NAERAN RUBIOINTA BULLETIN

Managing Editor

IN A JOURNEY THAT BEGAN IN

Beijing and ended in Shanghai,INTA hosted two meetings thatencouraged seventeen new majorChinese trademark owners to jointhe Association.

INTA President, Kim Mullerand Executive Director, AlanDrewsen led the sessions, whichincluded a testimony from Mr.Jingming Wang of the ChinaTrademark Association (CTA) as well as INTA’s first corporatemember, Dr. Lieqiang Zou ofChina International Trust &Investment Corporation (CITIC).

The two meetings held inBeijing on December 11 and inShanghai on December 12, were

the result of careful planning andcoordination for months andranked as one of INTA’s top priorities. Coordinator and moderator, Edward E. Lehman of Lehman, Lee & Xu, remarkedthat the Chinese brands repre-sented at these meetings wouldbe expanding beyond Asia to taketheir place alongside such notables as Nokia, Coca-Cola,

McDonalds and IBM. Additionally, President Muller

stressed that the companieswould benefit from Associationmembership by making theirvoices heard in internationalintellectual property circles.

Many attendees expressed aninterest in attending INTA’s nextAnnual Meeting in San Franciscoin May 2001.

IN THIS ISSUE

BEHIND THE SCENESMembership Manager

MEDIATIONGETS RESULTSStudy of Chicago’s Lanham Act Mediation Program released

BRAND DESTINATIONSKellogg’s Cereal City

ON THE MOVE

LAW & PRACTICE

ITALYTrademark Owner Denied Domain Name Transfer

LITHUANIANew Trademark Law

EUROPEAN COMMUNITY Registration Cancelled for Bad Faith

WORLD UPDATE

Multinational Organizations (cont.)

IN THE NEWS

Football Team Scores Victory in U.S. Federal Court

Football Trademark Gets sucked into Website Dispute

Rock Group Claims Perfume Brand Stinks

MARKS FROMTHE HEARTA Valentine’s Day Assortment of Marks

COMMITTEE COMMENTSTrademark Office Practices Committee

MEMBER SPOTLIGHTAmitabha Sen

Multinational TrademarkOrganizationsAnd their most significant accomplishments in the year 2000: Part I

2

4

6

From One to 18 in Two DaysINTA’s Chinese Corporate Membership expands overnight

Bulletin FEB. 1, 2001

THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 56, NO. 3

THIS IS THE FIRST OF A TWO-PART ARTICLE

that reviews the past year for the multinationaltrademark organizations of the world.

PART I reviews the year for the Office for theHarmonization in the Internal Market (OHIM)and the Internet Corporation for Assigned Namesand Numbers (ICANN).

PART II will review the year for the Association of Southeast Asian Nations (ASEAN), AfricaRegional Industrial Property Organization(ARIPO), and the World Intellectual PropertyOrganization (WIPO).

3

9

8

After a hard day at the podium, Dr. Lieqiang Zou (far left), (back row, leftto right) Edward E. Lehman, Alan Drewsen, Kim Muller, and JingmingWang (fifth from right) pose with colleagues.

CONTINUED ON PAGE 6

11

10

The Office for the Harmonization in the Internal Market (OHIM)

BARBARA E COOKSON & GUY HEATHNABARRO NATHANSON, London, UK

AS THE OFFICE for Harmonization in the InternalMarket (OHIM) approaches the completion of fiveyears of operation, it has reason to be proud of havingestablished a defined standard of registrability amongits Examiners. The Examiners’ decisions are appealedto one of three Boards of Appeal, and ultimately toThe European Court of Justice (ECJ). This review ofOHIM’s year focuses on the clearly contentious issuesand on the cases that have provided emerging guide-

ASSOCIATION News

In an effort to focus on Memberrecruitment, INTA created aMembership Department and movedfive-year membership staff veteran,Heather Sweeney, into the position asMembership Manager. One yearlater, The Bulletin goes backstage totalk with Heather about the depart-ment and its recruitment initiatives.

Bulletin: Why is the MembershipDepartment important to INTA’smembers?

Heather: In addition to producingthe Membership Directory andspearheading the committee selec-tion process, we are also the placethat members should contact whenasking questions about membershipstatus. Some examples of theinquiries that come through thisdepartment are questions onwhether a company/firm is a mem-ber, information on how to join acommittee, how to join INTA orhow to help with INTA’s recruit-ment efforts.

Bulletin: How do the MembershipDepartment’s recruitment effortsbenefit individual members?

Heather: The more people areinvolved as members, the more ofan intellectual property skills poolmembers have available to choosefrom. Different individuals bringdifferent levels of expertise thatbenefit everyone. INTA bringseveryone together. In many situa-tions, because of the contacts mem-bers make, conflicts and cases havebeen solved during our variousmeetings.

Bulletin: You have been with INTAfor over five years. What changeshave you noticed within this time?

Heather: There has definitely beena trend towards internationaliza-tion. We are generating many morepublications and meetings beyondthe United States than we did fiveyears ago. Also, our governmentaffairs department has grown signif-icantly, with important legislativework being done in practicallyevery country.

Bulletin: What do you like bestabout working for the Association?

Heather: I love the cultural andpersonal diversity within theMembership. Each member bringstheir own unique culture and personality to the group, thus there are many opportunities tolearn and grow.

Heather Sweeney holds an Associateof Arts in Political Science at theUniversity of Florida and a Bachelorof Arts in International Business atFlorida Atlantic University.

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 32

The Challenges of the Future to Trademark LawAn Interactive Symposium

for Advanced Practitioners

March 5-6, 2001

The Intercontinental Hotel

New York, NY

The accelerating pace of communication andthe globalization of the economy mandate thattrademark law increasingly must be responsiveto change.

The basic missions of trademark protectionlaw and the means by which they might best be fulfilled in the rapidly evolving global marketplace are the focus of The Challenges

of the Future to Trademark Law, an interactivesymposium for advanced trademark practitioners.

In a context of provocative presentations, moderated discussions and breakout sessions,a world-renowned faculty of experts from pri-vate practice, corporate practice, the judiciaryand WIPO will challenge attendees to re-examine traditional trademark doctrine and its usefulnessin solving the complex issues confronting practitioners worldwide as we begin the 21st Century.

To preserve the sophisticated level and participatory nature of the symposium, attendance is limited to just 85 participantshaving at least ten years of trademark lawexperience.

A limited number of spaces remain for this

extraordinary trademark law event.

For complete program and registration details, visit the INTA web site at www.inta.org, or callMembership Services at (212) 768-9887. Don’t be shut out of this unique symposium.

Register today!

Behind the Scenes with INTA’s Membership Manager

HEATHER SWEENEYMembership Manager+1 (212) 642-1727HSWEENEY@INTA.ORG

Feb 2001 Vol. 56, No. 3 • INTA Bulletin 3

BY JOSEPH V. NORVELLBRINKS HOFER GILSON & LIONE

Chicago, Illinois, USA

A RECENT STUDY on the voluntary mediation pro-gram for Lanham Act cases adopted by the Chicago,Illinois, USA federal court in 1997 reported bothbenefits and areas for improvement.

The Center for Analysis of Alternative DisputeResolution Systems (CAADRS), in conjunction withthe Lanham Act Mediation Program Working Groupof the Chicago Bar Association, studied the media-tion program. The program, adopted by the UnitedStates District Court for the Northern District ofIllinois is strictly for cases filed under the LanhamTrademark Act.

Overall, the study revealed that trademark lawyersare satisfied with the Chicago program and confirmedthat it has achieved a respectable level of success, withover 60 percent of cases settled. Survey respondentsnoted that mediation works best when all parties havea mindset for resolution of the dispute.

The data uncovered that more mediations hadtaken place than previously reported by the Court.While Court records listed 25 mediations during therelevant period, the study revealed that 32 had actuallytaken place.

The data also brought forward circumstances under

which trademark attorneys do not feel mediation isappropriate. When injunctive relief is sought, almosttwo thirds of the survey respondents felt that media-tion is inappropriate. Respondents also said theyavoid mediation if the lawyers on the other side areinexperienced, if clients are inflexible, or if the clientdesires to set a legal precedent.

While the study uncovered the program’s success-es, it also shows room for improvement. For exam-ple, some lawyers failed to certify that they had dis-cussed the advantages and disadvantages of media-tion with their clients, making it unclear whetherthe trademark owners were fully briefed on the ben-efits of mediation.

The report makes an express plea to professionalorganizations of intellectual property practitioners,such as INTA, to encourage lawyers to participate inthe program and comply with its rules. The completestudy, entitled An Evaluation of the Lanham ActMediation Program, U.S. District Court for theNorthern District of Illinois, is available on theCAADRS web site at www.caadrs.org.

Mauricio Jaramillo C.,has joined Gomez Pinzon& Asociados in Bogota,Colombia.

Tony Huydecoper,formerly of De BrauwBlackstone Westbroek,Linklaters & Alliance inThe Hague, Netherlands,as of March 30, 2001,will step over to the DutchSupreme Court asAdvocate-General.

Maxim (Mac) H.Waldbaum, Lora A.Moffatt, Lori D.Greendorfer, JosephPetersen, Kimberley K.Adams and Emily M.Spectre have joinedSalans HertzfeldHeilbronn Christy &Viener in New York City.

Sharon A. Fordham hasrecently been appointedas Chief Executive Officerof WeightWatchers.com,Inc in New York City.

To submit information for“On the Move” send anemail to bulletin@inta.orgor call +1 (212) 642-1712.

Mediation Gets Results Study of Chicago’s Lanham Act Mediation Program released

onTHEMove

FRED CARL IIIBAYER CORPORATION

Elkhart, Indiana, USA

CEREAL CITY is three indoor levelsof information on the inventionof breakfast cereal. It is also a

tribute to the brands TONYTHE TIGER, SUGAR CORNSMACKS and RICE CRISPIES,among others. The exhibits arecolorful, but impart mostly serious information on the nutritional benefits of the products.Adults will be entertained by thestories of the almost cult followingof the health treatments at the “San” in Battle Creek, circa 1900.

Children get to see mechanicalspokescreatures for the cerealsduring the song-and-info multi-

media shows. There is also anindoor playground where kids canclimb around oversized cerealboxes and gigantic FROOTLOOPS cereal shapes.

Admission is a little expensiveand the free takeaway is only a tinybox of cereal, but for regional his-tory buffs and genuine trademarklovers, Cereal City is a must-see.

For information call Cereal Cityat: +1(616) 962-6230.

“Brand Destinations” features shortreviews of trademark-related desti-nations throughout the globe. Tosubmit a review, contact INTABulletin Features Editor, Fred Carl,III at Fred.Carl.B@Bayer.com.

Brand DestinationsKellogg’s Cereal City U.S.A. Battle Creek, Michigan

Ellie Carl (daugh-ter of author)receives a hugfrom Tony theTiger at Kellogg’sCereal City.

Respondents also said they avoidmediation if the lawyers on the otherside are inexperienced, if clients areinflexible, or if the client desires toset a legal precedent.

4

Law+Practice

ITALY

Trademark OwnerDenied Domain Name TransferIn a decision that took place onJune 29, 2000, the civil courtin Florence rejected Belgianairline Sabena S.A.’s attempt toobtain the sabena.it domainname from Italian companyAgencia A & A di CastellaniAlessio.

In preparing to market ser-vices over its web site in Italy,Sabena S.A. petitioned theFlorentine court for interlocu-tory relief based on its interna-tional registration for the markSABENA.

The court initially grantedthe requested relief withouthearing the other party butsubsequently reversed itself ongrounds that one of the rulesapplied by the Italian domainname registration authority wasthe principle of “first come,first served.” The court alsonoted that Italy’s registrationauthority had rejected Sabena’sapplication to register its corporate name as a domainname by reason of earlier allocation of the “sabena.it”domain name to the defendant.

The court considered theoperational, technical, andcomputer aspects of thedomain name system and heldthose aspects to correspondmore properly to a web addressthan to an indication of origin,i.e., a trademark. Those factors,the court ruled, outweighed thelinkage between trademarks

and domain names claimed bythe plaintiff. On that basis, thecourt found that there was noinfringement of the plaintiff ’strademarks. The complaint wasdismissed, and Sabena S.A. wasordered to pay court costs.SOURCE: Alfonso D. Rivera Elzaburu,Elzaburu, Madrid, Spain; VERIFIER:Pedro Moniz Pereira, Gastao daCunha Ferreira Lda., Lisbon, Portugal

LITHUANIA

New Trademark Law Lithuania enacted a newTrademark Law that went intoeffect on January 1, 2001. TheTrademark Law is intended tocomply with European Uniondirectives and the TradeRelated Aspects of IntellectualProperty Rights (TRIPs).

The new Trademark Lawapplies to every trademark andservice mark that is applied for or registered with the StatePatent Bureau of Lithuaniaunder a national or an interna-tional registration, and to wellknown marks in Lithuania.The only exception is for marksthat applied for registrationbefore the date the newTrademark Law came intoforce. Those marks shall be registered in accordance withthe provisions of the prior1993 Trademark Law.

If an international agreementthat Lithuania has ratifiedestablishes a different require-ment than the new TrademarkLaw, then the requirement

of the international agreementshall prevail.

Some of the new provisionsof the law are: • Disclaimers are possible.• A mark may not comprise a

geographical indication if itcan mislead the public regard-ing the origin of the goods,even if the label indicates thereal place of origin or that thegoods are an imitation, of thesame kind, type or style.

• A mark may not containimportant cultural or histori-cal symbols of states and reli-gions.

• A mark may not be identicalor similar to a prior firm namein Lithuania, if the firm isengaged in an activity inwhich the goods or servicesbelong.

• The registration of a markmay be declared invalid ifobtained in bad faith.

• Marking is optional.• To protect a mark from

becoming generic, the ownerhas the right to require thatpublishers of dictionaries,encyclopedias and similarpublications indicate that theword is a registered mark.

• A court may hold that a markis well known and subject toprotection even if the mark isnot registered in Lithuania,provided evidence of use oradvertising indicate that themark is well known to the rel-evant public in Lithuania.

• A registration does not givethe right to prohibit the use ofa mark for goods that hasbeen labeled with the mark

and released into Lithuania oranother state with whichLithuania has an agreementwith regard to a single marketwith the trademark owner’sconsent. This provision shallnot apply if the trademarkowner has valid reasons fornot consenting to the furtherexploitation of goods with hismark, especially if the qualityof the goods has changed ordeteriorated.

• The trademark owner maygrant an exclusive or nonex-clusive license or sublicensefor all or some goods and/orservices for which the mark is registered. This is valid forthe entire territory or only acertain region of Lithuania.

• The license agreement shall beeffective against third partiesfrom the date the PatentBureau records the licenseagreement in Lithuania’sTrademark Register.

• The owner has the right topledge or mortgage the mark.Upon notification that thepledge has been registered in the state mortgage register, the Patent Bureau shall register the security interestagainst the mark in Lithuania’sTrademark Register and pub-lish a notice in its OfficialBulletin.

• Remedies for trademarkinfringement shall be based on the trademark owner’s lostincome and expenses and the infringing goods can betransferred to the trademarkowner. Alternatively, the trademark owner can demand

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 3

Feb 2001 Vol. 56, No. 3 • INTA Bulletin 5

compensation based on theprice of the legally sold goodsor services, which the court canincrease 200%, or 300%, if theinfringement was intentional.

• Customs, in accordance witha separate law, shall stopgoods from crossing the borders of Lithuania thatinfringe trademark, patent,design and copyright rights.

SOURCE: Marius Jason, AAA LegalServices, Vilnius, Lithuania; VERIFIER:Lina Mickiene, Legal Department ofthe State Patent Bureau of theRepublic of Lithuania, Vilnius,Lithuania.

EUROPEANCOMMUNITY

Registration Cancelledfor Bad FaithOn October 25, 2000 the FirstCancellation Division of theCommunity Trademark Office,or Office for Harmonization in the Internal Market(OHIM), issued Decision No.C000479899/1 BE NATURALdeclaring a Community trade-mark invalid on grounds of badfaith on the part of the applicantat the time the application wasfiled.

Surene Pty. Ltd of Australia,maker of confectionery andhealth food bars under the markBE NATURAL and owner ofan Australian registration for themark brought the petition tocancel the CTM registration ofthe same mark owned byMultiple Marketing Ltd. of theU.K. Multiple Marketing had

been a subdistributor of Surene’sBE NATURAL products beforeseeking the registration.

In its decision, theCancellation Division furtherdefined the principle laid downin Article 51(1) (b) of CTMRegulation No. 40/94. The definition was based on its deci-sion in Case No. C000616979/1SENSO DI DONA of October16, 2000, in which the FirstCancellation Division declaredthat “bad faith may be interpret-ed as unfair practices involvinglack of any honest intention onthe part of the applicant of theCTM at the time of filing.”

The Cancellation Divisionfound “clear evidence ofdishonesty” in light of MultipleMarketing’s previous distributor-ship relationship with Surene.The division also relied on theopinion of the April 8, 1999decision of the U.K. TradeMarks Registry grantingSurene’s petition to cancelMultiple Marketing’s U.K. registration for the same mark.

The division followed theinterpretation of bad faith setout in the explanatory notes tothe UK Trade Marks Act of1994 and OHIM found that“notwithstanding that nationaldecisions are not binding on theOffice, where both the law andthe facts are identical, the respec-tive legal assessment should notdiffer without due cause.”SOURCE: Alfonso D. Rivera Elzaburu,Elzaburu, Madrid, Spain; VERIFIER:Pedro Moniz Pereira, Gastao daCunha Ferreira Lda., Lisbon, Portugal

INTA/AseanForumCombines Practical Advice

with Realistic Practice

The world is constantly evolving and the laws

governing trademarks in Southeast Asian nations

are no exception.

That is why the International Trademark Association(INTA) and the Asean Intellectual Property Associationhave banned together to bring you the INTA Asean

Trademarks Forum on March 3, 2001.

Learn more about the compliance of Trade RelatedAspects of Intellectual Property Rights (TRIPs) and theintroduction of provisions on geographical indicationsand well-known marks in the trademark laws of theAsean countries.

In addition, not only will you gain knowledge on howto float above the sea of counterfeiters prevalent inAsean countries, but you will also develop new skills toprotect marks from counterfeiters through participationin a hands-on hypothetical case.

The program will be held at the Royal Meridien

Hotel in Bangkok from 9:30 am to 5:30 pm. Lunch

and refreshments will be served.

For registration information log on to the INTA websiteat www.inta.org/forums/2001/asean/regform.html orcontact Kee Leng Tan, Hon Secretary of the ASEANIP Association by Fax at +1 (65) 227-0116.

Pardon These CorrectionsThe Membership

Directory Changes

issued on January 1,

2001 stated thatAndrew Goldstein wasthe designee ofFreeborn & Peters inDenver, Colorado. Mr.Goldstein is actuallythe designee of theFreeborn & PetersChicago, Illinois office.

In the December 15,

2000 issue of the

Bulletin, the caption forthe chart on page five is misleading. It shouldread: “Top electronic filers of Allegations of Use and Extensions ofTime with the U.S. PTO,according to October 31,2000 data provided bythe U.S. PTO.”

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 36

lines on which practitioners may soon rely, from the appealed cases.

NeologismsIn the case of neologisms–nondictionary wordsmade up of dictionary terms–the Board of Appealdistinguishes between “directly descriptive” and“merely suggestive” neologisms. Drawing the lineis an unenviable task. Nevertheless, the Board’sdecisions reflect a high standard of examinationand a coherency of approach.

The following will not be registered as trade-marks by OHIM: TRUSTEDLINK, INVESTOR-WORLD, and COMPANYLINE. However,MEGATOUR, AIRFLOPAC, GERMANSAT,BIDWATCH and PROBANK are just a few of themarks that were allowed. The former neologismswere judged to be “clear and equivocal” of a partic-ular meaning, while the latter were judged to be“vague and allusive.”

Telle QuelleMany applicants rely on the telle quelle provisionof the Paris Convention when a mark has alreadybeen registered in home territories. The ECJ supported the OHIM spirit of independenceregarding the status of national registrations in EC member states or third countries, and confirmed this in 2000.

“Therefore, registrations in Member States, orindeed in third countries, are a factor which isnot decisive when considering an applicationto register a Community trade mark but mayonly be taken into consideration to that end.”

In most cases, national registrations were notbinding on other jurisdictions. However, there werea few exceptions. In TRAVELCARE, decided onNovember 8, 2000, the Third Board determinedthat the Examiner should have considered that theclaimed mark had been registered in almost allMember States. Furthermore, in an oppositionappeal, the coexistence of the two marks in theUnited Kingdom was regarded as a significant fac-tor militating toward eligibility for registration, inSHIELD/GOLDSHIELD, decided on September12, 2000.

Retail ServicesThe December 17, 1999 GIACOMELLI SPORTdecision paved the way for retail services to be rec-ognized in the European Community. The casewas remitted to the examination division and isnow published.

ShapesShape marks did not generally fare well with theBoards of Appeal. INTA’s position since 1997 isthat a three-dimensional shape may function as atrademark and should be afforded trademarkrights, but the current trend at OHIM appears to be a little more conservative. However, therehas been no clear indication as to what the standard for registration of shape trademarksshould be.

The Third Board decision in Bipod Design (3-D) on May 29, 2000 held that the shape of the applicant’s illustrated undergarment was distinctive enough to be capable of establishing in the minds of the relevant public a mental association between the sign and the industrialorigin of the goods. Similarly, the First Board was convinced that the “cereal waffle” shape couldalso function as a trademark in Waffelform (3-D mark) on September 22, 2000.

The Second Board held in Torch Design onFebruary 14, 2000 that without use, a product’sshape would not be an indication of origin unlessit contained features that are sufficiently differentfrom the usual shape of the product. If not, it isdescriptive and falls under Article 7(1)(c) CTMRin the same manner, as would a word mark consisting exclusively of the name of that product.An attractive shape is not necessarily regarded as inherently distinctive. The decision is subject to appeal.

Multinational Trademark Organizations:The Office for the Harmonization in the Internal Market (OHIM)CONTINUED FROM PAGE 1

Shape marks did

not generally fare

well with the

Boards of Appeal.

INTA’s position

since 1997 is that

a three-dimensional

shape may function

as a trademark

and should be

afforded trademark

rights, but the

current trend at

OHIM appears

to be a little more

conservative.

World•Update

Feb 2001 Vol. 56, No. 3 • INTA Bulletin 7

The Internet Corporation for AssignedNames and Numbers (ICANN)

EDGARDO BOURGOINGBOURGOING, LEON & LOZANO

Mexico City, Mexico

IN A YEAR WHERE CYBERSPACE

was plagued with profiteers that challenge trademark owners toguard and protect their rights, theInternet Corporation for AssignedNames and Numbers (ICANN)led the way with one of the bestefforts to protect trademark owners’ rights in cyberspace.

The UDRPOn December 1, 1999 the UDRP,applying only to the generic top-level domains, became effective forall ICANN accredited registrarsexcept for America OnLine;Namelt Corp. and NetworkSolutions, Inc. The UDRP forthese three became effective onJanuary 3, 2000.

In its first year, the UDRP hasprovided excellent protection fortrademarks that had been hijackedby web pirates. Practitioners expectthat web piracy will soon be amuch smaller problem for trade-mark owners than it has been inthe early days of the Internet.

A copy of the UDRP and therules of Procedure may beobtained at www.icann.org.

ICANN Cairo MeetingFrom March 7 to 10, 2000,ICANN held a meeting in CairoEgypt where the ICANN Boardinstructed its staff to begin draftinga contract, policy statements, andcommunications on the adminis-tration of ccTLD´s; requested theNames council to submit recom-mendations on the topics of theintroduction of new generic top-level domains, taking into account

protection of globally famoustrademarks, by April 28, 2000;and instructed the staff to prepareBylaw amendments and other res-olutions, for public comment andsubsequent Board action. Thesewould address the establishment ofa Nominating Committee to beappointed by the Board to acceptrecommendation from the Internetcommunity for At-Large ICANNDirectors, and to nominate five ormore candidates for considerationsfor selection the ICANN Board.

ICANN Yokohama MeetingOn July 16, 2000 ICANN votedto increase the number of top-leveldomain names (TLDs) availableon the Internet.

At the beginning of August 1,2000 ICANN accepted proposalsfrom any Internet user or organiza-tions interested in establishing anew TLD. The application fee wasestablished in $50,000 U.S.Dollars to cover the cost of evalua-tion and approval process and toensure that the remainder of theICANN community is notrequired to subsidize the new TLDapplication process.

From October 1 to 15, 2000the public was invited to commenton the new TLDs. Once the con-tract negotiations were completed,the cyberspace community wasready to receive the first new top-level domain names since the1980´s.

ICANN Announces SelectionsFrom New Top-Level DomainsThe addition of the new top-leveldomains is the most importantnews announced by ICANN thisyear. On November 16, 2000ICANN revealed that it had agreedto commence negotiations withseven proposed registry operators.

The applications selected forfurther negotiations with ICANNwere the following:• .aero - Societe Internationale de

TelecomunicationsAeronautiques SC, (SITA)

• .biz - JVTeam, LLC.• .coop - National Cooperative

Business Association• .info - Afilias, LLC• .museum - Museum Domain

Management Association,(MDMA)

• .name - Global Name Registry,LTD

• .pro - RegistryPro, LTD

This selection followed anextended application process inwhich members of INTA played asignificant role as part of theIntellectual Property Constituencyof ICANN.

Consequently the IPC was ableto recommend 19 of the 44applications to ICANN, includ-ing the successful .aero .coop.info .museum and .pro appli-cants. The IPC has already begun dialogues with .biz and .name registries (which were not on theirapproved list) with the goal of helping these organizations meetthe concerns of the intellectualproperty community as a whole.

In its first year,

the UDRP has

provided excellent

protection for

trademarks that

had been hijacked

by web pirates.

Practitioners

expect that web

piracy will soon

be a much smaller

problem for trade-

mark owners than

it has been in the

early days of the

Internet.

In THE NewsFootball Team Scores Victory in U.S. Federal Court The Washington Redskinsfootball team, owned by ProFootball Inc. of Maryland,U.S.A., won a procedural victoryin U.S. District Court inWashington D.C. on December11, 2000. Judge Colleen Kollar-Kotelly allowed the team to proceed with a challenge to the1999 decision by the U.S.Patent and Trademark Officethat cancelled the team’s U.S.trademark registrations.

The US P.T.O. had cancelledseven marks, including theRedskins’ logo, after they werefound to be demeaning andoffensive to Native Americans,citing section 2(a) of the U.S.Lanham Act, which prohibitsregistrations of marks “which maydisparage” people, institutions,beliefs or nationals symbols.

The team had been using theRedskins name for 67 years.

Pro Football Inc. contendsthat its REDSKINS trademarksare not disparaging to NativeAmericans, and that this provi-sion of the Lanham Act violatesfree-speech rights and is uncon-stitutionally vague.

Even if the trademark board’sdecision to cancel the marks isupheld, the Redskins will

continue to be able to use theirname. However, the team willnot enjoy the benefits of U.S.federal registration, potentiallyjeopardizing its claim to exclusiverights to the marks and clearingthe way for others to use theteam logo on clothing and otheritems. Redskins’ merchandisecurrently yields approximatelyUS $5 million in revenue annually.Source: Washington Post, “RedskinsCan Fight On To Protect Trademark,”December 12, 2000; Editor: Brian J.Winterfeldt, Dow, Lohnes & AlbertsonPLLC, Washington, D.C., U.S.A.

Football TrademarkGets Sucked into Website DisputeThe U.S. National FootballLeague (NFL) has invokedtrademark law in an effort toshut down a web site critical ofthe owner of one of its memberteams.

The site, mikebrownsucks.com,is operated by two die-hardCincinnati Bengals fans whoare angry with the way Bengalspresident Mike Brown is run-ning the sports team.

On January 2, 2001 NFLProperties, owner of NFL teamtrademark rights, sent a ceaseand desist letter to mikebrown-sucks.com. The letter objectedto the site’s use of a “minormodification” of the Bengal’sofficial team logo on the site andon clothing. The site calls this

“Fraidy Cat” logo – an obvioustweak on the image of strengthand confidence the BENGALSmark seeks to convey.

Mikebrownsucks.comresponded to the letter onJanuary 4, 2001 agreeing to dis-continue the sale of T-shirtswith the Fraidy Cat logo, butrefusing to remove the FraidyCat logo from the web site. Theletter claims that the logo is an“original piece of parody art-work, rendered by the creatorsof MikeBrownSucks.com.”

As of the writing of this arti-cle the mikebrownsucks.comweb site has two disclaimers onits home page, one stating “Thissite is guaranteed 100% NOTaffiliated with the NFL or theCincinnati Bengals!” and onestating “In case you didn’t know,this site or organization is in noway affiliated or authorized bythe Cincinnati Bengals, theNFL, or NFL Properties.”

Dave Young, co-founder ofmikebrownsucks.com, believesthe site is “protected speech, saying “the last time I checked,my [postal] zip code was in theUnited States of America.”

Mr. Young, believes his sitewas targeted due to its anti-Mike Brown views. However,according to NFL spokesmanBrian McCarthy, this is “nothingmore than an intellectual prop-erty dispute.” McCarthy states,“It would have been no differentif the site was mikebrownis-great.com.”

The NFL reports that it hassent at least 50 cease and desistletters to web sites allegingtrademark violations. Source: “Anti-Bengals Web Site DrawsNFL Legal Heat,” USA Today, January9, 2001; Editor: Lara A. Holzman,Coudert Brothers, New York City, USA.

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 38

In the News is a compilationof articles about trademarklaw and business, abstractedfrom news publications fromaround the world. This issue,the following are listed in thenews:

Washington Redskins

mikebrownsucks.com

METALLICA

Rock Group ClaimsPerfume Brand StinksRock band Metallica is in thenews again and no, it’s not relatedto the copyright suit againstNapster. This time the band hasfiled a trademark infringementsuit in U.S. District Court inLos Angeles against perfumemaker Guerlain for marketing its new perfume under the nameMETALLICA. The band isdemanding that Guerlain find anew name for its perfume, whichsells for $125 per bottle.

The suit also names topdepartment stores, includingNeiman Marcus and Bergdorf-Goodman, and seeks punitivedamages as well as destruction of all perfume bearing theMETALLICA trademark.

This isn’t the first trademarkinfringement suit filed by theband. Last year it sued Victoria’sSecret over its METALLICA lip liner and Pierre Cardin overits METALLICA tuxedo. Thosecases were settled out of court.Media reports indicate that theband has also threatened suitagainst a Waco, Texas furnituremaker doing business under thename METALLIKA. Sources: The Independent (London),“Metallica the Band Get Sniffy AboutMetallica the Perfume,” December 16,2001, and TheStar.com; Editor: JamieR. Shelden, Cooley Godward LLP, SanDiego, California, U.S.A.

Feb 1, 2001 Vol. 56, No. 3• INTA Bulletin 9

CANDIDA HINTONKAY COLLYER & BOOSE, LLPNew York City, USA

THE VALENTINE’S DAY

traditions of expressing loveand affection on February14th date back to the ancientRoman festival of Lupercalia,later linked to the feast of St.Valentine. Some say that thecustoms associated with theholiday stem from the popularbelief in medieval Englandand France that halfwaythrough the second month of the year, birds began todemonstrate mating patterns.Human versions of thesemating patterns onValentine’s Day typicallyinclude gifts of love letters,heart-shaped boxes of candy,jewelry and flowers.

The heart is also animportant symbol beyond itsValentine’s Day iconography,as it has been incorporated in many trademarks. As alittle present to readers tocommemorate the holiday of the heart, the INTABulletin has compiled someheart-shaped trademarksfrom around the world.

Marks From the HeartA Valentine’s Day Assortment

AUSTRALIA“Heartbeat Inc. Assistance

Group” Charitible Fund Raising

Reg #: 580933

GERMANYDoppel herzfruit juice

Reg #: 30021933

HUNGARYMagyar Sziv Alapitvany

Hungarian Heart FoundationReg #: 132306

USABrach Van Houting

Holding, Inc.candy

Reg #: 2261650

AUSTRALIAFrom the HeartNeedlecraft kitsReg #: 547329

JAPANWhite Kyubin drycleaning

Reg #: 029877

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 310

Trademark Office Practices Committee

Overseeing Global Examination PracticesBY JENIFER DEWOLF PAINE, PROSKAUER ROSE LLP, NEW YORK CITY, USA

THE TRADEMARK OFFICE PRACTICES COMMITTEE

has the important job of overseeing global examina-tion practices with an eye towards improving suchpractices in order to ensure adequate protection for trademark holders worldwide. In addition to important work concerning the U.S. PTO and U.S. trademark issues, the work of theCommittee particularly highlights the internationalimportance of INTA.

The Committee oversees several subcommitteeswith ambitious agendas and responsibilities. Forexample, the Examination Guidelines Subcommitteefocuses on the dissemination of the ModelExamination Guidelines, which are designed as a ref-erence for Trademark Offices that are developingexamination procedures. The Model ExaminationGuidelines were approved by the INTA Board inMay of 1998 after four years of hard work by thecurrent Chair and Vice Chair of the Committee,Keith Howick (a partner with Carpmaels & Ransfordin London) and Elizabeth Atkins (a partner withNims, Howes, Collison, Hansen & Lackert) respec-tively.

The Model Examination Guidelines have beentranslated into several languages and sent to thetrademark offices of over 70 countries, for which thesubcommittee has received several letters of apprecia-tion. The subcommittee, currently chaired by DebbieRoenning of the Norwegian Patent Office, is nowdeveloping a training program for trademark examin-ers in countries working on examination procedures.

Mr. Howick, who before becoming chair of the Committee was the first chair of the ExaminationGuidelines Subcommittee, recalls the development ofthe Model Examination Guidelines as his most mem-orable project and that of which he is most proud.

There was an enormous sense of achievementin developing the project from scratch, goingthrough inevitable periods when progress wasslow, until achieving approval by the INTABoard of a detailed document over thirtypages in length. Subsequent distribution of thedocument to Trademark Offices around theworld has highlighted a real opportunity forINTA to show its international nature.

Another subcommittee, which is working on aproject that will benefit many INTA members, isthe Trademark Office BenchmarkingSubcommittee, chaired by Esmond Hitchcock ofLloyd Wise, Tregear & Co. in London. TheTrademark Office Benchmarking Subcommittee iscurrently collecting information about trademarkoffice practice and performance around the world.The ultimate goal is to produce a database ofinformation that will provide a basis from whichto measure efficiency and to allow INTA to sug-gest changes in practice.

The CTM Subcommittee has had a large andimportant role to play during the establishment and growth of the Office for Harmonization in the Internal Market (OHIM). Chaired by Ruth Annand with the University of BristolFaculty of Law in the UK, the CTMSubcommittee analyzes and comments on draftlegislation, guidelines, practice decisions, and othercommunications issued by OHIM.

The subcommittee also monitors the day to dayrunning of OHIM and provides feedback toOHIM by participating in regular meetings of theOAMI Trade Mark Group consisting of non-gov-ernmental organizations (NGOs). The subcommit-tee also participates in discussions regarding theenlargement of the European Union on the CTM.Importantly, the subcommittee keeps the INTAmembership informed of significant CTM devel-opments through articles in the INTA Bulletin.

As a result of the its activities and regular atten-dance at meetings with OHIM officials inAlicante, the subcommittee has developed a goodworking relationship with OHIM officials.

Similarly, the U.S. PTO Subcommittee workswith the U.S. PTO to serve the interests of INTAmembers. The subcommittee is currently workingwith Chief Judge Sams of the TTAB on a projectaimed at improving the timeliness and quality ofTTAB procedures. The subcommittee is also work-ing with the U.S. PTO to improve examination,and is independently working on a plan to increasepublic use of the U.S. PTO electronic filing sys-tem.

The U.S. PTO Subcommittee is chaired by

COMMITTEE Comments

“My advice to asuccessor wouldbe to keep asense of humorand keep a senseof proportion, aswell as doing acourse in speedreading!”

KEITH HOWICKCOMMITTEE CHAIRCARPMAELS & RANSFORD

LONDON, UK

AMITABHA SENAMITABHA SEN & CO.New Delhi, India

AMITABHA SEN is an attorneyat the law firm of AmitabhaSen & Co. in New Delhi,India. He currently serves onthe International AmicusSubcommittee of the Issues& Policy Committee.Through his committee, healso gets involved with theAsia Pacific LegislationAnalysis subcommittee, theBeyond Domain Names subcommittee, and theAMESEC subcommittee.

Mr. Sen was nominatedfor the Member Spotlight byAnne Gundelfinger because,in addition to playing anactive role which entailedvolunteering for many tasksin his first year on the Asia-Pacific Team of his subcom-mittee, Mr. Sen drafted therecommendation to file theamicus brief in the Ikea v.Cinet case in China.

I have worked with trade-marks: for 6 years.

I began working withtrademarks because: it is afascinating field, especiallyin India. The scope andopportunities for IntellectualProperty professionals havegreatly increased with theopening up of the India market to foreign investment.My firm has developed fromone with little IP experienceto one that includes an entiredivision devoted to IntellectualProperty. Headed by Mr. AjaySahni, it is considered to be anauthority on IP rights in India.

My first job in trademarkswas: working on infringe-ment proceedings for the“water drop” trademark of

Marley Cooling Tower, awholly owned subsidiary ofUnited Dominion Industries(UDI). Interestingly, Iworked for DominionBridge, the predecessor ofUDI in Canada as an engi-neer after completing myMaster’s degree inEngineering.

I’ve been involved with INTAactivities for: 6 years.

I’ve enjoyed working on the Amicus CuriaeSubcommittee - AsiaPacific because: INTAcommittees are composed ofhighly dedicated trademarkspecialists. The knowledgeand professionalism of themembers and chairs is impressive. It is an intense, yet satisfying, experience.

By my work on theCommittee, I hope to:exchange ideas with thediverse group of professionalsinvolved and to share withthem the excitement of newadvances in the field. Inaddition, I would like to contribute to the growth of INTA as a organization.

One interesting thing abouttrademarks in India is: thatthe country has opened itsborders to the outside world.Changing laws and newchallenges are now part of the daily routine. Globalmarks in India enjoy thesame privilege and protectionaccorded to them worldwideunder international conven-tions.

MEMBER Spotlight

Member Spotlight featuresthe exceptional contribu-tions of INTA committeemembers. CommitteeChairs, Vice Chairs andSubcommittee Chairs are invited to suggestnames for consideration in Member Spotlight. To suggest a name,please contact BulletinManaging Editor NaeranRubio by e-mail atBulletin@inta.org orphone at +1(212) 642-1712.

BY MARY DE LONGIS,UDV NORTH AMERICA, INC., Stamford, Connecticut, USA

Feb 1, 2001 Vol 56, No. 3 • INTA Bulletin 11

Barbara A. Friedman of Morgan, Lewis &Bockius LLP in Washington DC, who recalls several successful projects of the subcommit-tee in working with the U.S. PTO that havedemonstrated “not only the strong dedica-tion of the U.S. PTO officials to quality andtimeliness objectives, but also the importantrole that INTA plays in achieving theseimportant objectives as well.”

These projects include her testimony tothe U.S. PTO regarding INTA’s position onproposed regulatory changes arising out ofthe Trademark Law Treaty, much of whichwas accepted and incorporated into the regu-latory changes; working with Chief JudgeSams of the TTAB in developing proposedchanges to TTAB procedure to improve time-liness and quality; and working on and arriv-ing at the proposed fee change structure thatwas accepted by the U.S. PTO.

Fiona Crawford, chair of the ClassificationSubcommittee, recently successfully encour-aged the UK Trademarks Registry to acceptretail services as registrable classification.These efforts are now being targetted onOHIM and national offices still refusingsuch marks.

In addition to the hardworking subcommittee chairs, Mr. Howick also notedthe valuable contributions and hard work ofthe INTA staff members: Bruce MacPherson,Mike Heltzer, Caren Fitzgerald, ChehrazadeChemcham, and John Kent, all whom Mr.Howick says “provide great knowledge,expertise and encouragement.”

Although the Committee certainly has a large job and immense responsibility, ChairKeith Howick finds it all worth it: “It hasbeen thoroughly enjoyable, and a real privilege to work with such a talented and positive group of people. My advice to a successor would be to keep a sense of humor and keep a sense of proportion, as well as doing a course in speed reading!”

The Community

Trade Mark

EDITORS: PETER BROWNLOW, JULIAN

GYNGELL, ALLAN POULTER

Let 17 expert Europeanpractitioners lead youthrough the intricacies ofCTM law, practice and pro-cedure in this newly updat-ed, expanded, and still sin-gle most comprehensiveresource on the subject.($175 Members; $225 Non-Members)

Protection of

Nontraditional Marks

AUTHOR: THOMAS ARDEN

This timely treatment tracksboth development of theregistration and prosecu-tion of sound, color, scent,motion, and productdesign marks in theUSPTO, and challenges totheir validity in the courts.($69.95 Members; $83.95Non-Members)

Trademark Searching

AUTHOR: GLENN GUNDERSEN

In its updated and expand-ed second edition, thispractical and strategicguide not only effectivelytargets the “why, when,and how” of the rationaleand techniques of theentire trademark searchprocess, it offers timelyinsights on use of theInternet as a research tool,and analysis of evolvingcase law. ($79.95 Members;$105.95 Non-Members)

Trademark Law

& the Internet

EDITORS: LISA CRISTAL &

NEAL GREENFIELD

The definitive treatment on cutting edge issues isbetter than ever with itsOctober 2000 supplement.Invaluable, it offers ground-ing on core issues andcommentary on evolvingcase law. ($120 Members;$150 Non-Members)

ReadingReview

datesTO

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Basics of U.S.Trademark Law ForumFeb 6–Feb 7, 2001Washington, D.C. USA

Basics of TrademarkLitigation ForumFeb 8–Feb 9, 2001 Washington, D.C. USA

TrademarkAdministratorsRoundtablesFeb 19–Mar 2, 2001 Multiple Locations

Roundtable in GermanyMarch 1 Munich, Germany

Challenges of the Future to Trademark LawMar 5–Mar 6, 2001 New York City, USA

For more information log on to the INTA web site atwww.inta.org or callMembership Serivices, +1 [212] 768-9887,Ext 157 or Fax: +1 [212] 768-7796

INTA Bulletin • Feb 1, 2001 Vol. 56, No. 312

1133 Avenue of the AmericasNew York, NY 10036-6710 USA

Tel: 212.768.9887 Fax: 212.768.7796

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BULLETIN EDITORIAL BOARD

John CrittendenEditor in Chief

Cooley Godward LLP, San Franciscojcrittenden@cooley.com

Thomas DrescherExecutive Editor, Law & Practice:

The AmericasSquire Sanders & DempseySan Francisco, California

Olga NedeltscheffExecutive Editor, Law & Practice: Europe,

Middle EastThe Philip Morris Management Group,

Rye Brook, New York

Trevor StevensExecutive Editor, Law & Practice: Asia, Africa

Davies Collison Cave, Sydney

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Bayer Corporation, Elkhart, Indiana

Naeran RubioManaging Editorbulletin@inta.org

To reach an INTA department by e-mail, please contact:

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© 2001 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 InternationalTrademark Association

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