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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Thursday, March 24, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

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.

Faculty

Theodore H. Davis
Partner
Kilpatrick Townsend & Stockton LLP

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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Kelu L. Sullivan
Partner
Kelly IP, LLP

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.

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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 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 for mark protection in Europe.

As the popularity of nontraditional trademarks is increasing worldwide, 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
    • Sight
    • Sound
    • Touch
    • Single colors
    • Motion
    • Hologram
    • Product packaging
    • Product configurations
  2. Registration of nontraditional marks
    • Clearing the mark
    • Functionality test
    • Acquired distinctiveness
    • Inherent distinctiveness
  3. Protecting nontraditional marks
    • Using copyright law
    • Using design patent law
  4. 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?