Trade Dress Rights Protection: Understanding Enforcement Actions
A trademark is a recognizable sign, symbol, and/or design that is legally registered or established to represent a company or product. Trade dress, is a type of trademark and a form of intellectual property that refers to the overall visual appearance, packaging and design of a product. Just like a trademark, trade dress is regulated under the Lanham Act and can be registered to signify the uniqueness of a certain product. A registered trade dress entitles the owner a nationwide constructive use, a notice over the trade dress that prevents others to use or register your trade dress and a 5-year "incontestable status", thereby, eliminating the possibility of someone challenging the owner’s registration.
However, due to lack of uniformity in the treatment of trade dress infringement claims, it is highly recommended for trade dress owners to carefully consider how courts address issues concerning trade dress and ensure a robust defense and remedies against possible risks and threats.
In this LIVE Webcast, a panel of thought leaders and professionals assembled by The Knowledge Group will provide the audience with an in-depth analysis of the fundamental aspects of Trade Dress Rights Protection. Speakers will present the important issues and enforcement actions with respect to this significant topic.
Key topics include:
- Trade Dress Rights
- Bases and Standards for Trade Dress Protection
- Enforcement of Protectable Trade Dress
- Requirements for Trade Dress Infringement
- Pre-Filing Issues and Considerations
- Addressing Trade Dress Infringement Claims
- Best Practices for Enforcing Trade Dress Rights
Kennedy K. Luvai, Shareholder
Parsons Behle & Latimer
- What counts as protectable product design trade dress, and what does not.
- Examples of protectable product design trade dress, both registered and unregistered
- Differences between product design trade dress and product packaging trade dress
- Benefits of obtaining product design trade dress protection in the United States.
- Considerations for, and advantages of, obtaining registration of product design trade dress with the USPTO.
- Challenges of prosecuting unregistered product design trade dress infringement claims as compared to other types of trade dress infringement claims.
- Functionality considerations and competitors’ “right” to copy functional features of product designs
- Potential challenges in establishing the required secondary meaning (acquired distinctiveness)
- Best practices in product development and product promotion/advertising so as to increase the likelihood of obtaining product design trade dress rights.
Sonia Y. Lee, Co-Chair, Litigation Department
Raines Feldman LLP
- Trade dress protection covers “look and feel”
- Expansion of trade dress protection into websites and e-commerce
- Interaction between the Lanham Act and Copyright Act for trade dress claims based upon website and e-commerce.
Daniel Hwang, Patent Attorney
GLOBAL IP Counselors, LLP
- Background Considerations
- Pros/Cons for Choosing Trade Dress
- Analysis with Client
- Novel Invention for Design Patent Protection
- Chances for TM Registration
- Enforcement Considerations
- Global Market Analysis 80/20
- Supply/Manufacturing Partners
- Enforcement Strategy
- IP Portfolio
- Online Marketplace Sales
- Actual Competitors or One-Offs
- Extent of Damage
- Likelihood of Success
- Assess potential brand damage
- Risk Analysis
- Best Practices for Enforcing Trade Dress
- Understand sales and marketing history and client partnerships
- Prepare and file long term strategy including design patent
- Enforce and be ready to file suit
Who Should Attend:
- Trade Practicing Lawyers
- Trade and IP Counsel
- Risk and Compliance Officers
- Trademark Owners
- Industry Watchers
- Design Patent
- Other related/interested Professionals and Organizations
Mr. Luvai is a registered patent attorney with an undergraduate degree in computer science. His practice concentrates on intellectual property litigation involving copyrights, trademark and trade dress, patents, trade secrets, and right of publicity. He also advises clients on a broad range of strategic legal and business matters related to intellectual property and related issues. He is licensed to practice in the states of Idaho, Utah, Oregon and Washington. Mr. Luvai is a past chair of the Intellectual Property Section of the National Bar Association for the 2014-2015 bar year, and is an adjunct professor at the Concordia University School of Law where he teaches intellectual property courses. He has been recognized as a “Rising Star” in Intellectual Property Litigation by the Mountain States Super Lawyers in 2014 and again in 2015.
Mr. Luvai is a registered patent attorney with an undergraduate degree in computer science. His practice concentrates on intellectual property …
Sonia Y. Lee is an equity partner, co-chair of the litigation department, and a trial attorney with Raines Feldman LLP, with a B.S in Economics from the University of California at Berkeley. Prior to joining Raines Feldman LLP, Ms. Lee was a partner with Browne Woods George LLP and an associate at Christensen Miller Fink Jacobs Glaser Weil & Shapiro LLP. Ms. Lee’s practice focuses on complex business, intellectual property, entertainment, and unfair competition litigation. Ms. Lee has extensive experience with contract disputes, trademark, trade dress and copyright infringement claims, and trade secret misappropriation in numerous industries.
Ms. Lee has prosecuted and defended actions on behalf of individual and corporate clients involving trademark and trade dress infringement claims in both California State and Federal Courts.
Ms. Lee has experience handling matters through trial and appeal, as well as in various arbitration forums including JAMS, the American Arbitration Association, ADR Services, and the Independent Film & Television Alliance (formerly AFMA).
Sonia Y. Lee is an equity partner, co-chair of the litigation department, and a trial attorney with Raines Feldman LLP, …
Daniel Hwang is a U.S. patent attorney with a B.S. in chemical engineering focusing his practice on both patent and trademark litigation and prosecution.
He has experience with IP matters in several industries including consumer retail goods, IT, medical devices, energy, and construction equipment.
Mr. Hwang practices the full scope of IP law, including issues related to patent, trademark, copyright, trade secret, trade dress, unfair competition, and false advertising matters.
He has managed domestic and international trademark portfolios for global corporations and counseled clients on their international brand portfolio development and protection strategies.
Mr. Hwang has handled intellectual property proceedings before both state and federal courts, the Trademark Trial and Appeal Board and the Patent Trial and Appeal Board.
He has participated in hundreds of IP enforcement matters including counterfeit and gray-market/parallel import matters both in the U.S. and in foreign jurisdictions.
Daniel Hwang is a U.S. patent attorney with a B.S. in chemical engineering focusing his practice on both patent and …
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About Parsons Behle & Latimer
Parsons Behle & Latimer offers national expertise in a regional law firm. In addition to being the largest Utah-based law firm, Parsons Behle & Latimer is one of the oldest and best known firms in the Intermountain Region, offering litigation and business law services since 1882. The firm offers the resources and capabilities of a large and diverse firm, coupled with the highest levels of accessibility and responsiveness. With more than 135 attorneys, it brings a depth and range of experience in the following major areas: Banking & Finance; Bankruptcy & Restructuring; Corporate Transactions & Securities; Energy; Environmental & Natural Resources; Employment & Labor; Government Relations & Lobbying; Health Care; Intellectual Property; Litigation; Real Estate; and Tax law. Headquartered in Salt Lake City, Parsons Behle & Latimer has offices in Boise, Las Vegas, Phoenix, Reno and Washington, DC.
About Raines Feldman LLP
Raines Feldman LLP is a team of highly experienced transactional and litigation attorneys from some of the nation’s largest and most elite law firms.
Working in an innovative and collaborative environment, the attorneys at Raines Feldman LLP draw on years of ground-breaking business transactions and high-profile litigation victories to provide creative and forceful representation. They close deals and try cases when other firms delay or fold.
Based in Los Angeles, the firm’s practice extends both nationally and internationally. It represents and advises public companies, privately held companies, as well as individuals. Its clients are leaders in the areas of real estate, finance, entertainment, new media, fashion, technology, sports, hospitality, and consumer products.
About GLOBAL IP Counselors, LLP
Global IP Counselors works closely with international firms to obtain, enforce, and leverage our clients’ IP rights efficiently and effectively throughout the globe. The Washington D.C. office provides a strategic location close to the U.S. Patent and Trademark Office and key courts for IP enforcement.
Global IP offers clients the full range of trademark development and brand protection services including global trademark portfolio management, enforcement, and litigation. We provide worldwide clearance, prosecution, and maintenance for all types of trademarks and service marks across a wide range of industries. The firm offers comprehensive brand strategies involving domain names, trade dress, and product design. We bring and defend Opposition and Cancellation cases at the Trademark Trial and Appeal Board (TTAB).
Global IP protects client intellectual property rights and combats infringement worldwide through comprehensive enforcement strategies. The firm aggressively engages in intellectual property litigation involving patent, trademark, trade secrets, and copyrights in key courts throughout the country. We have particular expertise in parallel proceedings at the Patent Office and in district court litigation. When litigation is not in the client’s best interests, the firm proactively considers and implements alternative dispute resolution and mediation.
Global IP advises clients on various IP policing and protection strategies including developing anti-counterfeiting campaigns and policing gray market goods. The firm enlists the support of federal and local law enforcement such as the U.S. Customs and Border Protection for seizures of counterfeit goods and imports.