Bulletin

IN THIS ISSUE NOV 15, 2002

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FEATURE ARTICLE Distinctive Shapes

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COMMITTEE COMMENTS

THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 57, NO. 21

Distinctive Shapes

Academic Institution Recruitment Subcommittee

When are they protected? BY MARK HOLAH, FIELD FISHER WATERHOUSE, London, UK MOST TRADEMARK PRACTITIONERS recognize that a shape can function as a trademark. Some of the best-known trademarks are threedimensional: the triangular configuration of the TOBLERONE chocolate bar, the curves of the COCA-COLA bottle, Apple’s IMAC computer and Volkswagon’s BEETLE car, to name but a few.

INTA believes that any protection given to a three-dimensional shape through other intellectual property rights should have no bearing on whether that shape can be protected as a trademark. Despite the plethora of distinctive shapes in the market, there are still many countries where it is very difficult, and in some cases impossible, to register threedimensional trademarks. The most frequent argument against allowing the registration of

INTA BULLETIN BOARD

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three-dimensional trademarks is that it would allow elements that are already protected by other intellectual property rights (in particular patents and designs) to have that protection extended indefinitely. However, it can be difficult to justify why a shape should not be protected by multiple intellectual property rights. INTA supports the protection of three-dimensional marks and in 1997, INTA’s board of directors passed a resolution stating that, in appropriate circumstances, threedimensional marks should be protected. INTA believes that any protection given to a three-dimensional shape through other intellectual property rights should have no bearing on whether that shape can be protected as a trademark. The international community

remains divided as to how to deal with shape trademarks. Most of the main international treaties have avoided the inclusion of specific rules relating to threedimensional marks. Shapes are within the scope of the Trademark Law Treaty (TLT) only insofar as as they are within the laws of the signatory countries. Shapes are not referred to specifically in the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, though three-dimensional marks probably fit within the definition of what can be registered. It has also been argued that three-dimensional marks cannot be protected under the Paris Convention as wellknown trademarks, as such marks were not considered when Article CONTINUED ON PAGE

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LAW AND PRACTICE AUSTRALIA Domain Name Service Providers Subject to Greater Control IRAN IP Trends from 1997 to 2001 KOREA Patent Court Decides MEGA-PASS Mark is Descriptive MAURITIUS The Patents, Industrial Designs and Trademarks Act 2002 PERU Trademark Registration Denied Due to Bad Faith of Applicant UNITED ARAB EMIRATES New Federal Trademark Law No. 8 of 2002

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IN

THE

NEWS

Shaolin Monks Fight Back

U.S. President Signs Bill for Madrid Protocol ON NOVEMBER 2, 2002, THE UNITED STATES President, George W. Bush, signed H.R. 2215 – the 21st Century Department of Justice Appropriations Authorizations Act. The new bill will allow the United States to become a part of the Madrid Protocol treaty, which provides a “one-stop” filing mechanism for the international registration of trademarks. The implementing legislation gives the Administration at least one year to promulgate the

U.S. Patent and Trademark Office (USPTO) rules for Madrid applications and registrations. If all goes well and once the U.S. deposits its instrument of accession with the World Intellectual Property Organization, the U.S. could become a contracting party to the Madrid Protocol by this time next year. To find out more about the treaty and its history, visit www.inta.org/policy/reports.shtml.

Chateau de Leelanau Gets a Second Chance New WIPO Online Database

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MARK OF THE MONTH TRIVIAL PURSUIT

Members US$69.95 Non-Members US$89.95 280 pages Paperback/Practice Series ISBN: 0-939190-48-6 To Order: www.inta.org/pubs or call +1 (212)768-9887, ext. 157

From INTA Publications U.S Trade Dress Law A Primer for the New Millennium By Glenn Mitchell, Steven J. Wadyka, Jr., Hara Jacobs and Melissa Lee A must-have for any trademark professional, this new publication traces the path of the development and evolution of trade dress law in the United States by exploring both the issues and the case law relevant to product configuration trade dress protection. Also examined are the factors basic to proof of a trade dress infringement case, such as inherent distinctiveness, secondary meaning, functionality and likelihood of confusion. Additionally, this timely treatment analyzes the unique issues raised by the application of dilution principles to trade dress, trends in protection of nontraditional marks and the alternatives presented by copyright, patent and right of publicity laws.

To order online, visit www.inta.org/pubs To order by phone, call +1 (212) 768-9887, ext. 157

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INTA Bulletin • November 15, 2002 Vol. 57, No. 21

Distinctive Shapes CONTINUED FROM PAGE

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6bis was introduced. However, there has been no final ruling on this point. The national Registries worldwide have adopted very different approaches to the registration criteria for three-dimensional marks. However, in most countries where formal examination takes place, some examination of the “functionality” of a threedimensional mark is included, in addition to the usual examination requirements. The European Union (EU) position on the protection of three-dimensional marks is best demonstrated in the Philips .v Remington decision (reported in the INTA Bulletin Vol. 57, No.13, July 15, 2002). In short, purely functional designs cannot be protected in the EU. This approach does not mean that distinctiveness obtained during the period of exclusivity given by a patent and/or design registration cannot be taken into account. There is no reason why other intellectual property rights should not be used to strengthen a trademark position. Only purely functional designs are excluded from registration. Designs that are partly functional and partly stylized should be registrable as trademarks. In the United States, when examining a three-dimensional mark to determine if it can be registered, distinctiveness and functionality are considered to be two separate issues. If a mark is refused registration on the basis that it is functional, it cannot be registered, no matter how distinctive the mark has become. As in the European Union, this prevents the exclusivity given by a patent or design patent from being used to create distinctive-

The national Registries worldwide have adopted very different approaches to the registration criteria for threedimensional marks. ness that allows for a trademark registration that could not otherwise be obtained. Canada uses the concept of a “distinguishing guise” to describe three-dimensional trademarks. A distinguishing guise can be registered only if it has become distinctive through use prior to the application date and if the registration will not limit the development of any art or industry. When this restriction is coupled with the limitation that a registration cannot be used to prevent the use of any utilitarian feature contained within the distinguishing guise, it becomes difficult to protect functional aspects of designs. In practice, not many applications for distinguishing guises are filed, and applicants instead try to protect shapes of conventional trademarks. In Brazil, three-dimensional marks are not mentioned specifically in the legislation, although a shape mark can be registered if the shape in question can be disassociated from a technical effect. This means that, in theory, marks containing functional design elements can be registered, provided the marks also contain some non-functional elements. In summary, provided sufficient safeguards are in place to prevent trademark registration from being used to obtain perpetual exclusivity in functional elements, it is possible for threedimensional marks to be protected.

COMMITTEE

Comments

Academic Institution Recruitment Subcommittee

INTA BULLETIN BOARD

School Days for Membership Efforts BY KATHRYN M. WHEBLE, Cooley Godward, LLP San Francisco, California, USA CATHERINE SIMMONS-GILL Chair, Academic Recruitment Subcommittee THE JOHN MARSHALL LAW SCHOOL

Those in academia who could benefit include students, professors, university counsel involved in an institution’s trademark work, and its licensing professionals.

ALTHOUGH THE INTERNATIONAL TRADEMARK ASSOCIATION has only a few member academic institutions, the Association has worked with members in the academic community for years, according to Catherine Simmons-Gill, designee of The John Marshall Law School and chair of the Academic Institutions Recruitment Subcommittee (AIRCOM), part of the Membership Committee. The Subcommittee has made it its priority to research the future relationship between INTA and the academic community. It seems natural that INTA should have strong connections to academia. Those in academia who could benefit from membership with INTA include students, professors, university counsel involved in an institution’s trademark work and its licensing professionals. INTA would also benefit from relationships with the forum that shapes scholarly legal doctrine. Yet long-lasting membership ties have not yet been forged between INTA and a significant part of the academic community. This is partly because INTA historically has not offered what those in academic institutions need most. For instance, professors prefer scholarly symposia to practical forums. In addition, the responsibilities of university counsel often extend beyond the institution’s trademarks, thus making other professional organizations a better fit. A school’s budget may not support INTA membership or activity/ program fees. In 2000, INTA’s then-president Kim Muller suggested that someone examine ways to increase INTA’s involvement with and commitment to academia. Ms. Simmons-Gill, past INTA president and a designee of one of the few academic institutions holding long-term membership with INTA, was a natural choice to head the mission. AIRCOM has many projects in the works. For example, INTA now offers an accredited course in international trademark law, which is held at the Annual Meeting. Other planned projects include an international trademark law symposium, a database of trademark law courses, and possibly special academic memberships. AIRCOM members work in corporations, law firms, and academia on five continents. Ms. Simmons-Gill says that everyone shows great enthusiasm – which is necessary when committee teleconferences span so many time zones that at least one call participant must rise before the sun or stay up late.

Borden Ladner Gervais is pleased to announce that two of its associates, Jessica Yeung, of the firm’s Vancouver office, and Shelley Jones, of the firm’s Ottawa office, placed first and second respectively in the 2001 Trade-Mark Agents Examination. Jessica Yeung was awarded the Education Foundation Prize for the candidate who had attained the highest marks in Canada. Leslie Lott of Lott and Friedland, has been appointed by the U.S. Secretary of Commerce, Don Evans, to the Department of Commerce’s United States Patent and Trademark Office (USPTO) Trademark Public Advisory Committee. The committee was created by the 1999 American Inventors Protection Act to advise the Under Secretary of Commerce and Director of the USPTO on the agency’s operations, including its goals, performance, budget and user fees. Ms. Lott is one of nine voting members appointed to the committee. Natasha Whitelocke, formerly Assistant Registrar of the Cayman Islands Patents & Trade Marks Registry, has joined the Intellectual Property Department of Hunter & Hunter in George Town, Grand Cayman, Cayman Islands. Brian L. Berlandi, formerly of Pennie & Edmonds LLP, has joined the law firm of Wollmuth Maher & Deutsch LLP in New York, New York, USA. Juan M. Alvarez del Castillo V., formerly of Clarke, Modet & Co. Mexico, has joined the law firm Arochi, Marroquin & Lindner. Diane Duhaime has joined Jorden Burt LLP as a partner in the firm’s Connecticut, USA office. Ms. Duhaime leads the intellectual property and law technology group. The INTA Bulletin Board announces news of a professional nature about individuals that belong to INTA, including practice changes, accomplishments, promotions, relocations and awards received. This column does not accept notices of published articles or items of a personal nature. All submissions are subject to acceptance by the INTA Bulletin Editorial Board. To submit an item for the INTA Bulletin Board, send an email to [email protected].

November 15, 2002 Vol. 57, No. 21 • INTA Bulletin

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Law + Practice AUSTRALIA Domain Name Service Providers Subject to Greater Control The .au Domain Administration published a new .au Domain Name Suppliers’ Code of Practice (“Code”) on September 10, 2002. The Code restricts suppliers in the “.au” domain from registering or renewing domain names other than at the request of the registrant. It also prohibits suppliers from registering domain names on their own behalf with the intention of later offering a domain name to a consumer for a fee or in conjunction with other services such as a name supplier and any services grouped with a domain name registration. In a related development, the Australian Competition and Consumer Commission (ACCC) has issued another warning to suppliers of domain name renewal services not to mislead or deceive customers. The warning followed consent orders in the Federal Court of Australia in settlement proceedings taken by the ACCC against Internet Name Protection Pty Limited, its directors and a former employee for contraventions of the Trade Practices Act. Unsolicited invoices had been sent to small businesses, which had no prior dealings with the company. Many consumers had mistakenly paid invoices believing the company to be their chosen supplier. The new Code together with the ACCC’s vigilant enforcement of the Trade Practices Act should lead to more consumer confidence in the “.au” domain name system.

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Source: Brett Doyle, Baker & McKenzie, Sydney, Australia; Verifier: Lisa Ritson, Blake Dawson Waldron, Sydney, Australia

IRAN IP Trends from 1997 to 2001 The Industrial Property Office of Iran recently revealed several intellectual property trends that have prevailed from 1997 to 2001 in Iran. According to the report, 44,014 trademark applications were filed and 17,471 were registered during this five-year period. In 2001, a total of 11,082 trademark applications were filed. This figure shows a 60 percent increase compared to 1997, corresponding to an average annual increase of 12 percent. Additionally, in 2001, trademark registrations rose from 2,960 to 4,437, indicating a total registration increase of 50 percent that year. Ten percent of the applications filed were foreign applications. Foreign registration forms made up 23 percent of total registrations. Source: Mohammad Badamchi, HAMI Legal Services, Inc., Tehran, Iran; Verifier: Samad Asgharieh, Raysan Patent & Trademark Agents, Tehran, Iran

KOREA Patent Court Decides MEGA-PASS Mark is Descriptive On August 29, 2002, the Korean Patent Court decided that the MEGA-PASS mark is descriptive for “telecommunication and broadcasting business services.”

INTA Bulletin • November 15, 2002 Vol. 57, No. 21

Korea Telecom Co., Ltd. filed a service mark application for the MEGA-PASS mark with the Korean Trade Mark Office in International Class 38. The examiner rejected the mark as descriptive and the Trademark Board of Appeal (TBA) affirmed the examiner’s rejection. Korea Telecom challenged the TBA’s decision in the Patent Court. The Court reasoned that the mark could describe the properties of the designated services such as effect, function, use, etc. The Patent Court also concluded that if a mark falls between descriptive and suggestive, courts will find that the mark is more descriptive than suggestive, and not entitled to registration. Source: Dukkyu Choi, DK Choi & Partners, Seoul, South Korea; Verifier: Moon Yung Chung, Moon Yung Chung Patent Law Office, Seoul, South Kore

MAURITIUS The Patents, Industrial Designs and Trademarks Act 2002 The Patents, Industrial Designs and Trademarks Act 2002 was passed by the National Assembly and approved by the president on August 8, 2002. The Act will come into effect on a date or dates to be fixed by proclamation, once the supporting regulations, forms and fees have been established. It is expected that the current trademarks and patents department will retain responsibility under the new Act and accompanying legislation, once a timetable is established. The principal features of the Act affecting trademarks include the following:

Definition of a Mark – Any visible sign capable of distinguishing the goods or services of an enterprise from those of other enterprises will apply. Classification – The Nice Classification, 8th edition, will apply. Multi-class applications will be accepted. The repealed law does not provide for classification and subsisting registrations containing an unclassified list of goods. The new Act does not specifically provide for classification of subsisting registrations, but this could be introduced as a condition of renewal. Convention Priority – Priority may now be claimed under the Paris Convention. The repealed Act did not permit this, although Mauritius has been a subscriber to the Convention since 1976. Examination, Advertisement, Opposition – Provisions are retained for examination, advertisement and opposition and it can be expected that examination for registrability will continue to be relatively rigorous. Term and Renewals – Marks registered after the new Act, will be renewable for successive tenyear terms, instead of seven years followed by successive 14-year terms under the repealed Act. Subsisting registrations will complete their current term, then be renewable for ten years. Conditions may be attached to renewal by the regulations. Use – Registrations can be cancelled after three years of nonuse, provided the cancellation takes place by the application date. Under the repealed law, there was no process for canceling an unused trademark. Licensing – Licenses must

be recorded to be enforceable against third parties. Licenses must provide for quality control. The old law had no provision for licenses, but a practice had developed of recording them by notarial declarations. Such documents were retained in custody by the notaries, not at the Trademarks Office. Rights Conferred By Registration – In conjunction with the Protection Against Unfair Practices Act, statutory rights are now given for proprietors to sue for infringement as well as criminal proceedings. A civil right to sue was not expressly conferred in the repealed Act, but was recognized by the courts. Remedies for Unregistered Marks – In terms of Article 6bis of the Paris Convention, wellknown marks in Mauritius are recognized and may be enforced, even if unregistered. Source: Mac Spence, Consultant with Spoor & Fisher Jersey, Jersey, Channel Islands; Verifier: Steve Le Feuvre, Lysaght & Co., Jersey, Channel Islands

PERU Trademark Registration Denied Due to Bad Faith of Applicant On September 5, 2002, the Intellectual Property Chamber (second and last administrative instance) revoked a resolution issued by the Peru Trademark Office on April 16, 2002 and rejected Convert Footwear Corp. E.I.R.L.’s registration of the FOOTSTAR mark because it found that the registration application was in bad faith (Resolution No. 813-2002/TPIINDECOPI).

Convert Footwear Corp. E.I.R.L., a Peruvian company, applied to register the FOOTSTAR mark for “footwear and clothing” in Class 25. Footstar, Inc., a U.S. company, opposed registration of the mark on the basis that the application was filed in bad faith. Footstar, Inc. argued that Convert’s FOOTSTAR mark was identical to the trademark Footstar had previously registered and currently used in United States for the same products and that Convert had full knowledge of the existence of Footstar’s U.S. trademark. Nevertheless, the Trademark Office held in favor of Convert on the basis that Footstar, Inc. had not adequately proven the bad faith intent of Convert in filing the application. On appeal, the Intellectual Property Chamber reversed the Trademark Office’s decision and denied registration of the mark. The Intellectual Property Chamber reasoned that while Convert Footwear Corp. E.I.R.L. could have known about the existence of the mark and its extensive use for the same products, this did not establish that it acted in bad faith. Moreover, the Intellectual Property Chamber noted that Convert Footwear Corp. E.I.R.L. had applied in Peru for the registration of other trademarks, such as CONVERT, HIGH-LAND and ISLANDER, which had been registered previously in the United States by other companies. Thus, the present case was neither isolated nor coincidental. The Intellectual Property Chamber held that it was reasonable to assume that the

intent of Convert Footwear Corp. E.I.R.L. at the time of filing the application for FOOTSTAR was to block Footstar, Inc., one of the largest shoe companies in the United States, from entering the Peruvian market and to deceive Peruvian consumers in the belief that its FOOTSTAR shoes came from Footstar, Inc. In view of the additional evidence of bad faith, the Intellectual Property Chamber applied the rule of Article 6 of the Industrial Property Law, under which priority normally accorded to the first applicant for registration of a trademark is not recognized if bad faith on the part of that applicant is demonstrated. Source: Maria Alvarado, Rodrigo, Elías & Medrano Abogados, Lima, Perú; Verifier: Francisco Espinosa Bellido, Estudio Francisco Espinosa Bellido Abogados S.C.R.L., Lima, Peru

UNITED ARAB EMIRATES New Federal Trademark Law No. 8 of 2002 The new UAE Federal Trademark Law No. 8 of 2002, amending the UAE Federal Trademark Law No. 37 of 1992, was published in the UAE Official Gazette, Issue No. 384, on July 31, 2002, and immediately went into effect. The new law will keep UAE trademark protection in line with UAE obligations under the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

Some of the important new articles are: • Article 4 – increases protection for well-known marks (Well-known marks can be registered only by the original owner or with their authority); • Article 8 – confirms that the UAE will follow the WIPO International Classification System; • Article 10 – contains more stringent conditions regarding the registrability of conflicting marks; • Article 16 – provides for protection from the date of filing the application; • Article 17 – broadens the exclusive rights of the trademark owner (ownership cannot be questioned after five years of continuous use, among other changes); • Article 20 – permits cancellation of a wrongly registered trademark without reverting to the court with rights to be heard and appeal; • Articles 21 & 22 – permits cancellation of an unlawfully registered mark or for nonuse during a five year period; and • Articles 37 & 38 – relate to penalties for infringement. Source: Maren Hanson, Gulf Consultants for the Protection of Intellectual Property, Riyadh, Saudi Arabia; Verifier: Hoda Barakat, Al Tamimi & Company Advocates & Legal Consultants, Dubai, United Arab Emirates

November 15, 2002 Vol. 57, No. 21 • INTA Bulletin

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In THE News SHAOLIN Monks Fight Back

In the News is a compilation of articles about trademark law and business, abstracted from news publications from around the world. In this issue, trademarks in the news are:

SHAOLIN CHATEAU DE LEELANAU

Centuries ago the martial art of kung fu originated in China’s Henan Province in the Shaolin monastery (built in 496), located in the foothills of sacred Mount Songshan. Today, Shaolin monks not only struggle to master both their bodies and minds, but brands as well. The monks have set up a company, Henan Shaolin Temple Industrial Development Limited Co., to own the SHAOLIN brand. Not surprisingly, given the great popularity of kung fu in the wake of Bruce Lee’s martial arts movies of the 1970s, the monks’ agents have discovered a plethora of unauthorized uses of SHAOLIN. For example, six years ago the monks won a lawsuit against a local company that was using SHAOLIN to market canned ham. More recently, the monks secured from Rainer Deyhle, a German businessman, transfer of a number of SHAOLIN marks registered in his name. The monks will, however, cooperate with Mr. Deyhle to set up a SHAOLIN cultural center in Germany, where two monks from the temple will give lectures year round. The monks claim a similar success in Australia and, with a U.K. partner, are hoping to open a traditional SHAOLIN kung fu school in North Wales. According to Qin Daliang, the new company’s general manager,

Shaolin Monks demonstrate martial arts techniques

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INTA Bulletin • November 15, 2002 Vol. 57, No. 21

“We have to take steps to protect ourselves, to protect the names of SHAOLIN and SHAOLIN TEMPLE and protect the classics of the Chinese culture.” Source: Xinhua News Agency, September 25, 2002; AP WorldStream, September 25, 2002; Liverpool Daily Post, October 21, 2002; China IP News Alert, Vivien Chan & Co., October 2002. Editor: Barbara E. Cookson, Nabarro Nathanson, London, United Kingdom

Chateau de Leelanau Gets a Second Chance Suttons Bay Winery may be able to discard the black marker and resume its use of CHATEAU DE LEELANAU marks on its labels and merchandise. In a dramatic turn of events, a federal judge says he may have erred in a trademark infringement ruling requiring the winery to remove “Leelanau” from its bottle labels and merchandise. In August, federal Judge Gordon J. Quist ruled in favor of Leelanau Cellars Ltd. in a trademark infringement action brought against Suttons Bay’s parent company Black & Red Inc. The ruling stated that Leelanau Cellars owned trademark rights that restricted other wineries from using “Leelanau” in connection with wine. And as a result, Chateau de Leelanau employees spent hours using a marker to black out the word “Leelanau” from the existing wine labels. The winery also was required to remove merchandising items such as T-shirts, wine glasses and other products bearing the name Chateau de Leelanau. In a letter sent to attorneys for both wineries, Judge Quist stated, “After the bench trial, which occurred on August 28 and 29,

I thoroughly reviewed the facts and law on this case. This review has led me to the conclusion that I erred in granting summary disposition to the plaintiffs. I now tend to believe the plaintiff has not demonstrated a likelihood of confusion between the two marks.” Judge Quist further indicates that he is inclined to reverse his earlier decision and allow Chateau de Leelanau to continue to use the word “Leelanau” but he wants to discuss the issue with attorneys for both sides. Source: “Bitter Aftertaste? Judge May Reverse Wine Label Decision”, The Traverse City Record-Eagle, October 16, 2002; Editor: Elise Tenen-Aoki, Greenberg Traurig, LLP, California, USA

New WIPO Online Database The World Intellectual Property Organization (WIPO) recently launched an online database that contains information handled by its Arbitration and Mediation Center. The Database, which became available online on July 5, is equipped with a powerful search engine that enables users to filter and access targeted information on cybersquatting cases handled by the WIPO. It includes a multilingual search engine, which users may use to search cases in English, French and Spanish. Users may also access a summary of case details, search by domain name, key words and full text. The database is available at http://arbiter.wipo.int/domains/ search. Source: BNA World Intellectual Property Report, September 2002; Editor: Naeran Rubio, INTA, New York, New York, USA

Mark of THE MONTH

With no experience in the game industry, it took the four creators years of hard work before the TRIVIAL PURSUIT game became a success with the public.

BY PATRICK J. GALLAGHER FULBRIGHT & JAWORSKI L.L.P. Minneapolis, Minnesota, USA

IN MONTREAL IN DECEMBER 1979, TWO friends, Scott Abbott, a sports editor with the Canadian Press, and Chris Haney, a photo editor for the Montreal Gazette, engaged in a friendly argument about which one was a better game player. That day, the two friends decided to create a board game. They were later joined by Mr. Haney’s older brother, John, an ex-hockey player, and his friend, Ed Werner, an ex-hockey player turned lawyer. The foursome’s efforts led to the board game TRIVIAL PURSUIT, which is celebrating its 20th anniversary this year. The inventors originally planned to call their game “Trivia Pursuit,” until Sarah Haney, Chris Haney’s wife, suggested that it

be called “TRIVIAL PURSUIT.” With no experience in the game industry, it took the four creators years of hard work before the TRIVIAL PURSUIT game became a success with the public. The creators sold 1,100 prototype games in Canada before officially showing the game in the United States at an international toy fair in New York City in February 1982. Much to the creators’ disappointment, only a few hundred games were ordered during the toy fair. But they persevered and continued undaunted in their efforts to market the game. Their efforts paid off. In 1984 they sold over 20 million copies of the game in North America.

Earlier this year, the inventors of the TRIVIAL PURSUIT game launched the TRIVIAL PURSUIT 20TH ANNIVERSARY EDITION game, which includes more than 4,000 new questions that cover the last 20 years, in six new categories, “Global View,” “Sound & Screen,” “News,” “The Written Word,” “Innovations,” and “Game Time.” Today, the TRIVIAL PURSUIT board game is played in 17 countries and in 26 languages, with more than 70 million units of the game sold worldwide since its introduction in 1982. Source: www.trivialpursuit.com, October 27, 2002

Wanted! Table Topic Facilitators for INTA’s 2004 Annual Meeting The Annual Meeting 2004 Project Team is beginning to staff the table topic discussions that will take place in Atlanta, Georgia, from May 1 – 5, 2004. Volunteers who plan to attend the Annual Meeting in 2004 are invited to apply for facilitator positions on hundreds of available topics. To qualify, you must be an INTA Member with expertise in the topics you wish to moderate. Past experience as a table topic or roundtable facilitator is a plus. Only persons who are willing to make a time commitment to plan a discussion outline, and ensure that they will be able to fulfill the obligation, should apply. This is an excellent opportunity to network and help educate your peers. If you are interested, please send your name, contact information and area of expertise to [email protected]. The deadline to submit your name is December 15, 2002.

November 15, 2002 Vol. 57, No. 21 • INTA Bulletin

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Reading Review International Trademark Association

dates TO

save National CLE Conference® January 4 – 9, 2003 Snowmass Village at Aspen, Colorado, USA Cosponsored with the Law Education Institute U.S. Trademark Basics Forum February 24 – 25, 2003 Los Angeles, California, USA International Trademark Basics Forum February 26 – 27, 2003 Los Angeles, California, USA Dilution Forum March 6 – 7, 2003 Arlington, Virginia, USA Annual Meeting May 3 – 7, 2003 Amsterdam RAI International Exhibition and Congress Centre Amsterdam, Netherlands For more information visit the INTA website at www.inta.org or call Customer Service at +1 (212) 768-9887, ext 157.

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1133 Avenue of the Americas New York, NY 10036-6710 USA +1 (212) 768-9887 • f: +1 (212) 768-7796 www.inta.org • [email protected]

Trademark Searching A Practical and Strategic Guide to Clearance of New Marks in the U.S.

INTA BULLETIN EDITORIAL BOARD For inquiries related to this publication, send an email to [email protected].

AUTHOR: GLENN A. GUNDERSEN THE UPDATED AND EXPANDED second edition of this classic title effectively targets both the rationale and techniques of the trademark search process. Discussion of strategy and hands-on tactical guidance are clearly defined in this essential introduction to the “why, when and how” of planning search parameters, selecting the best resources, knowing when and how to choose a vendor, evaluating findings, investigating cited marks and delivering the opinion. New in the second edition is timely coverage of the use of the Internet as a research tool; the added obligation and special

Olga M. Nedeltscheff Editor-in-Chief Philip Morris International Management S.A. Lausanne, Switzerland

considerations of searching domain names; the impact of web presence on trademark rights; analysis of Hilfiger and other evolving case law on both the obligation and intent of searching; the added dimension of the need to evaluate the possibility of dilution, even absent likelihood of confusion; and broadened consideration of international searching.

US$79.95 Members US$105.95 Non-Members Second Edition 2000 212 pages Paperback ISBN 0-939190-38-9

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 East Schneider Page, London, United Kingdom Kay Rickelman Executive Editor, Law & Practice: Asia, Africa Spoor & Fisher, Pretoria, South Africa Mary DeLongis Executive Editor, Features Diageo North America Inc., Stamford, Connecticut USA Tim Lockhart Executive Editor, Features Hogan & Hartson LLP, McLean, Virginia USA Naeran Rubio Managing Editor, INTA, New York City, USA Elaine Czach Assistant Editor, INTA, New York City, USA

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INTA Bulletin • November 15, 2002 Vol. 57, No. 21

Brand Names Education Foundation: [email protected] Although every effort has been made to verify the accuracy of items carried in this newlsetter, readers are urged to check independently on matters of specific concern or interest. The INTA Bulletin primarily relies on members of the INTA Bulletin Committee and INTA staff for content but also accepts submissions from others. The INTA Bulletin reserves the right to make, in its sole discretion, editorial changes to any item offered to it for publication.

© 2002 International Trademark Association