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 My law career started on the ice…as a defensive hockey player (we’re not talking professionally…and if I were, I probably wouldn’t have gotten into law). I always knew I’d perpetually be in some sort of faceoff—only I didn’t know it would be in the courtroom. A fierce, natural-born competitor, I am always looking for the advantage...and how I can exploit it. Known as the “Bulldog” around the office, I’m all about holding people accountable for their actions. Just as if we were on the ice, it ain’t over until my team wins. When I’m not metaphorically equating my law practice to hockey (though I can’t stop altogether, I AM captain of the firm’s pond hockey team), I’m advising clients on a broad range of complex and strategic legal and business matters regarding trademarks, copyrights, and domain names. Other than law and hockey (and really, who can separate the two?), I enjoy playing golf and analyzing the stock market.

Inditex – the parent company of fashion giant Zara – sued a small New York-based brand over the use of the mark Zara Terez (“ZT”). Zara Terez was launched in 2008 by friends Zara Terez Tisch and Amanda Schabes. The complaint alleged that “ZT’s trademark is likely to create, and has created, confusion in the marketplace as to the affiliation between the parties and is likely to dilute, and has diluted, the Zara trademarks.” ZT filed a trademark application with the United States Patent and Trademark Office, but the application was refused registration based on Inditex’s prior registrations for ZARA.

Although not alleged in the complaint, one has to assume that ZT did not conduct even a preliminary search of the USPTO’s online database prior to filing the application for ZARA TEREZ. Rather, the owners of ZT poured about 7 years to money and effort in promoting and building goodwill in their brand. This aspect of rebranding is often over shadowed by the actual costs of having to change signage, reprint letterhead, etc., which in Zara Terez’s case may have been manageable. But the cost to re-educate consumers about a brand can be much more involved, and is a cost that could have been avoided with even a basic search of the United States Patent and Trademark Office.

When most people of think of trade dress protection they primarily think of a good. Generally, protecting a product’s configuration, which can never be inherently distinctive, or a product’s packaging, which can be inherently distinctive. Rarely, does trade dress for services come to mind, but trade dress protection for services is alive and well. More often than not, trade dress protection for services involves the interior of a retail establishment like a restaurant. But more and varying type of trade dress protection for services exists. Recently, Franksih Enterprises, Inc. registered the exterior design of its monster truck for “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.” Uniforms can also qualify for trade dress protection like in the case of the Chippendales cuffs and bowtie. The point being that so long as it is capable of indicating source, many forms of trade dress for services can qualify for protection.

Regulators in the U.S. are set to change the concept of “materiality,” or the determination of what information is necessary for companies to disclose publicly. While sales and earnings figures are important, Baruch Lev, an accounting professor at New York University’s Stern School of Business who analyzed financial reports and quarterly conference calls at some 3,000 companies over the past 50 years, found that financial analysts have all but stopped asking about these figures. Mr Lev said “the usefulness of financial information to investors decreased tremendously over the last 20 to 30 years,” and that companies do not say enough about intangible assets, such as brands, that can drive their business. Indeed, large accounting firms like EY are putting out research pieces on Integrated Reporting, which focuses on disclosing more than just numbers.

Recognizing this change in reporting was coming, the International Organization for Standardization (“ISO”) passed ISO Standard 10668 on Brand Valuation. ISO Standard 10668 recognizes that financial considerations are only one leg of the stool that make up a brand’s value. Legal and Consumer Behavior considerations also play a critical part in determining the value of the brand. Despite the soundness of ISO 10668, it has not been adopted as a rule by FASB; thus, its usefulness has been undermined because most brand valuations are performed by outside accounting firms who continue to rely on the traditional valuation methods, the:  (1) Cost Approach; (2) Market Approach; and (3) Income Approach.

However, even these traditional valuation approaches implicitly require a legal strength analysis of a mark. The cost approach is essentially calculated as a replacement cost for the brand. This requires a consideration of all the costs invested in a brand (e.g., the cost for acquiring, supporting, and maintaining the brand). Supporting and maintaining a brand necessarily involves an assessment of the conceptual and commercial legal strength of brand to assess what it would cost to replicate the same level of legal strength.

The market approach is a comparison of similarly situated brands. This requires comparing brands with similar traits (e.g., legal strength). Finally, the Income Method incudes six different approaches but they all generally rely on the premise that a company can get a higher price on a product with a known brand than for a generic product without a brand. Again, whether a mark has achieved fame requires a legal opinion of the overall strength of a mark.

Whether ISO 10668 is eventually adopted as a rule or not, current brand valuation companies could improve the accuracy of their valuations by including and working together with experienced trademark counsel. And if accounting firms or other brand valuation companies are reluctant to include experienced trademark counsel in the valuation process, any company having its brand valued should insist on getting experienced trademark counsel involved.

 

 

The European Court of Justice (the “ECJ”) ruled that national regulators in the EU can override the 15-year-old pact between the U.S. and EU known as the “Safe Harbor.” The Safe Harbor allowed companies based in the U.S. to move personal data on Europeans to U.S. based computer servers without violating the EU’s privacy laws.

The ECJ’s ruling does not order an end to the data transfers, but holds that national regulators have the right to investigate them and suspend them if they do not provide adequate protection for the personal data. European data protection regulators can now pursue companies for violations.

In anticipation of the ECJ’s decision, the European Union Commission had been working on a Safe Harbor framework to replace the framework that has been struck down by the ECJ. However, it is uncertain when or if this replacement framework will be finalized.

Companies that are relying on the U.S.-EU Safe Harbor Framework to comply with the EU Data Privacy Laws need to consider implementing a new strategy. One possibility is to adopt Model Contract Clauses, which can be set up with the EU. However, Model Contract Clauses are based on the Safe Harbor principles and can be subject to a legal challenge. The other possibility is to adopt Binding Corporate Rules. Binding Corporate Rules (BCRs) are designed to allow companies to transfer personal data from the European Economic Area (EEA) outside of the EEA in compliance with the 8th data protection principle and Article 25 of Directive 95/46/EC. BCRs are legally sound, but are more complex to establish

A little known fact is that U.S.-based applicants can file a Madrid application that relies on either a registration on the Principal or Supplemental register.  A Madrid application significantly lowers the costs of foreign trademark filings by centralizing the application process. The ability to support a Madrid application with a Supplemental Registration can change the strategy for responding to a merely descriptiveness registration refusal. It may be the better option to secure the earliest filing date in foreign countries while waiting to acquire distinctiveness in the United States. And the International Registration, which issues from the Madrid application, is subject to a central attack (i.e., an attack on the Supplemental Registration) for only five years from the registration date. Accordingly, at about the same time the U.S. mark is acquiring distinctiveness, the foreign registrations are becoming safe from a central attack.

A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. The letter is filed with the Director of Trademarks and if the Director is persuaded by the evidence, the letter will be accepted and the evidence forwarded to the examining attorney. Only the evidence is forwarded to the examining attorney. Accordingly, it is important to keep any legal argument in a letter of protest to a minimum. This also has the effect of keeping costs down with respect to the preparation of the letter of protest. If the examining attorney finds the evidence persuasive and issues an registration refusal based on the evidence, it can be a cost effective tool to keep the principal register clear of a concerning mark.

How many trademark applications should I file and for what goods and services? These are two critical questions to any filing strategy, and a close second is how often should I file?

The answer to how many applications to file is the number of marks that you realistically believe consumers will rely on to identify your core goods or services times the number of core goods or services you offer. Once you have this base protection in place, you can expand the filings to secondary goods and services. These filings add to the scope of the protection in the mark.

You should consider filing new applications for the same mark when modernizing the mark. Depending upon what changes are made, it is possible that a new application will be required.

A thoughtful trademark application filing strategy is key to establishing a strong commercial brand.

Travelers Cos., a large property-casualty insurer, sent a cease and desist letter to a small consulting firm in Anchorage, AK demanding that it stop using the image of an umbrella in connection with its business. Travelers has sent similar letters to other companies and taken action before the Trademark Trial and Appeal Board against similarly situated companies. Is Travelers a trademark bully or responsible trademark owner?

Context is important to answer this question. In a registration context, it is important for trademark owners to protect the scope of their rights and the conceptual strength of its mark. Depending on the state of the Principal Register at the time the trademark owner files its trademark application, that may mean attempting to keep the Principal Register clean of any mark that includes, for example, an umbrella design. Or it may mean allowing some umbrella design marks to be registered and not others because some trademark applications fall within the scope of rights that the trademark owner is trying to protect.

In the real world marketplace, the use of an arguably confusingly similar mark must be put in context in terms of its impact on the scope of Travelers rights, for example. The consulting company is Anchorage, AK is probably a single location business that does not market its services outside of Anchorage, AK. Accordingly, the impact that this use would have on Travelers’ scope of rights or commercial strength is probably negligible. Too often, companies forget to put into context the use of the arguably infringing mark before sending cease and desist letters. But as the Travelers story demonstrates, these letters are becoming more public and so consideration needs to be given to each case before making the decision to send a cease and desist letter.

A commonly used forum to resolve trademark registration issues, which also commonly resulted in negotiated settlements over the use of mark, may no longer be so common. Today, the United States Supreme Court issued its heavily anticipated opinion in the B&B Hardware v. Hargis Industries case, which involved the issue of whether TTAB decisions on likelihood of confusion should have preclusive effect on a subsequent district court action. The Supreme Court held that a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion were met. Issue preclusion was not limited to those situations in which the same issue was before two courts. Rather, where a single issue was before a court and an administrative agency, preclusion also often applied. The 8th Circuit’s primary objection to issue preclusion was that the TTAB considered different factors. However, the Court held that the same likelihood of confusion standard applied to both registration and infringement. It did not matter that registration and infringement were governed by different statutory provisions. Neither did it matter that that TTAB and the 8th Circuit used different factors to assess likelihood of confusion. The Supreme Court found that the factors were not fundamentally different. Likelihood of confusion for purposes of registration was the same standard as likelihood of confusion for purposes of infringement. However, the Supreme Court also found that if the TTAB did not consider the marketplace usage of the parties’ marks, the TTAB decision would have no preclusive effect in a later suit where actual usage in the marketplace was the main issue.

The practical effect of this decision is that it will likely increase the burden on the district court docket. The TTAB has held on several occasions that because certain presumptions apply to unrestricted registrations, the marketplace reality given little, if any, probative value in the Board’s analysis of the likelihood of confusion. Accordingly, if a plaintiff’s case is stronger with the presumptions, it will begin the action at the TTAB. If the marketplace reality benefits the plaintiff, it will begin the action in district court. Likewise, if a defendant believes the marketplace reality benefits its defense, it will seek to suspend the TTAB proceeding instituted by the plaintiff in favor of a district court action.

Before instituting a cause of action against another party, trademark owners will have to engage in some pre-litigation planning to position the case in the most beneficial forum.

How do you claim your trademark? There is no requirement that a company use one of the trademark designations in connection with their trademark, but it is a good practice to get into. Using either the “TM” or “Circle R” puts others on actual notice of your rights. The “TM” should be used before the mark is federally registered. Once the mark is registered, it should be replaced with the “Circle R.” There is no need to use a trademark designation every time the mark is used. However, it should be used on the first prominent use of the mark so that others will recognize the designation and associate it with the mark.