IN THIS ISSUE

ASSOCIATION NEWSBusiness Transactions Forum Brings “Real” Practice to LifeINTA Holds Second Roundtable in UzbekistanBattling for the BrandAre You Experienced?

LAW & PRACTICEESTONIANew Import and Export Act Comes into ForceGERMANYSeveral Meanings to Indicate Distinctiveness MACEDONIAMadrid Protocol Ratified

NIGERIAIntellectual Property Commission ProposedPOLANDThe Protection of Word and Device Trademarks Containing a Generic NameUNITED ARAB EMIRATESNew Classification of Goods and Services AdoptedUNITED STATESRegistration Schedule for “.us” Domain Announced

BRAND BUYSDuPont Co.Andrew Corp.

Ciena Corp.LVMH Louis Vuitton-Moet Hennessey SA

WORLD UPDATEUSPTO Offers “ExperTEAS”WIPO Establishes Updated Free Trademark Search Site

IN THE NEWSJEEP and HUMMER–Round TwoBRAWNY Gets a MakeoverWearing Unlicensed Logos Costly to NFL PlayersOwnership Dispute Over STOLICHNAYATying Up the TUK-TUK NameWWF Slammed by Wildlife Fund

COMMITTEE COMMENTSTrademark Management Programming Subcommittee

Implementing the 8th Edition of the Nice Classification System

Bulletin APRIL 1, 2002

THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 57, NO. 7

BY NAERAN RUBIO, INTA, NEW YORK CITY, USA

ON JANUARY 1, 2002, the World Intellectual PropertyOrganization’s (WIPO) 8th Edition of the NiceClassification came into force. The new editionrestructures existing class 42 by creating the threeadditional classes 43, 44 and 45. The classes are orga-nized as follows:

Class 42 – for scientific, technical and relatedresearch and design services, industrial analysis andresearch services, design and development of comput-er hardware and software, and legal services.

Class 43 – for foods and beverages, in addition totemporary accommodation services.

Class 44 – for medical, veterinary, beauty care,hygiene, agriculture and forestry services.

Class 45 – for personal and social services renderedby others to meet the needs of individuals, as well as

security services for the protection of property andindividuals.

As of February 25, 2002, 64 member countries ofthe Nice Agreement and 9 nonmember countries fol-low this new edition. However, since nonmembercountries are allowed to adapt the new classificationsystem to their own legal systems without joining theNice Agreement, many more may follow.

In order to keep track of subscribing countries,INTA’s Classification Subcommittee, under the lead-ership of Sandrine Peters from Gevers & Partners inBelgium has created a table that details specifics foreach country under the Agreement. The table will beperiodically updated and can be found on theMembers Only Site at www.inta.org. Questions onthe Agreement may also be sent to InternationalGovernment Relations Coordinator ChehrazadeChemcham at cchemcham@inta.org.

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In Your Ear!Trademarking a sound mark requires more than a good ear for music.

BY CANDIDA J. HINTON, KAY &BOOSE, New York City, USA

THE TARZAN YELL , the MerrieMelodies Theme, the sound of afinger swiping a dish and the spo-ken word "boing" ... are all regis-tered sound marks in various juris-dictions. Where do they stick the®? In your ear!

Sound marks may function asany trademark or service mark,that is, as source identifiers forgoods and/or services in com-merce. Nobel Prize winner and sci-entist Ivan Pavlov found that dogssalivating at the sound of a bell areabout more than conditionedreflex. His studies illustrated use ofa sound (a ringing bell) for diningservices (providing dog food) indi-cating himself (Pavlov) as thesource of the services. Pavlov’sfamous studies suggest that soundmarks may even be superior to

word marks among certain audi-ences, since the mark is perceivedaurally rather than visually.

Sound marks have been in prac-tical use since the first drum signalwas sent from village to village.The U.S. Patent and TrademarkOffice (USPTO) began registeringunconventional sound marks morethan 50 years ago. In 1950, theNational Broadcasting Company(NBC) obtained U.S. Reg. No.0523616, a sound mark, for radiobroadcast services. The mark sub-sequently expired, and in 1971,NBC obtained U.S. Reg. No.0916552 for "3 chime like notes"to identify broadcasting services.

The mark is used between televi-sion shows to identify the station.

Although sound mark registra-tion is not available globally, inter-national branding for companiessuch as Deutsch Telekom, Nokia,Yahoo! and Intel include registra-tion of sound marks in multiplejurisdictions. Deutsche TelekomAG of Germany has registered its“five note musical score” in theUnited States (Reg. No.2,459,405), New Zealand (Reg.No. 649629) and Germany. The“five-tone” Intel Corporationsound is registered in the UnitedStates, Australia and New Zealand.

Sound marks can be entertain -ing, tickling a funny bone thatconventional marks may miss alto-gether. The Minnesota StateLottery, in the United States, isusing, and has filed an application(U.S. S/N 76/077221) to register

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INTA Bulletin • April 1, 2002 Vol. 57, No. 72

BY SUSAN SANTANIELLO,GOTTLIEB, RACKMAN & REISMAN,P.C., New York, New York, USA

ON FEBRUARY 28-29, 2002, INTAheld its second Trademarks inBusiness Transactions Forum atNew York City’s Marriott MarquisHotel. More than 120 attendeesfrom several different countriesattended the forum, which focusedon an important topic that is oftenonly one of several discussed atother legal conferences.

The forum opened with a pre-sentation of a fictional fact pattern.Two companies, CitrusComputers, Inc. and AmericanTelevision Company, were negoti-ating a transaction to combinetheir companies and consolidatebusinesses for the product line“PCTV” in the United States. Theinitial presentations included role-playing between CitrusComputers’ CEO and his in-houseand outside counsel. The lawyersqueried the CEO about the detailsof the transaction and then talkedabout how business transactionswork from a legal perspective.

Although the role-playing wasskillfully performed, some atten-dees said that this part of theforum seemed “too basic” for expe-rienced practitioners and com-mented that they would have pre-ferred to get to the heart of theprogram more quickly. The rest ofthe forum, which closely examinedthe many levels of a business trans-action, satisfied their expectations.

For example, one forum panelfocused on security interests. Thespeakers were Baila Celedonia, apartner at New York City’s Cowan,Liebowitz & Latman, andProfessor Raymond T. Nimmer of

the University of Houston, authorof the well-known treatise Nimmeron Copyright. “Professor Nimmer’sknowledge of secured transactionsand bankruptcy issues was particu -larly wide-ranging, yet happilygrounded in real world situations,”said attendee Jamie JohnsonFitzgerald, partner of Cummings& Lockwood in Connecticut. “Hisremarks and materials alone wereworth the price of admission, andthat is not to slight the other pan-elists at all.”

Forum attendees looked at the“big picture” of business transac-tions from many different aspects,including licensing, security inter-ests, and negotiation of the acqui-sition agreement. In addition, theyhad an opportunity to considersome transactional elements withwhich they are not often involved,such as valuation and restructur-ing.

Many attendees commentedthat some of the panels covered somuch information on a given topicthat any of them could easily havebeen the subject of a full-day ses-sion. “Most of us could probablybenefit from a full day’s programon trademark aspects of securedtransactions,” said Ms. Fitzgerald,“and also one on the bankruptcycode’s effect on the scope forassignment of trademark licenses.”

The course materials were virtu-ally a primer on business transac-tions and are likely to serve asvaluable reference materials for theattendees. A Brazilian attorneysummed up the forum by saying,“These smaller INTA forums areas valuable to me as the AnnualMeeting, both in terms of net-working and educational content.”

ASSOCIATION NewsBusiness Transactions ForumBrings “Real” Practice to Life

INTA Holds SecondRoundtable inUzbekistanBY NAERAN RUBIO, INTA, New York, New York, USA

REPRESENTATIVES FROM LOCAL COMPANIES, Patent Officestaff, IP attorneys and representatives from local newspapersgathered on February 25, 2002, for an INTA Roundtable,held in the Uzbek Patent Office in Tashkent, Uzbekistan.

The president of the Uzbek Patent Office, Akil Azimov, andExamination Department head, Valentina Yermolayeva, beganthe meeting with a few introductory remarks. Dr. Nicolai vonFüner, of von Füner Ebbinghaus Finck Hano in Munich,Germany, then gave a presentation, which compared the pro-visions of the Uzbek Trademark Law with the practice of theGerman Patent and Trademark Office and the Office forHarmonization of the Internal Market (OHIM).

The lecture and discussions that ensued covered a widerange of trademark policy topics, ranging from unconvention-al marks, such as color and sound, to issues surroundingappellations of origin and conflicts between trademarks anddomain names.

Because the new Uzbek Trademark Law was created withUzbekistan’s intention to join the World Trade Organization(WTO) in mind, special emphasis was placed on the Trade-Related Aspects of Intellectual Property Rights (TRIPS)Agreement policies for geographical indications, includingappellations of origin.

To resolve potential conflicts between trademarks anddomain names and help set a uniform practice standard,examples were given from the World Intellectual PropertyOrganization’s (WIPO) “Proposed Joint RecommendationConcerning the Protection of Marks and Other IndustrialProperty Rights in Signs on the Internet” and WIPO’sArbitration and Mediation Center.

Examination and opposition procedures were discussed indetail with an emphasis on both relative and absolute groundsto opposition. Relative grounds to opposition include similari-ty of goods, services, and marks, phonetic criteria and visualand semantic similarity, while distinctiveness and descriptive-ness are deemed to be absolute qualities.

Ancient city of Khiva,Uzbekistan

photo courtesy of:http://uzland.narod.ru/images/images.htm.

April 1, 2002 Vol. 57, No. 7 • INTA Bulletin 3

Battling for theBrandBY CANDIDA J. HINTON, KAY & BOOSE LLP,New York City, New York, USA

INTA AND THE Brand Names EducationFoundation (BNEF) jointly presented “TheBattle For The Brand: An AdvancedSymposium on Trademarks and Marketing”at the New York City Millennium Hotel onFebruary 28 and March 1, 2002. The subjectmatter drew attendees from as far away asBrazil, Australia and Singapore and includedan audience of various sectors of the academ-ic, business, and legal communities.

The symposium was developed to address“real-life” branding scenarios in which adver-

sarial relationships between business and legalprofessionals are all too common. Participantsarrived with the expectation of learning moreabout trademarks generally and were especial-ly interested in tips on effective brand man-agement.

An impressive roster of speakers outlinedtheories of brand valuation, equity and confu-sion. The speakers also explained “secondarymeaning” and “acquired distinctiveness” butnot in a legalistic trademark sense. Rather,they emphasized the practical associations forconsumers that every successful brand mustdevelop and that lawyers are often called uponto protect.

According to New York UniversityMerchants Council Professor of ConsumerBehavior and Retail Management JacobJacoby, such associations are “about more thancut-and-dried trademarks. Value comes fromthe consumer, and the consumer protects thefranchise.” He added that this concept couldbe foreign to some trademark practitioners.“Lawyers are not trained in social science. Forthem this is terra incognita.”

There were limited question-and-answerperiods after each presentation; however, someparticipants said that they wished the speakerswere available for further in-depth discussion.And although most legal professionals seemedto enjoy the symposium’s marketing focus,

several attorneys indicated that complex legaland ownership issues involving branding asintellectual property could have been morethoroughly addressed.

Keynote speaker Kevin Roberts, CEO ofthe advertising firm Saatchi & Saatchi, pro-voked and humored attendees with his pre-sentation, “From Lovemarks to Trust Marks.”Mr. Roberts’ combination of showmanshipand rapid-fire, laugh-out-loud commercials—which he used to illustrate his theories onlove, respect and marriage and then to relatethose theories to branding—both informedand entertained the audience.

David Bernstein of Debevoise & Plimpton,expressed his overall delight with the sympo-sium and said that “the energy of the audi-ence and expertise of the panel created syner-gies . . . which is exactly what the brand isabout.” BNEF Chair Dick Troll commendedthe quality and timeliness of the speakers’efforts.

Past chair of BNEF and Special TrademarkCounsel at Bell, Boyd & Lloyd, LLC DoloresK. Hanna, commented that the topics were“well presented and explained clearly the dif-ference between marketing and legal tech-niques, showing how we have the same goalsand can work together.” She added that she thinks future symposia would also beeffective, even if limited to a single day.

Are You Experienced? Experiencing an experiential marketing approach to brands.

BY BRIAN J. WINTERFELDT, DOW, LOHNES & ALBERTSON, PLLC,Washington, DC, USA

ON FEBRUARY 28, Professor and Executive Director of ColumbiaBusiness School’s Center on Global Brand Leadership Bernd H.Schmitt participated in the Battle of the Brand symposium by enlight-ening participants on what he calls experiential brands. Mr. Schmitt isa marketing expert who’s marketing philosophy is focused on the cus-tomer, or rather, on what the customer is focused on.

Mr. Schmitt’s theory, as summarized in his book ExperientialMarketing, instructs marketers to think first about a consumer’s expe-rience with the marketed brand rather than the predefined featuresand benefits of the product itself. Drawing on his observations andinsights into philosophy, phenomenology, psychology, linguistics,sociology, and even neurobiology, he boils marketing down to find-

ing and using stimuli that evoke a desired, positive response in poten-tial customers.

According to Mr. Schmitt, experiences are not self-generated, butinduced. The experiential marketing approach takes advantage of cus-tomers’ previously held preferences and prior dispositions, and focuseson the qualities of the stimulus that allow them to experience thebrand. By thinking strategically about the senses and sensibilities theywant to stimulate, marketers can tailor their branding efforts to generate advertising and promotions with greater appeal.

Mr. Schmitt emphasizes the importance of advertising, but also suggests that marketers use other avenues for branding such as catalogsand the company’s annual reports. Building product presence involvesproduct design and packaging as well as co-branding, product placement, special events, and sponsorship opportunities designed toattract attention and new users to the brand.

Mr. Schmitt puts special emphasis on the value of salespeople andcompany representatives, who can be powerful providers of all of the

Kevin Roberts, CEOof Saatchi &

Saatchi, gives astimulating presenta-

tion on the dynamicbetween brands and

consumer love.

CONTINUED ON PAGE 6

INTA Bulletin • April 1, 2002 Vol. 57, No. 74

Law+Practice

ESTONIA

New Import andExport Act Comes IntoForceThe Estonian Parliament haspassed an act titled “ThePrevention of Import andExport of Goods InfringingIntellectual Property Rights.”This act came into force onSeptember 1, 2001.

According to this act, a trade-mark owner may submit a writ-ten general request to customsinspectors to preventexport/import of infringinggoods without the necessity forcustoms inspectors to contactthe trademark owner each timethey find suspicious products.This general request is valid forup to two years and there are noofficial fees for submitting thisrequest.

The act provides trademarkowners with better opportunitiesfor the enforcement of theirtrademark rights, since prior tothis act, customs procedureswere inconsistent and dependedon the recognition of infringingtrademarks and the knowledgeof the customs officers

Source: Käosaar & Co, Patent andTrademark Agency, Tartu, Estonia;Verifier: Davor Boskovic, Producta Ltd.,Zagreb, Croatia

GERMANY

Several Meanings toIndicateDistinctivenessThe Federal Supreme Court ofGermany (FSC) rendered a

decision on the registrability ofthe trademark applicationLOOK, for “raw tobacco, ciga-rettes, tobacco products, ciga-rette paper and smokers’ arti-cles.” The FSC had to decide onan appeal lodged by the appli-cant of the trademark applica-tion LOOK against a decision ofthe German Federal PatentCourt (FPC). The FPC hadruled that the application for thetrademark LOOK did not havea distinctive character. It arguedthat LOOK is primarily under-stood as an advertising catch-word and an invitation to lookat the goods. The fact that theEnglish word LOOK has severalmeanings in the German lan-guage, such as the imperativeform of the verb “look,” or thewords for “fashion,” “fashion-style,” “design” and “appear-ance,” were not considered.

The FSC overruled this deci-sion pointing out that the pres-ence of several meanings sug-gests distinctive character. TheFSC also confirmed its earlieropinion that there is no reasonto require a greater degree of dis-tinctiveness for advertisingcatchwords than that applied forother trademarks. Therefore, thetrademark LOOK was deemedto have sufficient distinctivecharacter for the goods in question. The case was returnedto the FPC for further examination.

Source: Dr. Martin Tongbhoyai,Patentanwaelte Freischem, Cologne,Germany; Verifier: Dr. Roberto Kunz-Hallstein, Offices of Dr. Kunz-Hallstein,Munich, Germany

MACEDONIA

Madrid ProtocolRatifiedThe Parliament of the Republicof Macedonia passed a law, onJanuary 23, 2002, for the ratifi-cation of the Madrid Protocol(Protocol) and the StrasbourgAgreement for InternationalClassification of Patents.Notification of this legislationwas published in the OfficialGazette No. 12/2002–International Agreements.

After a three-year considera-tion period, Macedonia willbecome a party to the Protocol.The instrument of ratification ofthe Protocol will be deposited tothe director general of the WorldIntellectual PropertyOrganization (WIPO) in thenear future.

Source: Official Gazette of theRepublic of Macedonia (No.12/2002 -International Agreements); Verifier:Valentin Pepeljugoski, PepeljugoskiLaw Office & Intellectual PropertyBureau, Skopje, Macedonia

NIGERIA

Intellectual PropertyCommission ProposedNigeria’s ad hoc “Inter-Ministerial Committee on theEstablishment of the IntellectualProperty Commission” submit-ted a report to the Minister ofCommerce on July 9, 2001, ona draft bill for the establishmentof an Intellectual PropertyCommission. The bill seeks tomerge the administration of alllaws relating to intellectual prop-

erty into a single autonomousstatutory entity embodyingdirectorates and registries.

Consequently, the TrademarksRegistry, the Patents andDesigns Registry and theNational CopyrightCommission would cease toexist, and will be replaced by theproposed Commission.

Although legislative action isyet to commence on the draftbill, it is currently receivingcomments from trade andindustry groups.

The bill further proposes thatthe commission shall, inter alia:• Supervise the administration

of the law relating to intellec-tual property rights andensure rapid and coordinateddevelopment of intellectualproperty rights;

• Do all such things as are nec-essary to carry out the provi-sion of all laws relating tointellectual property matters;

• Monitor and superviseNigeria’s position in relation tointernational conventions andadvise the government thereon;

• Advise on terms and condi-tions for the conclusion ofbilateral and multilateral agree-ments between Nigeria andany other country or organiza-tion with respect to intellectuallaw or administration;

• Enlighten and inform the pub-lic on matters relating to intel-lectual property; and

• Maintain an effective intellec-tual property documentationand information center.

April 1, 2002 Vol. 57, No. 7 • INTA Bulletin 5

infringed Agrecol’s rights deriv-ing from registration of thetrademark BIOHUMUS forte.The court of first instance dis-missed the claim, deciding thatthe trademark BIOHUMUSforte is a generic designation andit does not distinguish goodsdesignated with the term.

The court of second instanceoverturned the decision andordered Eco-Darpol to stopusing the trademark BIOHU-MUS in respect of manures forplants and to publish the deci-sion in Rzeczpospolita. The courtdecided that the BIOHUMUSdesignation was the essentialpart of a proprietary trademarkand was used illegally to confusepotential customers of the originof goods.

The Supreme Court exam-ined the request for cessation,annulled the decision issued bythe court of second instance anddecided to reexamine the matter.The main argument was thatthe court of second instance didnot determine whether the sub-ject of the conflict was a genericdesignation or not.

Source: Rzeczpospolita, January 4,2002, The Polish Patent Office,Warsaw, Poland; Verifier: WojciechWlodarczyk, Catholic University ofLublin, Poland; Case No. ICKN1440/00

UNITED ARABEMIRATES

New Classification of Goods & ServicesAdoptedOn January 1, 2002, theMinistry of Commerce issued

resolution no. 165 of 2001 forthe addition of supplementaryclasses to the international classi-fication of goods and services,bringing the total to 45 classes.According to the newly-intro-duced order, existing class 42will be divided into four classes.(See front page article of thisissue for details.)

The amendment toMinisterial Decree No. 6, pro-mulgated in 1993, follows anearlier announcement by WIPOregarding 8th Edition of theNice Classification System.

Source: Hisham Zahr, Saba & Co,Beirut, Lebanon; Verifier: Wadad AlAzhari, Wadad Al Azhari Law Offices,Dubai, United Arab Emirates

UNITED STATES

Registration Schedulefor “.us” DomainAnnouncedOn February 12, 2002, NeuStar,Inc., the organization designatedby the Department ofCommerce to administer thenew “.us” country code top-leveldomain (usTLD), announced itsofficial registration schedule in apress release appearing on itswebsite www.neustar.us. Neustarbills this new usTLD as“America’s Internet Address.”The usTLD is open to any U.S.citizen or resident, business ororganization (including govern-ment entities) with a bona fidepresence in the United States. Acomplete list of the registranteligibility requirements is postedon the NeuStar website.

The general public will be

able to register domain namesusing the usTLD with .us-accredited companies beginningApril 24, 2002. A list of currentcompanies that have applied foraccreditation to make .us namesavailable to the general publicis provided on the NeuStarwebsite.

However, from March 4through April 9, 2002 a prereg-istration process will be availableto qualified applicants. This pre-registration phase, called the“Sunrise Period,” is limited toentities wishing to registerdomains comprised of trade-marks that are the subject ofeither a U.S. registration or aU.S. application pending as ofJuly 27, 2001. In the event thatdifferent entities with rights inthe same trademark apply forthe same “.us” domain name,NeuStar will award the domainname to one of the applicantsthrough a random selectionprocess. This procedure will takeplace between April 10 andApril 23, 2002. Thereafter, the“.us” domain name will be opento the public on a first-come,first-served basis.

There is no fee to apply toreserve a “.us” domain nameduring the Sunrise Period.However, final registration willnot be processed until all feeshave been paid. Sunrise Periodregistrations will only be accept-ed for terms of at least five years.

Source: Jennifer Van Kirk, Lewis andRoca, LLP, Phoenix, Arizona, USA;Verifier: Sandra Scavo, Fitch, Even,Tabin & Flannery, Chicago, Illinois, USA

The committee’s report alsoincludes far-reaching recommen-dations aimed at prompt publi-cation of The TrademarksJournal, which has been pub-lished irregularly due to certainbureaucratic delays and fundingissues. The committee specifical-ly urged the government toundertake a review of local intel-lectual property legislation inorder to comply with the TradeRelated Aspects of IntellectualProperty Rights (TRIPS)Agreement.

Source: Abimbola O. Ogunbanjo, ChrisOgunbanjo & Co., Lagos, Nigeria;Verifier: Festus Fenuyi, FormerRegistrar of Trademarks, Patents &Designs, Lagos, Nigeria

POLAND

The Protection ofWord and DeviceTrademarksContaining a GenericName On December 20, 2001, thePolish Supreme Court decidedthat if a word and device trade-mark registered with the PolishPatent Office covers a genericname, the generic designationwill not be protected.

In December 1994, the PolishPatent Office registered a wordand device trademark BIOHU-MUS forte in the name ofAgrecol in respect of naturalhumus and mineral manure forplants produced by Californianearth-worms (Lumbricus).

The company demanded thatEco-Darpol stop the use of thetrademark BIOHUMUS it

different kinds of experience that a marketer wants consumers toencounter. He also notes the special value and the unique attributes ofbrand names and logos in creating an image for the product or com-pany concerned, and points to the power of websites to deliver newexperiences to people visiting a company online.

One challenge for experiential marketing practitioners is to contin-ue delivering the right kinds of experiences to customers whoseimpressions of the brand will continue to grow and evolve.Experiences can be described as complex, emerging structures. Peopleperpetually alter their opinions based on new inputs, and could possi-bly become bored if not given the chance to experience somethingnew. Mr. Schmitt advises brand managers to concentrate on the seriesof experiences they want to facilitate instead of any single experiencethey might provide.

INTA Bulletin • April 1, 2002 Vol. 57, No. 76

Are You Experienced? CONTINUED FROM PAGE 3

Date: May 18-19, 2002

Location: Renaissance Washington, DC Hotel

Congressional Hall A, Washington, DC, USA

Registration Information:

www.inta.org/annual/2002/students.html

Contact: Heather Ann Sweeney, INTA Membership Manager,

by phone: +1 (212) 642-1727 or email

hsweeney@inta.org

Students that seek a J.D. degree or an LL. M. in intellectual property, attend all sessions in thetwo-day period and satisfactorily complete the take home exam, may apply the credit toward grad-uation at most law schools.

Attention IP LawStudents, SummerAssociates and Interns

For the second year, the InternationalTrademark Association (INTA) and The JohnMarshal Law School Center for IntellectualProperty in Chicago will offer a one-creditcourse on International Trademark Law andPractice. Students who attend this coursewill receive free admission to all educational sessions at INTA’s 124th Annual Meeting.

The course’s faculty, composed of professorsand practitioners of trademark law from various jurisdictions around the world,follows the syllabus currently in use at theLL.M. program at The John Marshall LawSchool for its introductory course inInternational Trademark Law.

The course will be held on Saturday, May 18, 2002 from 8:00 a.m.–5:00 p.m. and Sunday, May 19, 2002 from 8:30 a.m.–5:00 p.m., prior to the official startof INTA’s 124th Annual Meeting inWashington, DC, from May 18 - 22, 2002.

DuPont Co. will sell or spin offits core nylon, polyester, andLycra businesses by the end of2003. The first step in shed-ding these traditionally slower-growth product lines will be thecombination of the relevantdivisions into a newly formedsubsidiary. The resultantTextiles and Interiors unit willhave roughly US $6.5 billion inannual sales, and will continueto reap the benefits of avail-able cost synergies in thefibers production business.

Andrew Corp. will purchaseCeliant Corp., which was soldoff by Lucent TechnologiesInc. last year. Andrew willbecome the world’s largestindependent supplier of wire-less power amplifiers, whichwork to strengthen the signalsthat wireless handsets receivefrom transmission towers. TheIllinois-based Andrew willreportedly pay $470 million incash and stock to the venturecapital firms that currently con-trol Celiant. Following the deal,these firms will own approxi-mately 17 percent of the stockin the merged company.

Ciena Corp. has agreed toacquire ONI Systems Corp.in a stock deal valued at US$850 million. The mergermay spark further consolida-tion in the overcrowdedtelecommunications equip-ment industry and will bene-fit from the combination ofCiena’s strength in the long-haul optical-networking mar-ket and ONI’s specializationin equipment for metropoli-tan networks.

LVMH Louis Vuitton-MoetHennessey SA, the Frenchluxury goods conglomerate,intends to sell a majoritystake in the auction firmPhillips, de Pury &Luxembourg to an invest-ment group led by Phillipschairman Simon de Pury.LVMH wants to boost itsown stock price by decreas-ing the size of its stake inthe fine-art auction house.

Sources: The Wall Street Journal,February 12, 19, 2002; Editor:Brian J. Winterfeldt, Dow, Lohnes &Albertson, PLLC, Washington, DC,USA

Brand BUYS

April 1, 2002 Vol. 57, No. 7 • INTA Bulletin 7

ON FEBRUARY 22, 2002, the United States Patent & TrademarkOffice (USPTO) presented a forum entitled “The Trademark OfficeGoes eGovernment” at the New York City Public Library to showcasetheir trademark electronic application system (TEAS) to an audienceof local practitioners.

Commissioner for Trademarks Anne H. Chasser outlined the bene-fits of conducting e-commerce in the context of the trademark appli-cation process, including a shortened period of pendency, improvedquality of filings, increased productivity and the elimination of “lost”file wrappers. The Commissioner stated that the primary goal of theoffice is to move away from the current, labor-intensive paper processto “provide world class service in the processing of applications” andto “ensure that business needs are met in a new environment.”

However, this goal rests upon future improvements to the system’scapabilities and the subsequent adoption of TEAS by U.S. trademarkpractitioners as the preferred method of prosecution from start to fin-ish.

Although the goal of the USPTO is to receive 80 percent of its fil-ings and related prosecution online by 2004, exclusive use of TEAS

has not yet been made mandatory. That decision may be announcedat a later date.

Craig Morris, TEAS Project Manager, demonstrated a real-timeTEAS filing, which was followed by a lively question and answer period with the attendees. During the exchange, TEAS limitationsand myths were outlined, and further short-term improvements tothe system were announced. Reactions to the system varied widely.

Several practitioners expressed enthusiasm for the system, citing theease of electronically filing applications that have uniformity of class,goods/services and fees. In contrast, other attendees responded toTEAS with mild curiosity, and expressed concerns regarding the needto file unique trademark applications rendered more labor intensiveby use of TEAS.

TEAS was launched in 1998, making the U.S. Patent &Trademark Office the first intellectual property office anywhere in theworld to engage in electronic commerce, and the first e-commercedriven agency within the U.S. federal government. Stay tuned towww.uspto.gov for further updates.

THE WORLD INTELLECTUAL PROPERTY

Organization (WIPO) has considerablyexpanded its Madrid Express database locatedat http://ipdl.wipo.int/, in order to provide afacility for the free searching of all interna-tional registrations. IPDL represents“Intellectual Property Digital Library,” ofwhich Madrid Express is one component.

There are two levels of access availablewhen logging into the database: guest andaccount. On the guest level, anyone canaccess the database by using the user name“guest” and password “guest,” which are pro-vided as a default.

On the account level, an account can beopened at no charge with minimal informa-tion. The primary difference between theselevels of access seems to be the ability at theaccount level to save a user’s searches.Conveniently, search history appears at thebottom of the search page after the comple-

tion of each search inquiry. This allows theuser to keep track of searches without movingto a different window.

The database includes all internationalregistrations that are currently in force orwhich have expired within the past sixmonths. On February 28, 2002, the site indi-cated that the data was current until February27, 2002. The database also includes unpub-lished applications and subsequent designa-tions, which can be missed in commercialsearches.

To include both applications and registra-tions in a search, one has to change thedefault database from “full” to “both”; in thiscontext “full” means full registration not fullsearch. The structured search page allowssearches in any of the twelve available fields,making it possible to construct complexsearches. For those who want to conduct asimple search, however, there is a link to the

simple search page. The results are initially presented as a list

that can then be construed to include theimage of the mark. The verbal element of themark acts as a hyperlink to all of the storeddata.

In this full format display, which appears ina separate window, the fields are identified bynumeric codes. By passing a mouse over thetop of these codes you will bring up the fielddescription in the bottom bar of the browserwindow. A double click will make it appearin a separate window. An image can becopied and pasted into one’s document byright double clicking.

The database contains information aboutcountries where a trademark has been totallyor partially refused and where only one speci-fication of goods or services is listed.

Verifier: Amanda Laura Nye, King and Spalding,Atlanta, Georgia, USA

USPTO Offers “ExperTEAS”BY CANDIDA J. HINTON, KAY & BOOSE, New York, New York, USA

WIPO Establishes Updated Free Trademark Search Site BY BARBARA E. COOKSON, NABARRO NATHANSON, London, U.K.

World•Update

INTA Bulletin • April 1, 2002 Vol. 57, No. 78

In THE NewsJEEP and HUMMER–Round TwoINTA reported “round I” in theMarch 15, 2001 INTA Bulletin,but the battle for the rights todesign, continued when Daimler-Chrysler, owner of JEEP, askedthe United States District Courtin South Bend, Indiana to tem-porarily bar General Motors(GM) and AM General from sell-ing their “Hummer H2” unlessthey change the Jeep-like grille.The company says the grille, withseven openings, is too similar tothe 60-year-old design of theJEEP.

In opening arguments GMlawyers asked why Daimler-Chrysler hadn’t objected to thesimilar grille of the originalHummer H1. Both sides claim tohave trademarks for their grilles.GM admits that an alternativegrille exists, but said that it wouldcost US $100 million to switchdesigns.

The Hummer H2 is due toreach dealers in July.

Source: “Jeep To Hummer: Wipe ThatGrin Off Your Face,” The Wall StreetJournal, “DaimlerChrysler v. GeneralMotors Jeep and Hummer Go Tooth–toTooth” “INTA Bulletin March 15, 2001”:Editor: Edgardo Bourgoing, Bourgoing,Leon & Lozano, Mexico City, Mexico

BRAWNY Gets aMakeoverGeorgia-Pacific Corp. plans toimprove sales figures for somerecently acquired lines of paperproducts by modernizing thelook of their packaging and

advertising. The company’s strategy for

revamping its BRAWNY brandof paper towels centers on updat-ing the “Brawny Man” logo,which has changed little since itsintroduction in the early 1970’s.The logo will be pulled from theproduct’s packaging for a shorttime, and auto racing legendRichard Petty will stand in for thecharacter on special packages ofthe paper towels.

Meanwhile, Georgia-Pacific’smarketers will work to redesignthe popular icon’s appearance,and will conduct a nationalsearch for a real life Brawny manon whom to model the newdesign. Georgia-Pacific acquiredboth BRAWNY and QUILTEDNORTHERN when it purchasedFort James Corp. in late 2000.

Source: “Brawny’s Lumberjack ManTagged for a Makeover,”The Wall StreetJournal, February 13, 2002; Editor:Brian J. Winterfeldt, Dow, Lohnes &Albertson, PLLC, Washington, DC, USA

Wearing UnlicensedLogos Costly to NFLPlayersThe New England Patriots’ offen-sive lineman, Mike Compton,walked into the Superdome forMedia Day during Super Bowlweek and was promptly facedwith questions from the licensingpolice.

When the players picked outtheir choice of hats from thelocker room before meeting themedia, Mr. Compton (a Nikeendorser) colored over theREEBOK logo with a markingpen, an action for which hereceived a warning. Immediately,Mr. Compton grabbed a newvisor bearing an unalteredREEBOK logo and saved himselfa US $100,000 fine.

In the preseason, Minnesota

Vikings wide receiver RandyMoss, also a Nike endorser, wasfined US $5,000 for crossing outa Reebok logo during a game.

As part of its relationship withReebok, the NFL also included a“90-minute rule,” which specifiedthat players could not sport thecorporate logo of a non-NFLsponsor during post-game inter-views until 90 minutes after thegame. It is reported that thePlayers Association agreed tothe stringent rules because theReebok deal provides as much asUS $1 million per team a year,ultimately helping raise the salarycap.

Ironically, the Patriots are oneof the five teams that are not out-fitted by Reebok. Adidas makesthe Patriots’ jerseys, as well asthose of the San Diego Chargers,San Francisco 49ers, Tampa BayBuccaneers and WashingtonRedskins. It is anticipated thatnext year all 32 teams will be out-fitted by Reebok.

Source: “Unlicensed corporate logoscould prove costly,” www.espn.com,February 6, 2002: Editor: EdgardoBourgoing, Bourgoing, Leon & Lozano,Mexico City, Mexico

Ownership DisputeOver STOLICHNAYA In early March 2002, giant metalcontainers—150 of them—filledwith STOLICHNAYA vodkawere “held hostage” on the docksof Kaliningrad, Russia, underorders from Alexy Gordeev ofthe Russian Ministry ofAgriculture, according toexporter Soyuzplodimport (SPI).The dispute concerns ownershipof the valuable STOLICHNAYAbrand, distributed globally, sinceNovember 2000, by British com-pany Allied Domecq PLC.

SPI claimed ownership ofSTOLICHNAYA when it was

In the News is a compila-tion of articles abouttrademark law and busi-ness, abstracted fromnews publications fromaround the world. Thisissue, trademarks in thenews are:

JEEP GRILLE

BRAWNY

REEBOK

STOLICHNAYA

TUK-TUK

WWF

U.S. auto rac-ing legend

Richard Pettywill be stand-ing in for the

“Brawneyman” while

the logo getsrevamped.

9April 1, 2002 Vol. 57, No. 7 • INTA Bulletin

privatized in 1992. According toSPI’s chairman, Yuri Scheffler,the Russian government affirmedSPI’s trademark rights in 1994.However, Deputy MinisterVladimir Loginov maintains thatthe Russian Agriculture Ministryowns the brand and hasinformed distributors of thisinformation. Moreover, hedenies that any agreement hasbeen reached with any particulardistributor. “No such talks havebeen held and we are not givingany preference to AlliedDomecq,” he said. The Times ofLondon has reported AlliedDomecq as saying that its distri-bution rights are unaffected.

The STOLICHNAYA“hostage crisis” is just the latestround in a legal fight over thebrand that is being waged in sev-eral courts with sometimes con-fusing results. For example, onedecision transferred the brandfrom SPI to the AgricultureMinistry in October 2001 andback again in November.

Meanwhile in Orlando,Florida, USA, the launch ofSTOLICHNAYA CITRONAwas announced to the MillerBrewing National SalesConference on March 6, 2002.The “refreshing blend of citrusand other natural flavors” will bebrewed and distributed in theUnited States by Miller in coop-eration with Allied Domecq.

Source: “Russian Agriculture Ministryto hold talks with foreign sellers,”Interfax, March 4, 2002; “Russians inSpirited Fight over Vodka Name,” TheNew York Daily News, March 5, 2002;Editor: Barbara E. Cookson, NabarroNathanson, London, UK

Tying up the TUK-TUKNameThe Thai government is fightingto gain global control of TUK-

TUK, the name for the three-wheeled motorcycles used astaxis in urban Thailand andcities throughout Asia. TUK-TUK vehicles are so common inThailand that they have becomea national symbol of the country.The government wants to ensurethat the TUK-TUK name isused only on authentic Thaimotorbike products.

Thailand’s Ministry ofCommerce has accused a num-ber of Western companies of ille-gitimately co-opting the TUK-TUK name and reportedlyintends to take legal actionagainst them. Up to now theMinistry’s main target has beenthe British Virgin Islands firmTuk-Tuk International, whichplans to import and trade TUK-TUK vehicles in Thailand.

Because Tuk-Tuk Internationalhas refused Thailand’s request tochange its name, the governmentis preparing to make a formallegal protest, although it has notindicated what channels it willuse. A previous dispute with theBritish firm MMW Imports wasresolved when the Thai govern-ment agreed that the companycould be a legitimate importerand distributor of the motorcy-cles in Europe.

A few Thai firms are planningto increase production of high-quality TUK-TUK vehicles, butit may be too late to reclaim thepopular slang word as a trade-mark. In fact, many trademarkpractitioners believe thatThailand has little chance ofstopping unauthorized uses ofthe TUK-TUK name. Unlikeother common vehicle identi-fiers––JEEP, VESPA, etc—TUK-TUK is arguably not abrand name but rather a genericterm for motorbikes produced in

garages all over Asia. And someThai TUK-TUK dealers, com-plaining that the government’saggressive attitude is relativelyrecent, have questioned why offi-cials ignored for years an issuethat they now claim is a matterof principle.

Source: “Thailand in tuk-tuk tussle,”BBCi, Business News, February 13,2002; Editor: Zhenglong Jiang,Shanghai Patent & Licensing Corp.,Washington, DC, USA

WWF Slammed byWildlife FundThe World WrestlingFederation has lost another boutin its long-running battle withthe nonprofit World WildlifeFund over the right to use themark WWF. England’s Court ofAppeal recently rejected thewrestling federation’s latestattempt to claim the WWF ini-tials common to both organiza-tions.

The London court denied thewrestling federation’s challenge toan injunction, granted in 2001,that gives the nonprofit fundbroad rights to use WWF,although it also accepts thewrestling group’s limited rightsto use the initials in the UnitedStates. The World WildlifeFund—best known for protect-ing endangered species such asthe giant panda—previouslytook legal action against thewrestling group to protect itsglobal brand from an unwantedassociation with the professionalwrestling organization, which is

famous for its colorful characterssuch as “The Rock” and “TheUndertaker.”

The wildlife organization reg-istered WWF as a trademark in1961. Although outside theUnited States it changed itsname in 1989 to World WideFund for Nature, the nonprofitorganization continues to use theWWF mark and its “Panda”logo throughout the world.

Under the terms of a 1994settlement agreement betweenthe two groups, the wrestlingfederation agreed not to useWWF in writing anywhere inthe world and not to use themark orally to sell merchandiseexcept in the United States.However, the wrestling groupargued before the Court ofAppeal that there is no likeli-hood of confusion between thetwo groups and that strictenforcement of the 1994 agree-ment inhibited its right to com-mercial freedom of expressionunder the European Conventionon Human Rights.

Last year an English courtruled that the wrestling federa-tion might make limited use ofthe WWF mark in the UnitedStates, but it also ruled that thewrestling group may no longeruse “wwf.com” as its webaddress. (The nonprofit organi-sation uses “wwf.org” for its web-site.) Estimating that changingits name would cost US $50 mil-lion, the wrestling federation saidthat it plans to appeal the Courtof Appeal’s decision to the Houseof Lords, Britain’s highest appel-late court.

Source: “Pro Wrestling Group LosesCourt Battle over ‘WWF’ Handle,”Associated Press, February 27, 2002;Editor: Patrick J. Gallagher, Fulbright &Jaworski L.L.P., Minneapolis, USA

its sound mark for lottery ser-vices. The application states,“The mark is the sound of a wildloon provided in one or moreshort bursts, either alone or withbackground music at the end ofan oral presentation on radio ortelevision advertising the lotteryservices.”

Sound marks can be cleverand informative. Unilever, PLCof the United Kingdom ownsNew Zealand Reg. No. 247094which is "a squeak produced bythe friction of thumb or forefin-ger on dishware” for hand dish-washing products. The marksuggests your dishes will besqueaky clean if you useUnilever’s product.

Sound marks can becomefamous. Time WarnerEntertainment Company’sMerrie Melodies Theme was reg-istered in July 2001 (U.S. Reg.2,473,248). This score has beenused in the soundtrack for theLooney Toons cartoon series forseveral generations. Young view-ers associate the theme with BugsBunny, Road Runner, Sylvesterand Tweety, et al. and adults rec-ognize the mark as a cue to headfor the kitchen instead of theremote. The famous mark hasestablished goodwill and carries areputation for suitable children’sprogramming. Interestingly, theMerrie Melodies sound markbecame famous while protectedby copyright for “animatedmotion pictures” and now enjoysoverlapping trademark protec-tion. Although the copyrightterm will eventually expire nowthat the sound mark is registered,some type of perpetual right maybe enjoyed, provided the mark ismaintained by use in commerce.

Filing Sound MarkApplicationsWhere available, the sound markapplication process is the same asfor traditional trademarks andservice marks. In the UnitedStates, sound mark applicationsmust undergo the usual substan-tive examination process. Thedrawing requirement, however, iswaived and a description of themark is required in its place.Applications to register soundmarks may be filed on an intent-to-use basis, 44(d) or (e) basis,and office actions will be issuedduring the examination phase.The applications are publishedfor opposition and specimensmust be reviewed and acceptedprior to the issuance of a registra-tion certificate.

Searching Sound MarksWhen searching sound marks itis important to interpret the ter-minology that the registry uses tolabel its unconventional marks.The USPTO uses mark drawingcode “6” to uniformly labelsound marks in the database.The “6” indicates that there is nodrawing of the mark because themark is not perceived visually.Other handy search terms forsound marks are likely to befound in the mark descriptions.Thus terms such as “sound”“spoken” or “notes” would alsouncover these marks. TheIntellectual Property Office ofNew Zealand uniformly labelssound marks “representationonly” and the AustraliaIntellectual Property Office labelsmarks by type, indicating“sound.” In the Australian trade-mark registry, sound marks aretitled, and the terms “sproing,”“Yahoo!,” “yodeled” or “tune”appear with the indication thatthe mark is a “sound.”

There are several pitfalls that

the searcher must avoid. A soundmark within a registry may con-tain an aural element that is notdisclosed in the title of the markbut is important to the result.For example, Unilever’s squeakmark is not identified by a wordin the title. The title of the markis “representation only.”Hypothetically, disclosure of thismark may be desired in a searchof the term “squeak” as a wordmark, but the sensory “squeak”mark would not be disclosed inan exact title search. Some reg-istries accept combined sound-word marks but refer primarilyto the sensory nature of themark. A mark having “words setto music” may be recorded as asensory mark and in order tofind out what the word compo-nent of the mark is, one wouldhave to search the description ofthe mark to avoid potential con -flicts.

Aural to Visual TranslationIssuesSound mark registration is prob-lematic in two areas. First, reduc-tion of a sensory mark to a writ-ten description may lead to animpression of the mark. Whilefamous sound marks or “spoken”word marks will overcome thisdifficulty, the simple listing ofnames of musical notes does notprovide enough sensory informa-tion to experience the mark. Forexample, “the sound of thefamous Tarzan yell” U.S. Reg.No. 2,210,506 owned by EdgarRice Burroughs, Inc. of theUnited States is described in theregistry as the “famous Tarzanyell” followed by the exact nameof the notes and pitches compris-ing the mark. Anyone who hasseen a Tarzan movie will remem-ber the experience of the markand the detail of the note namesand pitches are a curiosity which

adds nothing to the sensation ofthe mark. Conversely, anyonewho has not been exposed to themark could read the lengthydescription and wonder how anyhuman being could “yell” somany notes.

Second, some registries accepta musical score of the mark andprovide an image of the score inthe database in addition to, orinstead of, a written descriptionof the mark. If a sound mark hasbeen registered by music nota-tion without a listing of the notepattern, the mark lacks meaning,particularly if the mark is notfamous. In addition, those whodo not read music will be at aloss. Fortunately, obtaining a filewrapper for the mark thatincludes specimens of use is oneway to verify the mark.

Technology Driven SoundMarks

New technology is providingincreased opportunities for trade-mark owners to use soundmarks. Cell phones are poweredon and off with vibration, logos,and sounds to provide consumerswith the brand name, serviceprovider and equipment model.Newer cell phones are equippedwith game software, turningwireless units into hand-heldcomputer devices complete withsound effects. Banner ads, whichhave quickly become an Internetstaple, may someday infiltratewireless technology in the formof sound marks. Perhaps theexpanded use of unconventionalsound marks in wireless tech-nology and the Internet willincrease the demand for globalregistration of sound marks asintellectual property.

Sources: John Hacket, AJ Park,Auckland, New Zealand; Tim Golder,Allens Arthur Robinson, Melbourne,Australia

In Your Ear!CONTINUED FROM PAGE 1

INTA Bulletin • April 1, 2002 Vol. 57, No. 710

11

onTHEMove

Trademark Management Programming Subcommittee

Encouraging INTA’s TrademarkManagersBY SEANA H. SMITH, KING & SPALDING, New York, New York, USA

IN MANY COUNTRIES, lawyers or trade-mark agents obtain registrations fortrademark owners. However, the com-plex task of maintaining such registra-tions is often assigned to “trademarkmanagers,” professionals who usuallywork in-house, although many lawfirms also employ them. Trademarkmanagers bear the burden of guarantee-ing the continued existence of hard-wontrademark registrations by docketingmaintenance events and dates (manynon-extendable) and then followingthrough to ensure that required actionsare taken correctly and in a timely man-ner. Moreover, in their “spare” time,trademark managers perform manyother important tasks related to protect-ing the marks, both registered andunregistered, under their care.

Similarly, the TrademarkManagement ProgrammingSubcommittee is charged with lookingafter the trademark managers who aremembers of INTA and encouragingthem to participate in the numerousand varied opportunities that INTA hasto offer. In addition, the subcommitteedevelops programs tailored specificallyfor trademark managers and promotesrecognition of their valuable contribu-tions among all of INTA’s members.

This very productive subcommittee,chaired by Cindy McKeehan ofAnheuser Busch Companies, Inc., hasgenerated many resourceful ways to gar-ner evaluate and address the needs—andthe wants—of trademark managers.Through its biannual “satisfaction sur-vey,” the subcommittee tracks the view-points of legal assistants and paralegalson several issues, including professionalfulfillment and attendance at INTAroundtables and other meetings. The

ultimate goal of the satisfaction survey isto determine how best to improve thelevel of support that INTA provides totrademark managers. In alternate yearsthe subcommittee surveys trademarkmanagers to monitor trends in compen-sation.

The subcommittee’s members arevery active in initiating and producinginteractive roundtables topically gearedtoward trademark managers. The sub-committee usually arranges roundtablestwice a year—in February/March andOctober/November—and is currentlylooking for volunteer hosts to add to thelist of cities in which the roundtables areheld. In addition, the subcommittee isresponsible for the TrademarkAdministrators Brunch, a very popularand much-anticipated event at eachINTA Annual Meeting. This year thetopic discussed during brunch will be“War Stories from the TrademarkFront,” which will give the attendees achance to share “lessons learned” as wellas humorous anecdotes.

The subcommittee also plays a keyrole in producing INTA’s popularTrademark Administrators Forum, nowheld each year in October. This event,which continues to grow in size andreputation, has two “tracks,” one forbeginners and another for moreadvanced practitioners, to eliminateredundant presentations and encouragerepeat attendance. The 2000 forum inWashington, DC, attracted more than700 participants. The tragic events ofSeptember 11 in the United States,understandably resulted in lower atten-dance at the 2001 Forum in Chicago.However, Ms. McKeehan believes thatthe 2002 Forum in Washington, DC,will be as successful as ever.

COMMITTEE Comments

The subcommittee

develops programs

tailored specifically

for trademark

managers and

promotes recognition

of their valuable

contributions

among all of

INTA’s members.

CINDY MCKEEHANChairANHEUSER BUSCH

COMPANIES, INC.

April 1, 2002 Vol. 57, No. 7 • INTA Bulletin

Alan Potter has joinedSimpson Grierson inAuckland, NewZealand, as a partner.

Cristina Cazzetta, for-merly of Notarbartolo& Gervasi S.p.A., hasjoined Porta, Checcacci& Associati S.p.A inMilan, Italy.

Theodore Max, former-ly a litigation partner atPhilips Nizer BenjaminKrim & Ballon LLP, hasjoined Mintz, Levin,Cohn, Ferris, Glovskyand Popeo, P.C. as apartner. CharlesLeGrand, also formerlyof Philips NizerBenjamin Krim &Ballon LLP, has joinedMintz, Levin, Cohn,Ferris, Glovsky andPopeo, P.C. as an asso-ciate.

Correction: In BulletinVolume 57, Issue 6,we mistakenly reportedthat Elliot Basner hadjoined Darby & Darbyin New York City. Mr.Basner has, in fact,left Darby & Darby tojoin Diageo NorthAmerica, Inc. INTAregrets the error.

On The Move helps INTAmembers keep track oftheir colleagues as theychange workplaces. Thiscolumn does notannounce mergers oracquisitions. To submitan item for “On theMove,” send an email to bulletin@inta.org.

By Thomas P. Arden

THIS TIMELY TREATMENT

tracks both development of theregistration and prosecution of nontraditional marks in the U.S. Patent & TrademarkOffice, and challenges to theirvalidity in the courts.

Addressed are:• Applicable procedural and

evidentiary matters that oftenarise in litigation, including effective proof of distinctiveness;available grounds to challengenontraditional marks; burdens of proof; and evidence of third-party use;

• Considerations and issuesunique to nontraditional

marks, such as proper iden-tification; functionality andpatent/public domain doc-trines; acquired distinctive-ness standards; and dilutionprotection;

• Decisions of the TTAB,Federal Courts, and U.S.

Supreme Court, including theWal-Mart opinion and pend-ing Traffix Devices case;

• USPTO practice concerningeach type of nontraditionalmark and authority for regis-tering them;

• Also included in a five-part

Appendix are excerpts ofpages from editions of theOfficial Gazette of the USPTOshowing published productdesign, color, scent, sound,and motion marks.

$69.95 Members $83.95 Non-Members2000 272 pagesPaperback Practice SeriesISBN 0-939190-43-5

Protection ofNontraditional MarksTrademark Rights in Sounds,Scents, Colors, Motions andProduct Designs in the U.S.

INTA Bulletin • April 1, 2002 Vol. 57, No. 712

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Tel: +1 212.768.9887 Fax: +1 212.768.7796

www.inta.org

International Trademark Association

INTA BULLETIN EDITORIAL BOARD

Olga M. NedeltscheffEditor-in-Chief

Philip Morris International Management S.A.Lausanne, Switzerland

Trevor Stevens Associate Editor

Davies Collison Cave, Sydney, Australia

Theodore Lienesch Executive Editor, Law & Practice: The Americas

Thompson Hine LLP Dayton, Ohio, USA

Simon Page Executive Editor, Law & Practice: Europe, Middle

EastSchneider Page, London, U.K.

Kay RickelmanExecutive Editor, Law & Practice: Asia, Africa

Spoor & Fisher, Pretoria, South Africa

Mary DeLongisExecutive Editor, FeaturesDiageo North America Inc. Stamford, Connecticut USA

Tim LockhartExecutive Editor, Features

Hogan & Hartson LLP, McLean, Virginia USA

Naeran RubioManaging Editor, INTA, New York City, USA

Elaine CzachAssistant Editor, INTA, New York City, USA

To reach an INTA department by email, please contact:

Executive Director: executivedirector@inta.org

The Trademark Reporter®: tmr@inta.org

The INTA Bulletin: bulletin@inta.org

Public Relations: publicrelations@inta.org

Administration & Finance: adminfinance@inta.org

Meetings: meetings@inta.org

Publications: publications@inta.org

Communications: communications@inta.org

Membership: membershipmanager@inta.org

Customer Service: customerservice@inta.org

Job Bank: jobbank@inta.org

TM Affairs & Policies: tmaffairs@inta.org

Brand Names Education Foundation:bnef@inta.org

Trademark Practice in China and BeyondApril 8--April 9, 2002Pudong Shangri-La,Shanghai, China

U.S. RoundtablesTopic: TrademarkSurveysApril 8–April 19, 2002Multiple Locations

InternationalRoundtableTopic: Trademarks forRetail ServicesApril 25, 2002Munich, Germany

124th Annual MeetingMay 18–May 22, 2002Washington, DC, USA

Trademark TrialAdvocacy WorkshopJune 25–June 29, 2002Atlanta, Georgia, USA

For more informationlog on to the INTA website atwww.inta.org or callCustomer Service at +1 (212) 768-9887, Ext 157.

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© 2002 International Trademark Association

Although every effort has been made to verify theaccuracy of items carried in this bulletin, readers areurged to check independently on matters of specificconcern or interest.

The INTA Bulletin primarily relies on members of theINTA Bulletin Committee and staff for content butaccepts submissions from others. The INTA Bulletinreserves the right to make, in its sole discretion, edi-torial changes to any item offered to it for publication.