoices; your
company’s billing contact can access any invoice tied to your SAEGIS account. Plus, you have viewing and printing options—
the ability to view or print the invoice, or even export the data to a spreadsheet program. It’s designed to make it easier for
you to incorporate your SAEGIS invoice into your workflow.
Enter your desired date
range and click “View
Invoices”. This will
generate a list of invoices
meeting your criteria.

Click “Past Invoices”


to review your past
SAEGIS activity.
Select the format in
which to view the
document: HTML,
Spreadsheet or PDF.
Click on the desired
invoice to review.
Consistent Monthly Billing
We’ve also implemented a new, standard monthly billing cycle. The new system replaces our previous five-week rolling
cycle. Moving forward, you’ll receive your SAEGIS invoice at the same time each month.

13
TRAINING 2002
Web-Based Training at Your Desktop
online training, you must have Trademark Maintenance
Internet access and a phone line to This class will teach you additional
connect to the conference call. All tips and tricks you can use while inves-
classes are filled on a first-come, tigating trademarks, such as tech-
first-served basis, and space is limited. niques to determine how litigious
To register, call 888-477-3447, or another company is, and how to stay
send e-mail to support@t-t.com with on top of which trademarks are due
the date and time of the seminar you for renewal in the coming year.
would like to attend. There is a fee September 24, 2002 ....3:00 p.m. ET
of $50 for each seminar. You will
receive a confirmation e-mail which
Design Searching
includes instructions on how to log in
Learn the basics of design searches on
to WebEx.
SAEGIS, including where to find
design codes and how to make the best
Basics of Custom Search use of them.
With SAEGIS™ online training, you
can learn how to get the most out of Learn the basics of SAEGIS Custom September 19, 2002 ....3:00 p.m. ET
SAEGIS from your desktop. Thomson Search. You will learn how to
& Thomson’s Online Services repre- maneuver the site, and by the end of ISS Searching
sentatives have scheduled a series of the session, you will able to conduct
Learn how to make the best use of
upcoming training seminars on your own searches with confidence.
Thomson & Thomson’s exclusive
SAEGIS, using WebEx® technology. August 22, 2002..........11:00 a.m. ET online Identical Screening Search (ISS)
The WebEx Meeting Center makes September 4, 2002 ......11:00 a.m. ET database. With ISS Online, you can
it possible to hold real-time meetings screen your mark against more than 21
September 10, 2002 ....3:00 p.m. ET
over the Internet from virtually any million international trademark records.
September 17, 2002 ....3:00 p.m. ET
desktop or laptop, and makes it possible September 11, 2002 ....3:00 p.m. ET
to learn from the comfort of your own
office. Classes generally last 45 minutes
Custom Search Advanced Pharma In-Use
to one hour—you can attend the class
without worrying about losing a Search Techniques The Pharma In-Use database has been
whole day out of the office. Learn new and more advanced built specifically for the biotechnical,
searching techniques. This class covers pharmaceutical and healthcare indus-
These training sessions allow you to
slogan searching, combining queries, try. Learn how to get the most out of
view the instructor’s presentation
acronym searching, and other tools that this data resource. The data file is
online, while you’re connected to a
licensed from IMS Health, the world’s
conference call. The conference call will help improve your searching ability.
largest healthcare information compa-
gives you the opportunity to hear and August 28, 2002..........11:00 a.m. ET ny, specializing in the supply of market
ask questions. WebEx technology September 5, 2002 ......11:00 a.m. ET information on pharmaceutical products.
allows the instructor to “share”, or
September 12, 2002 ....3:00 p.m. ET August 19, 2002..........3:00 p.m. ET
pass control to any attendee. It’s a
hands-on feature that helps attendees September 18, 2002 ....3:00 p.m. ET September 25, 2002 ....3:00 p.m. ET
get the most out of the training—you
can practice searching on SAEGIS
through the instructor’s browser, To register for a class, send e-mail to support@t-t.com
during the class. or call 888-477-3447.
To take advantage of SAEGIS

14
THOMSON & THOMSON EVENTS

INTA 2002
The International Trademark Association held its 124th annual meeting and
conference in Washington D.C., May 18-22. Thomson & Thomson exhibited
at the show, joined by affiliated companies Compu-Mark, Brandy
International and West.
The annual meeting, attended by more than 6,500 intel-
lectual property professionals, featured Thomson &
Thomson’s demonstrations of new products including the
Identical Screening Search products on SAEGIS, ISS Online.
Thomson & Thomson’s ISS Online demos were well
received. T&T senior electronic account manager Ann Candura
said people were “very impressed with the geographic scope of
the service (and the) overall system design.”
For the annual Client Reception, held Tuesday May 21, Thomson & Thomson
was also joined by its affiliated companies, Compu-Mark, Brandy International and
West Group, as well as approximately 2,500 clients and friends. The reception at the
Ronald Reagan Building and International Trade Center included dancing to the
music of “Time Machine” and sampling Washington-themed cuisine.

We look forward to seeing


everyone again at the 2003
INTA conference in Amsterdam!

Thomson & Thomson’s Los Angeles


Intellectual Property Law Seminar UPCOMING EVENTS
Renowned trademark expert J. Watkins, spoke about the searching Intellectual Property
Thomas McCarthy joined Thomson and clearing of trademarks from a liti- Institute of Canada (IPIC)
& Thomson for its Los Angeles gator’s perspective; Kevin Daley, an October 2-5, 2002
Intellectual Property Educational associate with Kenyon & Kenyon, Deerhurst Resort
Forum, held June 13. Professor spoke on the landmark copyright case, Ontario, Canada
McCarthy, of the University of San Eldred v. Ashcroft, the challenge to
Francisco School of Law, presented an the Sonny Bono Copyright Term INTA Trademark
update on trademark law. Professor Extension Act. Administrators Conference
McCarthy was joined by two other A donation will be made to the October 6-9, 2002
distinguished speakers: Perry McCarthy Institute of Law at the Crystal City Marriott
Viscounty, a partner with Latham & University of San Francisco. Arlington, Virginia

15
We’re Open Late
Announcing Extended Business Hours at Thomson & Thomson

We’ve just made it more convenient for you to order


the industry’s most trusted research products.

With our new extended hours, we’re here on your time. Whether you need to
order a search at eight-thirty in the morning in New York or seven at night in Los
Angeles, just pick up the phone. We’re here to take your order until 10:00 p.m.
Eastern Time (7:00 p.m. Pacific Time), Monday through Friday.

The service you need — when you need it.

800-692-8833 • www.thomson-thomson.com

Thomson & Thomson


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