Blog

Friends, Romans and…erm….trademark attorneys, lend me your ears.

There are few things in life that interest me as much as observing the practice of law. I love the ‘certain uncertainty’ of it. The precise nature of enquiry combined with measured (or sometimes not so measured!) subjectivity. It is predictably unpredictable and expressed in stilted archaic language often sadly incomprehensible to those on the receiving end of its tender judgement.

The debate between which countries are ‘first to file’ and ‘first to use’ is partially a misnomer from the outset in the sense that the rights to all trademarks are dependent on use - ‘use it or lose it’ is a pertinent expression in this context.

In the trademark world, as indeed in life in general, everything is interconnected and small changes in one area can lead to knock on effects in another. The business world is global and for many companies, expanding their customer base across regions is a necessary goal for commercial success. It’s critical to understand the potential implications of changes to the trademark process in key regions for your business around the world.

In saturated markets, many brands have to push the boundaries to be heard above the cacophony of marketing noise. Kmart’s ‘ship my pants’ and Kraft’s ‘get your chef together’ are genius examples of how using risqué wordplay can create catchy advertisements and brand awareness. But how far can the envelope be pushed?

Michael A. Einhorn is an economic consultant and expert witness in the areas of intellectual property, media, entertainment, and technology. He received a B.A. from Dartmouth College and a Ph. D. in economics from Yale University, and is a former professor of economics at Rutgers University. He is the author of seventy articles related to intellectual property and economics, as well as the book Media, Technology, and Copyright: Integrating Law and Economics. Dr. Einhorn has worked on matters in trademarks, trade secrets, and false advertising that have involved Samsung Electronics, Dish Network, Madonna/Material Girl, Jakks Pacific, Kische USA, Oprah Winfrey/Harpo Productions, Avon Cosmetics, The New York Observer, the Kardashians/BOLDFACE Licensing), The Weather Channel, Hasbro, J. Walter Thompson/Banco Popular, Kia Motors, Coca Cola, and General Automobile Insurance Company.

From the vantage of an economic expert active in valuation of intellectual property, this blog reviews some issues in remediation in U.S. trademark law, with particular regard to litigation concerns that damage experts should be made aware of. This blog is a shortened version of a paper available online that includes fuller analysis and citation, and is the first of a series of related blogs that will appear on this website.

In many regions, relevant trademark regulations apply to the creation, application, registration and use of all trademarks irrespective of their specific industry. In relation to pharmaceutical trademarks, this can pose something of an issue, given the additional demands and regulatory frameworks with which they must comply. The creation then of a new brand name for a pharmaceutical product is a complex journey, fraught with dangers at every step. First amongst these is that a pharmaceutical product will not have a single name.

Not all trademarks are created equally and this is particularly true in the case of pharmaceutical trademarks. While all potential trademarks face similar challenges in development and registration, there are some unique issues facing those developing new brands in Class 5.

In the IP world, the issue of counterfeits is a huge one. It is perhaps not hyperbolic to view it as an epidemic for which, somewhat ironically, we do not have an effective vaccine. Across the world and in almost every B-2-C industry, businesses, representative bodies and governments are battling the problem with a variety of initiatives. These efforts are underpinned by the certain knowledge that many counterfeit products are outright dangerous.

Trademark exclusivity which is enabled by registration, is territorial. Thus companies need to apply to each country one by one within the scope of their market strategies in order to protect their trademarks.

It’s often said that 80% of New Year’s resolutions have gone out the window by February. There are probably a multitude of reasons why this should be so but high on the list is the fact that most resolutions are outcome goals rather than process goals.