Intellectual Property Alternative Dispute Resolution Lawyer & Attorney : IP ADR : The IP ADR Blog

(image from the U.K. Trademark Application Blog)

What's the difference between an IP arbitrator or mediator and a general commercial arbitrator and mediator?  Some of us -- like Les Weinstein and Michael Young -- have devoted substantial parts of their careers to patent (Les) and trademark (Michael) litigation.

The rest of us -- the Hon. John Leo Wagner (Fed. Magistrate, Ret.), Eric van Ginkel, the soon-to-be-added Jay McCauley and I -- have litigated patent, trademark, copyright and other IP cases in the course of our more general commercial litigation careers.

What unites us is an avidity for the topic and an interest in keeping up with the law.  So in addition to being the quick studies that all general commercial litigators are, we're already all the way (Les, Mike) or half way there when you lay your fabulously instructive briefs on us.   

To help our clients and ourselves, we print tutorials from time to time by law firms who our statistics page tells us are reading our blog.  Today we excerpt and link to Lindquist and Vennum's terrific Trademark tutorial -- The Trademark Dilution Act of 2006 -- A Summary of Changes Affecting Trademark Owners

When is a mark famous?

A mark is famous if the general consuming public of the United States widely recognizes it as a designation of a source of goods or services.

In determining whether a mark is famous enough to merit protection under the Trademark Dilution Revision Act, a court may consider all relevant factors, including:

1. The duration, extent, and geographic reach of advertising and publicity of the mark, including whether the mark is advertised or publicized by the owner or third parties
2. The amount, volume, and geographic extent of sales of goods or services offered under
   the mark 
3. The extent of actual recognition of the mark 
4. Whether the mark was registered

Because no registry of famous marks exists, determining whether a particular mark is famous requires the court to evaluate these factors on a case-by-case basis.

What constitutes tarnishment and blurring?

Dilution by tarnishment is an association arising from the similarity between the famous mark and the diluting mark that harms the reputation of the famous mark—that is, when the diluting mark is used in connection with undesirable or inferior goods or services that could create a negative association with the use of the famous mark.

Dilution by blurring is an association arising from the similarity between the famous mark and the diluting mark or trade name that impairs the distinctiveness of the famous mark. Dilution by blurring reduces the connection in the minds of consumers between the famous mark and the goods and services for which it is used.

In determining whether a mark is likely to cause dilution by blurring of a famous mark, a court may consider all relevant factors, including:

1. The degree of similarity between the mark or trade name and the famous mark 
2. The degree of inherent or acquired distinctiveness of the famous mark 
3. The extent to which the owner of the famous mark is engaging in substantially
   exclusive use of the mark 
4. The degree of recognition of the famous mark 
5. Whether the user of the mark or trade name intended to create an association with the
   famous mark 
6. Any actual association between the mark or trade name and the famous mark

For the remainder of this excellent article, click here.

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Recently, I've noticed Yahoo telling me the number of seconds I've been waiting to get my hands on my email when it doesn't appear instantaneously.  I'm  a little abashed when I realize I'm already getting annoyed by the time Yahoo  informs me I've been waiting for only 22.546 seconds.  

Now Be Specific debunks the myth of a google generation of computer scholars who search the  technological Library of Alexandria with grace and ease.  (pictured here:  the new Alexandrian library)

Not only are our children impatient with the internet's search and navigation functions, so are those who used to spend their time in dusty archives after laboriously flipping through the tattered index cards of the Dewey Decimal System -- University Professors.

We are all, says a recent report from the Brits, not only lacking the "critical and analytical skills [necessary] to assess the information that [we] find on the web" but so impatient that we demonstrate "zero tolerance for any delay in satisfying [our] information needs.  Click here for the full short report (wait time:  3.5 seconds).

This is not good news for IP negotiators.  Our impatience to "get on with it" is probably the primary reason for the breakdown of negotiations for the settlement of IP litigation. 

This is not surprising because no one likes to sit for long in the uncomfortable (but creatively generative) process of exploring the business interests of our bargaining partners when we are pretty certain of the righteousness of our cause and the demonic nature of our opposition.

In survey after survey, lawyers report that the best mediators are patient and persistent.  This is reason alone to bring your IP opponents over to your favorite mediator for whom patience is a central daily practice. 

Thanks to Les Weinstein for passing Be Specific along to us.  We'll be adding it to our Favorite Blogs Link this weekend.

Off to work!

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As you can tell from our IP ADR Dictionary here, we're word and definition freaks at the IP ADR Blog.

So we're pleased to pass along IP ADR Blogger Les Weinstein's recent note to take a look at the latest Intellectual Property Dictionary.

This book brings together articles by leading international scholars from diverse disciplinary perspectives who focus on the legal, social and cultural dimensions of intellectual properties - including patents, copyrights, trademarks, trade secrets and rights of publicity.

These articles employ a creatively eclectic approach to the study of intellectual property law and policy viewed through the lenses of traditional doctrinal analysis, historical perspectives, critical cultural study, and empirical examinations of intellectual property in action.

The volume also directs critical attention to the significance of intellectual property in contemporary processes of globalization and political economy.

The author and board of editors on this one form a pretty impressive group.

Author Rachel Gader-Shafran has a BA in Political Science from UCSB, an MA in applied linguistics from UCLA and a JD from American University, Washington College of Law, cum laude. The author has taught as an Adjunct Professor at American University, Washington College of Law and has published The Intellectual Property Law Dictionary with Law Journal Press and The International Students' Survival Guide to Law School in the United States . . .  continue here.

Board of Editors

Christine Haight Farley is an Associate Professor of Law at American University, Washington College of Law. Professor Farley teaches courses in Intellectual Property Law, U.S. Trademark Law, International and Comparative Trademark Law, and Law and the Visual Arts . . . continue here. 

Peter Jaszi teaches at the Washington College of Law of American University in Washington, D.C., where he also directs the Glushko-Samuelson Intellectual Property Law Clinic. He specializes in domestic and international copyright law. Prof. Jaszi is an experienced copyright litigator and a frequent speaker to professional audiences in the United States and abroad. . . continue here.

Leonard Klein is Legal Research Librarian and Intellectual Property Subject Specialist at the Jacob Burns Law Library of George Washington University Law School. In addition to providing research support to faculty, students, alumni and visiting scholars, he selects new resources for the Library's extensive intellectual property collection. . . . continue here. 

Eliav Korakh is a partner at Borochov, Korakh, Eliezri & Co. He specializes in Patent Law and deals with the USPTO and international agencies in his practice. He has particular experience in the areas of computer hardware and software, telecommunications, optics, applied mathematics and physics, electronics and medical devices, and business and commercial Law. . . . continue here.

Here's the link to purchase the book if you'd like to add a hard copy IP Dictionary to your bookshelf.

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The IP ADR Bloggers have just gone "live" with our new web site:  ipadr.com.

Come on by and check us out!  

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Take it or Leave It?  (cartoon by Charles Fincher at LawComix.com) 

Don't get caught making unproductive settlement moves, learn from some of the best in the U.K., L.A. and Half Moon Bay in October and November. 

For our U.K. readers, Victoria Pynchon will be speaking on IP ADR in the USA: Big Ideas and Fresh Perspectives on 8 October 2007 at the Hatton Conference Centre in London.  Click here to see the day-long schedule and to sign up for early-bird discounts.  A downloadable .pdf of the conference schedule is in our sidebar to the left.

For our Southern California readers, a full-day seminar on Settlement Techniques that Give You the Winning Edge with IP ADR Bloggers Victoria Pynchon and Les J. Weinstein; Judges Alexander Williams, III (full-time settlement Judge) and Victoria Chaney (Ass't Supervising Judge of the Los Angeles Complex Litigation Court); and neutrals the Hon. John Leo Wagner (Federal Magistrate, Retired) and Jay McCauley, will take place at the Wilshire Grande in downtown Los Angeles on November 13, 2007.  Sign up here.  

If your practice crosses over with employment issues, join us for ALFA International's Labor & Employment Practice Group Seminar entitled "Employer of the Year" or "the Office": Which One Are You? (.pdf of the event brochure) at the Half Moon Bay Ritz-Carlton on October 3-5, 2007.

Once again, Victoria Pynchon will be speaking, this time with Joshua Frank, Senior Legal Counsel to DHL (moderated by James M. Peterson of San Diego's Higgs, Fletcher & Mack, LLP) on the Pro's and Con's of Employment Arbitration.

You'll have to get up early for this one -- it's scheduled from 8:45-10:00 a.m. on October 3 -- but we promise you a lively debate and fresh perspectives on an issue that might make corporate and litigation counsel want to rip those arbitration clauses out of their and their clients' employment agreements. Then again, you might just decide to rewrite those ADR Clauses altogether so that you get the best possible dispute resolution mechanism for your and your clients' work-force.

Either way, the time is ripe for reconsidering and revising the way in which you and your clients handle disputes with their employees.

JOIN US!!

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Les Weinstein, who remains affiliated with the law firm of Shelton Mak Rose Anderson PC while arbitrating national and international intellectual property cases with the American Arbitration Association, was my boss, mentor and teacher more than twenty years ago (yikes!) when we practiced together at Pepper, Hamilton & Scheetz.

It's a pleasure and privilege to welcome Les as one of the contributors to the IP ADR Blog.  Since meeting one another again in the ADR world, Les and I have co-mediated copyright and patent infringement cases and I have assisted him with some of the most sophisticated and complex arbitrations, including a billion dollar infringement case between two IP industry titans. 

Les has over 40 years of experience as a trial, counseling and appellate lawyer specializing in patent, copyright and trademark law, as well as the law of competition (antitrust, trade secrets, unfair competition and unfair trade practices). Mr. Weinstein's knowledge of patent law and practices is particularly deep.

He is not only registered to practice before the U.S. Patent and Trademark Office, he had early experience as a Patent Examiner, before which he worked as an engineer to ITE Circuit Breaker Co.

No stranger to the courtroom, Mr. Weinstein worked for the U.S. Department of Justice in Washington D.C. under an appointment to the Attorney General's Honor Program. It was there that Mr. Weinstein earned his trial stripes before going on to a long and distinguished private career as a partner with McKenna, Conner & Cuneo; name partner with Bleecher, Collins & Weinstein, and Senior Partner with the law firms of Pepper, Hamilton & Scheetz, Graham & James LLP, Squire Sanders & Dempsey LLP and Sheldon Mak.

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