• Share
  • Email
  • Embed
  • Like
  • Save
  • Private Content


Flash Player 9 (or above) is needed to view presentations.
We have detected that you do not have it on your computer. To install it, go here.

Like this presentation? Why not share!

Intellectual Property Issues in International Commerce






Total Views
Views on SlideShare
Embed Views



0 Embeds 0

No embeds



Upload Details

Uploaded via as Microsoft PowerPoint

Usage Rights

© All Rights Reserved

Report content

Flagged as inappropriate Flag as inappropriate
Flag as inappropriate

Select your reason for flagging this presentation as inappropriate.

  • Full Name Full Name Comment goes here.
    Are you sure you want to
    Your message goes here
Post Comment
Edit your comment

    Intellectual Property Issues in International Commerce Intellectual Property Issues in International Commerce Presentation Transcript

    • Intellectual Property Issues in International Commerce
      • International Law Section
      • Idaho State Bar
      • October 27, 2011
      • Brad Frazer
      • Hawley Troxell
      • 208.388.4875
      • [email_address]
    • Why do you care?
      • Hypothetical: Your client starts selling its patented mousetrap in the U.S. under the trademark “Mouseraser.” Six weeks later, you learn that a company in Sweden is selling the patented mousetrap there under the brand name “Mousey-Racer.”
      • Hypothetical: Two months later, that same Swedish company starts selling mouse poison in the U.S. under the “Mousey-Racer” brand. That same company also registered the domain names “mouseraser.se,” “mousey-racer.com” and “mouseraser.cn.”
    • Types of Intellectual Property (“IP”)
      • Patents
      • Trademarks
      • Domain Names (and Twitter usernames? Facebook pages?)
      • Copyrights
      • Trade Secrets
      • IP created by contract (“NDA’s”)
      • Focus today on trademarks and domain names
    • What are trademarks?
      • A trademark or service mark is any word, slogan, logo, symbol, sound, color, smell, or other item that serves as a means of commercial source identification of a product or service.
      • E.g., Nike, Coke, Geico Gecko--or Geico Cavemen
    • Types of U.S. Trademark Protection
      • Common Law™ - unregistered
        • In the U.S., trademark rights arise through use, not through registration.
      • State Registration – the “truly local”
      • Federal Registration® - interstate
      • Registration in the U.S. requires acceptable “trademark use.”
    • Advantages to Federal (U.S.) Registration:
      • Constructive notice nationwide of TM owner's claim.
      • Evidence of ownership of the trademark.
      • Jurisdiction of the federal courts may be invoked.
      • Registration can be used as a basis for obtaining registration in foreign countries.
      • Registration may be recorded with U.S. Customs Service to prevent importation of infringing foreign goods.
    • Infringement
      • Is the defendant using a confusingly similar trademark to sell or advertise a related line of goods or services?
      • Is there a likelihood of consumer confusion as to the source of the infringing goods?
    • What are domain names?
      • A domain name correlates words to a numeric identifier called an “IP Address” that tells your web browser where to look for a particular web site.
      • Top-level domains, e.g., .com and .net (gTLDs).
      • Second-level domains, e.g., “Amazon.”
      • ccTLDs—e.g., .tw (Taiwan), .uk (United Kingdom), .cn (China), .se (Sweden); also are Top-level Domains
      bfrazer@hawleytroxell.com / @bfrazjd
    • Are trademarks and domain names the same thing?
      • Amazon.com is both
      • What about Golden Acres Retirement Community, whose website URL is boiseretirement.com?
      • Consider the impact of the new gTLDs!
    • International Considerations: Always protect your IP in the United States first!
      • Creates priority dates for other jurisdictions.
      • Utilizes a familiar, definitive regulatory and statutory scheme.
      • Builds value and good will.
    • International Considerations: Always search in the other jurisdictions before commencing commerce!
      • Dangers: infringement liability
      • Dangers: impoundment
      • Dangers: injunction
    • International Protection--Trademarks
      • Trademarks are “territorial.”
      • National filings
      • Centralized filings
        • Madrid Protocol (EU is now a contracting party)
        • Community Trademark (EU)
    • International Protection—Trademarks (cont’d)
      • “ First-to-File” Jurisdiction?
        • E.g., China, Germany, Japan
        • Versus a “common law,” first-to-use jurisdiction (U.S., Canada, Australia)
        • Conflicts are inevitable
      • Many times a combination of approaches is needed.
    • International Protection—Domain Names
      • Aggressive and proactive registration of ccTLDs (.co is a lot like .com)
        • ICANN UDRP—maybe; policies vary by registrar and registry. See http://arbiter.wipo.int/domains/cctld_db/index.html
      • Anticybersquatting Consumer Protection Act?
    • Other International Issues
      • Licensing and IP Ownership
      • Piracy
      • Agreement on Trade Related Aspects of Intellectual Property Rights  (TRIPS)
      • Anti-Counterfeiting Trade Agreement (ACTA)
        • Signed October 1, 2011, by United States, Australia, Canada, Japan, Morocco, New Zealand, Singapore, and South Korea
      • Strategy Targeting Organized Piracy (STOP!) ( http://www.stopfakes.gov/ )
      • U.S. Customs and Border Protection
    • Take-Aways
      • Protect IP in the United States first.
      • Perform searches in target jurisdictions.
      • Protect IP in other jurisdictions quickly.
        • Note on patents and disclosures . . .
      • Use Treaties and Border Enforcement.
    • Q & A