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2 Cost Effective Strategies For Worldwide Trademark Clearance and Protection Wednesday, December 6, 2006 Presented by ACC s s Intellectual Property Law Committee Sponsored by Kilpatrick Stockton, LLP

3 Page 3 Panel Philip Davison, Trademark Counsel Yum! Brands, Inc. Virginia Taylor, Partner Kilpatrick Stockton LLP Georges Nahitchevansky, Partner Kilpatrick Stockton, LLP

4 Cost Effective Strategies For Worldwide Trademark Clearance and Protection Virginia Taylor, Partner Kilpatrick Stockton, LLP

5 Page 5 Bravery Is Required The Stakes Are High Mistakes can have serious consequences but We cannot just say no

6 Page 6 Some Marks are inherently almost impossible to clear for registrability and enforcability Common laudatory terms. Highly diluted terms and combinations Similar marks will exist in many countries Example: XTRA-PRO

7 Page 7 Weak Diluted Marks may be available for use, if: No industry conflict Not concerned about enforceability but Numerous potential objectors will exist.

8 Page 8 Distinctive marks are easier to clear Example: CERTEGY Help decision-makers choose a mark that has good availability prospects

9 Page 9 Set realistic expectations Time Cost Degree of certainty needed Risk-tolerance Trade-offs will govern speed and scope of clearance program Perfect certainty is a practical impossibility

10 Page 10 If time permits, phased clearance is most cost effective Example: On-line screening to narrow the list U.S. commercial search and WISS for a few good candidates Cross reference WISS against available on-line databases may identify significant multi-country issues Country-by-country advice for key markets and identified obstacles.

11 Page 11 Where time is short: Phasing may not be possible Borderline marks may have to be rejected earlier based on on-line and WISS searches Simultaneous clearance of multiple marks in key countries will be costly.

12 Page 12 Results may be unsatisfactory No proposed marks completely clear Favorite candidate unavailable Looming deadlines Problem-solving approach is needed

13 Page 13 Salvaging the favorite mark Modify spelling/add additional element Thorough investigation to fully evaluate risks and resolution options Acquire a senior mark Acquire the conflicting mark

14 Page 14 Ultimately it is the business managers who must decide what risks are tolerable

15 Page 15 Remember: Registration is essential to protection and enforcement in most countries Apply before you announce the new name and before your local distributor or business associate does

16 Page 16 Multi-National filing strategies Where to file: Countries where the products or services will be launched initially Countries where there are potential distributors Important expansion markets Countries with the capacity to manufacture competing or counterfeit goods.

17 Page 17 Multi-National filing strategies (continued) What to file: Words, designs or both? Limited classes or broad protection? English only or local language also? Balancing costs and protection is a business decision Costs increase geometrically with more variations, classes and countries

18 Page 18 Filing Options U.S. Priority application followed by national filings and/or Madrid extensions Often the easiest and cheapest but Limited specifications may inhibit future enforcement

19 Page 19 Filing Options (continued) Initial filing in another Madrid Protocol jurisdiction that allows broad specification Applicant must either have local presence or subsidiary May result in split trademark ownership or a cross-border asset transfer with unwanted tax implications

20 Page 20 Filing Options (continued) Simultaneous filings in U.S. and key national and regional registries Logistically complex Often more costly Most often used where applicant is a U.S.-based IP holding company

21 Page 21 Maintaining Secrecy Priority application filed by a specially created entity Intent to Use application with vaguely worded specifications Difficult to hide from competitors who know industry events and watch newly filed applications in key class.

22 Page 22 Like clearance strategies, filing programs must balance business costs and risks.

23 Cost Effective Strategies For Worldwide Trademark Clearance and Protection Georges Nahitchevansky, Partner Kilpatrick Stockton, LLP

24 Infringement is Likely Page 24

25 The Do Nothing Approach Page 25

26 Choosing The Right Battles Page 26

27 Page 27 What Rights Do You Have Initial Analysis What kind of jurisdiction is involved (common law or registration based) Do you own a registration in the jurisdiction in question Have you used the mark in the jurisdiction in question Are you vulnerable to a counter-attack

28 Page 28 How Strong Are Your Rights What goods and services are covered How well known is the mark How has the mark been used in the jurisdiction

29 Page 29 How to Proceed Considerations What kind of infringement is involved Is this a recurring problem Are multiple jurisdictions involved Is an investigation warranted

30 Page 30 What are the Available Options Part 1 Demand letter (can work, but beware) -- unjustified threats provisions Opposition or cancellation action Court action -- can be costly and last a long time -- be clear on the pitfalls and benefits -- how will a decision be enforced

31 Page 31 The Kodak.ru Enforcement Nightmare

32 Page 32 What are the Available Options Part 2 Other alternatives can also be used - Revise your filing strategy - Détente/co-existence

33 Page 33 Coexistence and the Internet The Imaginarium Example Toys R Us, Inc. (US) -- Imaginarium.com

34 Step Two SA (Spain) Imaginarium.es Page 34

35 Page 35 Coexistence and the Arms Race...

36 Page 36 Avoid An Unnecessary Arms Race

37 Page 37 Considerations Time frame involved Cost Degree of certainty needed Risk-tolerance Ability to enforce judgments/decisions

38 Page 38 Practical Considerations Make sure key jurisdictions are covered appropriately Keep track of how the mark is being used and what is being planned in the future Create evidence files (do not wait to the last minute) Revise and adjust your filing strategy Re-evaluate your enforcement approach periodically Be vigilant and use watch services for key marks

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