Managing Intellectual Property’s Global Trademark Forum, held on March 14, included close to 150 intellectual property practitioners discussing international filing strategies and brand enforcement considerations.
Presenters emphasized that business priorities should play heavily in the choice to register, particularly considering limited budgets, rebranding or expansion efforts. Beyond trademark registrations, other types of IP are important to consider. “Hopefully there will be broader trade dress protection going forward,” said Danny Awdeh, a partner at Finnegan, referring to the U.S. Supreme Court’s 2017 Star Athletica decision. “The evidentiary burden of trade dress can be quite high,” he explained. “Design patents have a narrower scope of coverage, but can be good in the interim, and of course copyright can’t be overlooked”.
Monitoring and enforcing marks is also quite important. “If you really want to build the intangible value,” according to Naresh Kilaru, a partner at Finnegan, “you need a strong enforcement programme”. Kilaru said that in the United States, brands used to be able to get away with not enforcing their marks if an infringer wasn’t a competitor. However, “the burden has got higher since the Federal Circuit’s 2015 Juice Generation decision,” he explained.
He said, now “enforcement is not an option. You have to monitor your marks closely, because each notice could start the clock, and constitute actual notice for the purposes of laches”. Monitoring and enforcing can be expensive, but Kilaru stressed: “You can’t put a value on the failure to enforce. The business will ask you about the ROI, and you have to tell them that, unless you’ve done the housekeeping over the years you won’t be able to enforce. If the other side can put forward evidence of credible third-party use, it eviscerates your brand value”. However, the group discussed the importance of considering brand value in working to avoid coming across as a trademark bully with too strong of an enforcement approach.