In this episode we will talk about Amazon Prime and issues with trademarks and FAAs, we have an interview with Stephan Freischem, who served as Secretary General of AIPPI and is currently serving as Deputy Secretary General of GRUR. And we will also tell you about a company from China that is launching a generic version of Viagra after the patents have expired earlier this year.

 

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 16 – November 28, 2014

 

RC =   Rolf Claessen

KS =    Kenneth Suzan

 

 

Hi.  This is Stephan Freischem.  I am Deputy Secretary General of the German IP Association GRUR and you are listening to IP Fridays.

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC:      Welcome to Episode 16.  Today we have an interview with Stephan Freischem, former Secretary General of AIPPI and now Deputy Secretary General of GRUR.  I will tell you about a Chinese company that developed a generic version of Viagra and before we jump into the interview, Ken has a story about Amazon Prime Air and issues with the FAA and trademark issues.

 

KS:      Amazon.com, headquartered in Seattle, Washington is turning what seems to be science fiction, into reality.  Rather than waiting the standard 5 to7 business days to receive a package, Amazon’s goal is to have the package delivered to the consumer in 30 minutes or less.  Amazon plans to use new technology for their delivery method, often referred to as a drone or unmanned aerial vehicle, or UAV under the mark PRIME AIR.

 

The idea of having a drone deliver a package may raise some questions, both being good and bad.  What standards and regulations will be created in order to ensure safety?  When will consumers start seeing Prime Air as a delivery option?  How long will it take to develop such technology?  Amazon seems to have the answers to the many questions that have been asked. The company claims that the technology is ready for use – but the company must gain FAA approval.  The public’s concerns include issues such as safety, the privacy of the package, theft, and damage risks to the drones.

 

Many consumers believe that Prime Air has too much hype to it, and will not become a reality in the near future.  One of Amazon’s many responses to criticism is hiring a team of individuals to create and perfect the drone such as scientists, aeronautical engineers, and a former NASA astronaut.  Names include Paul Viola, who is an MIT Ph.D. and has worked with Microsoft, Avi Bar-Zeev, who sold Keyhole, Inc. which was turned into Google Earth, NASA Astronaut Neil Woodward, and many more noteworthy names.

 

Alongside with Amazon, Google has also been working on a drone-type delivery system. Their program is named Project Wing.  Project Wing’s drones physically look very different than Amazon’s, but in regards towards what they’ll be delivering, Google has different plans.  As of now, Google plans on delivering packages in disaster relief situations versus Amazon’s product delivery to consumers.

 

And if concerns with the FAA aren’t enough, Amazon is also facing multiple 2(d) likelihood of confusion refusals in their trademark and service mark application for PRIME AIR, filed on May 21, 2014.  Registrations for PRIME and PRIMAIR are just a few of the federal registrations that were cited in an Office Action issued to Amazon Technologies, Inc., the applicant of PRIME AIR.

 

Mark Lemley chats about the Alice case of the US Supreme Court and his firm Lex Machina, Ken is telling us about Facebook as a service of process in legal proceedings, Rolf tells you about the new fast-track CTM applications! Have fun!

IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 15 – November 14, 2014

RC = Rolf Claessen

KS = Kenneth Suzan

IF= Ean Floyd

ML = Mark Lemley

Hi. This is Mark Lemley from Stanford Law School and you are listening to IP Fridays.

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC: First of all I want to thank you for tuning in to IP Fridays. Our podcast has now been downloaded over 6,500 times and the number of listeners is growing and growing. I want to already hint that we will have a Christmas present for you. Actually, we are giving away original Christmas mugs from a German Christmas market in Cologne, my hometown, and we will have more about this in our first show in December. Also, our listener, Ian Floyd, left us a really nice feedback. If you want to leave us a feedback, you can go to www.ipfridays.com/feedback or simply press on the leave voicemail button on the right of your screen when you enter our Website.

IF: Hey guys, this is Ian Floyd from the Love & Sensibility podcast and I just want to let you know that I really appreciate your show. You know, people out there that have a business are going to run into situations when you are dealing with intellectual property – you know, patents, copyrights, that type of thing, even podcasts – and I just want to let you guys know that I really appreciate what you are doing out there and to tell everybody else that you need to listen to this show and download this show and keep it as one of the shows that comes up in your podcast iTunes list every week. So guys, keep up the great work.

RC: We have a link to Ian’s podcast in the show notes for you.

I am very excited to have a special guest today who has been coined, “The Most Influential Academic Person in the IP Field”. Today’s interview is with Mark Lemley from Stanford University and he will tell us more about the most recent Alice case of the Supreme Court and he will tell us about his company, Lex Machina. Also, I will tell you about fast track proceedings for community trademarks but, before we jump into the interview, Ken has a really interesting story about Facebook as a service of process in legal proceedings in the U.S.

KS: Suppose that you are dealing with a certain legal issue regarding divorce, or child support, but cannot get in contact with the opposing party. What methods could you use to locate them? Facebook, the world’s largest social media platform, is used for connecting with old friends, new friends, and family. They say that desperate times call for desperate measures, and one New York judge recently granted permission to serve legal documents via social media platform Facebook.

A New York Judge recently granted permission to Noel Biscocho to use Facebook to serve legal documents to his wife Anna Maria Antigua since there was no other way to contact her. The plaintiff had no way to trace his ex-wife since she had moved to a different address and changed her phone number. The case was heard before Family Court in New York before Staten Island Support Magistrate Gregory Gliedman. The judge ruled “despite the absence of a physical address, Biscocho does have a means by which he can contact…namely the existence of a social media account.”

This Epsiode is all about social media marketing for IP lawyers. We have an interview with Anne Pryor, who is a Certified Online Brand Strategist, Future Mapper, global LinkedIn Trainer and Speaker. In addition, Rolf is explaining his personal social media strategy, how his > 25.000 Twitter followers and > 5.000 LinkedIn contacts have helped his business development and what a Klout score means. Also, we will tell you about some useful resources on the internet for mastering your social media skills.

 

IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 14 – October 31, 2014

 

AP =    Anne Pryor of Meaningful Connections

RC =   Rolf Claessen

KS =    Kenneth Suzan

 

Hi.  This is Alex Butterman at Staas & Halsey LLP in Washington, D.C.  I love podcasts because they help me survive my long commute and I love a podcast by a couple of colleagues who are helping me stay up-to-date with IP Law.  You are listening to IP Fridays.  Thank you Rolf and Ken.

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC:      Welcome to Episode 14.  Today we are not talking “legalese” but rather social media.  Our guest today is Anne Pryor.  She is consulting lawyers all about social media and I will tell you about my personal social media strategy.  I am using Facebook and LinkedIn and Twitter and everything and I think I have some success with it and also I want to tell you about some useful Websites regarding social media.

 

So, first of all I want to tell you about a Website called “Social Media Examiner” whose link is in the show notes.  Michael Stelzner is a really important person in social media, in my opinion.  I learned a lot from him and I am listening to his podcast every single episode and he is also sharing tips and tricks in his blog and his advice is really helpful and useful to me.

 

Then, Anne Pryor is also hosting a really lively LinkedIn group and a link is in the show notes called “Meaningful Connections” and they are having several updates per day and they have a lot of discussion going on there about social media.  Ken had the chance to discuss with Anne Pryor and here is the interview.

 

KEN SUZAN’S INTERVIEW WITH ANNE PRYOR

 

KS:      Thank you Rolf.  Today I am joined by Anne Pryor who is a meaningful connector, online brand strategist, LinkedIn coach and trainer, future mapper and speaker.  She leverages marketing strategy, business objectives and online tools to help clients look good, be found and make meaningful business connections and works with business owners, entrepreneurs, startups and sales and marketing executives to create their online presence to attract and create successful business opportunities.  Anne is considered one of the leading authorities on social connections with a specialty in LinkedIn, generating millions of dollars for her clients.  She is certified in online branding and has trained more than 45,000 people since 2008 how to strategically leverage LinkedIn.  As a marketing and sales executive formerly with Carlson, Lifetouch, Mall of America, Knott’s Camp Snoopy and Valley Fair, a portfolio career entrepreneur, career coach, certified online strategist and future mapper, she understands branding.

This time we have an interview with Felicia Boyd about the PTAB (Patent Trial and Appeal Board) and some interesting patent enforcement statistics from Europe.

Please leave us your comments below!

IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 13 – October 17, 2014

 

FB =    Felicia Boyd of Barnes & Thornburg LLP

RC =   Rolf Claessen

KS =    Kenneth Suzan

 

Hi.  This is Alex Butterman at Staas & Halsey LLP in Washington, D.C.  I love podcasts because they help me survive my long commute and I love a podcast by a couple of colleagues who are helping me stay up-to-date with IP Law.  You are listening to IP Fridays.  Thank you Rolf and Ken.

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC:      Welcome to Episode 13.  This episode will be completely about patents.  We have an interview with Felicia Boyd, who is a partner with Barnes & Thornburg LLP, about the PTAB and I will tell you a little bit about patent enforcement statistics in Europe.  But first I want to ask you to leave a review for us on iTunes.  You can go to www.ipfridays.com/itunes, or leave us a review on Stitcher at www.ipfridays,com/stitcher and if you really like us, you can leave us a review and that would really help spread the word about this podcast.  So, without further ado, I turn over the mic to Ken Suzan who has the interview with Felicia Boyd.

 

KEN SUZAN’S INTERVIEW WITH FELICIA BOYD

 

KS:      Thank you Rolf.  I am joined today by Felicia Boyd who is a partner with Barnes & Thornburg in the firm’s Minneapolis office where she is a member of the Firm’s Intellectual Property Department.  Ms. Boyd focuses her practice on complex intellectual property litigation and has lead plaintiff and defense litigation on a large variety of claims related to patents, copyrights, trademarks and trade dress.  Her litigation experience spans several industries including medical devices, software, music, pharmaceuticals and manufactured goods.  Her victories on behalf of clients have included preliminary injunction motions, summary judgment motions, favorable settlements and jury verdicts at trial.  She is a registered patent attorney with a bachelor’s degree in chemistry and has represented clients in contested proceedings before the United States Patent and Trademark Office.  Felicia received her B.A. cum laude from St. Olaf College in 1984.  She earned her J.D. magna cum laude in 1987 from the University of Minnesota Law School.  Felicia, welcome to our program.

 

FB:      Thank you Ken.

 

KS:      Thank you.  So we are going to talk today about an article which is the cover story of the September 2014 issue of Managing Intellectual Property.  Can you tell our listeners a little bit about what is known as the “PTAB” (the Patent Trial and Appeal Board)?  What is it?  What do they do?  And why do businesses need to know about this Board?

 

FB:      Sure Ken.  We call it the “PTAB” rather than the “P-T-A-B”.  So, the PTAB, or the Patent Trial and Appeal Board, was formed as part of the America Invents Act and that Act went into play September 16, 2012,

This time we have an interview with Brian W. Brokate, an anti-counterfeiting litigator from NY, and we tell you more about the problem with fakes on Alibaba. Brian is stressing how technologically advanced the counterfeiters of today are and that enforcement has to keep up with the pace of technological advances. Also, we tell you about the 140 Mio product listings removed from Taobao in the first 10 months of 2013 and how Alibaba is struggling with fake products.

Please leave your comment below!

The shownotes are coming soon!

IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 12 – October 3, 2014

 

BB =   Brian Brokate of Gibney, Anthony & Flaherty, LLP

RC =   Rolf Claessen

KS =    Kenneth Suzan

 

Hi.  This is Alex Butterman at Staas & Halsey LLP in Washington, D.C.  I love podcasts because they help me survive my long commute and I love a podcast by a couple of colleagues who are helping me stay up-to-date with IP Law.  You are listening to IP Fridays.  Thank you Rolf and Ken.

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC:      Welcome to Episode 12.  We currently have around 1,200 downloads of MP3 files which means hopefully that 1,200 people listened to our show last month so that makes us really happy and if you like the show, you can subscribe on iTunes at www.ipfridays.com/itunes, or you can listen to us on Stitcher.  Stitcher is an app that runs on the iPhone or Android or Blackberry or even in some cars – I think Ford and BMW also support Stitcher.  You can subscribe to Stitcher at www.ipfridays/stitcher and if you really like us you can leave us a review at either iTunes or Stitcher or wherever you find our podcast in any directory.  We are listed in many, many directories.  Today we have a very special guest, Brian Brokate.  He is a litigator in New York and handles mostly anti-counterfeiting cases.  We also will be telling you about Alibaba and their fake problem.  But we will start this time with the interview and Ken had the chance to interview Brian Brokate, so take it away…

 

KEN SUZAN’S INTERVIEW WITH BRIAN BROKATE, OF GIBNEY, ANTHONY AND FLAHERTY, LLP

 

KS:      Thank you Rolf.  I’m speaking to Brian Brokate of Gibney,Anthony and Flaherty in New York City.  Brian is the head of Gibney Anthony and Flaherty’s intellectual property practice group.  He has extensive experience in the areas of intellectual property law and in investigation and enforcement procedures to combat the infringement and counterfeiting of trademarks and copyrights.  Brian focuses on anti-counterfeiting and anti-piracy and handles all stages of civil, anti-counterfeiting and infringement litigation.  He also has had extensive involvement in state and federal criminal actions.  Brian is also the treasurer, a member of the board of directors, and on the executive committee of the International AntiCounterfeiting Coalition.  He is also the treasurer of the New York Task Force, a coalition of brand owners affected by counterfeiting.  Finally, Brian is a member of the International Trademark Association where he serves as a board member and is on the Anti-Counterfeiting Committee.  Brian, welcome to the program.

 

BB:      Oh, thank you so much Ken.  Thank you so much and thank you for having me as your guest today.

 

KS:      Thank you, indeed.  Brian, can you tell our listeners a little bit about your practice?  How long have you been battling the counterfeiters?

 

Anti-Counterfeiting is the main topic of this episode. We interview Kristina Montanaro – Vice President of Legal Affairs & Strategic Planning of the International AntiCounterfeiting Coalition (IACC). We also tell you more about the newly released EU Action Plan on the enforcement of Intellectual Property Rights. Finally, we show you a useful online tool to determine the similarity of goods and services.

Please leave your comment below!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 11 – September 19, 2014

 

RC = Rolf Claessen

KM = Kristina Montanaro

KS = Kenneth Suzan

 

 

This is Jeanine Percival Wright, the Director of Legal Affairs for Intellectual Property and Litigation with True Religion Brand Jeans in beautiful Los Angeles, California. You are listening to IP Fridays. Thanks for the great podcast guys.

 

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Today’s show is mostly dedicated to anti-counterfeiting measures. We will talk about the new EU action plan on enforcement of intellectual property rights. We have the Vice President of Legal Affairs of the IACC, Kristina Montanaro. She will tell us about the work the IACC is doing. And then we also tell you about a little helpful tool for comparing the goods and services of trademarks and we will tell you about that tool right now.

 

OHIM, many people call it the European Patent and Trademark Office, is providing a really cool tool for comparing the goods and services of trademarks. The tool is simply called “Similarity” and the link is in the show notes. Many offices are sharing their decisions in opposition proceedings to feed this database. Among them is the OHIM, and the relevant offices from Bulgaria, Cyprus, Estonia, Spain, the UK, Greece, Latvia, Malta, Portugal, Romania and many offices will join in the near future.

 

In the basic search interface you just type in two different terms and then the tool will tell you if there are any decisions in these countries where these terms were compared. Let’s say you are comparing advertising services to public relations. You could just enter these two terms and then it would spit out a list of all the decisions rendered about these two terms. So, I find this really useful and I really hope that the German Patent and Trademark Office will join soon.

 

There is also an advanced search interface and you can enter that when you click on “compare terms”. You can limit the different terms by Nice classes. You can also search in particular languages, or the degree of similarity, or you can limit the search by certain kinds of offices and in theory you could also compare lists of terms so you can paste in the list of goods and services of the one trademark and the list of goods and services of the other trademark and then hit “search”. In my personal experience, I had very divided results. The algorithm doesn’t really seem to match the terms very intelligently but I am sure OHIM is working on this very hard. If you want to learn more about this tool, just go to www.ipfridays.com/similarity.

 

We are very excited to have Kristina Montanaro on the show today. She is Vice President of Legal Affairs and Strategic Planning for the IACC and Ken had the chance to interview her. So Ken, take it away…

 

KEN SUZAN’S INTERVIEW WITH KRISTINA MONTANARO, VICE PRESIDENT OF LEGAL AFFAIRS AND STRATEGIC PLANNING OF THE INTERNATIONAL ANTI-C...

This time we talk about our own ways into intellectual property and also we chat about protection of wearable technology.

Please leave your comment below!

IP FRIDAYS

 

 

 

Co-Presenters:

 

Rolf Claessen and Kenneth Suzan

 

 

 

Episode 10 – September 5, 2014

 

 

 

RC =   Rolf Claessen

 

KS =    Kenneth Suzan

 

 

 

 

 

This is Jeanine Percival Wright, the Director of Legal Affairs for Intellectual Property and Litigation with True Religion Brand Jeans in beautiful Los Angeles, California. You are listening to IP Fridays. Thanks for the great podcast guys.

 

 

 

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to intellectual property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

 

 

RC:      Welcome back to another episode of IP Fridays.  We are very happy that you tuned in to this episode and today we are actually talking to you about ourselves.  A lot of our listeners requested us to tell more about ourselves — like how we got into the IP field, and what we actually do, and just a little bit more background and then also we are very happy that Mondaq, a popular news site in the legal field, has picked up our podcast and more about that later on and also Ken tells you about recent trademark developments in the wearable technology field. 

 

 

 

So, first we want to tell you more about ourselves.  So maybe I will ask you first, Ken, when you first started school you first picked up history and political science in 1989 and so why did you pick this and why did you then move into law?

 

 

 

KS:      Well, when I went to the University of Rochester, I always knew that history and political science were the things that I enjoyed most.  We could go back to high school days, I think social studies, and English and writing were always some of my favorite things to do so it was sort of a natural fit.  I enjoyed the programming as well as the academics at the University of Rochester and that was my joint major.  When I went to college, I also knew that I wanted to become a lawyer the whole time so it was sort of a natural progression that developed.  I indeed did then go on to attend Albany Law School of Union University located in Albany, New York.  I loved school so much, that I continued on to NYU School of Law for their LL.M. program in Trade Regulation and I focused on trademarks, copyrights and Internet law while attending there.

 

 

 

RC:      Yes, you got your JD from Albany Law and then an LL.M. from NYU so that’s really exciting because both are really prestigious schools.

 

 

 

KS:      Well, it was great to go there.  I learned a lot and made a lot of great connections and friends and it was an interesting time.  You know, the Internet was really getting going in the sense that the law was changing.  I had written about music distribution on the Internet actually back in 1995, so that goes way back since we’re almost coming up to 2015, so that’s a long, long time ago to a certain extent, but at the same time there has been a lot of water under the bridge and I am excited to keep going.  I really love IP.

 

 

 

RC:      So we nearly could have met in Albany because I attended SUNY Albany.

In this episode we interview Kevin Nickels, COO of Preventice, about protecting wearable technology. We also have the latest news about Monsanto`s dual threats of IP theft, cool new features coming up in Apple products and a very helpful tool for searching patents – The Lens.

Please leave your comment below!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 9 – August 22, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

KN = Kevin Nickels, COO of Preventice

 

Hi. This is Jeanine Percival Wright, the Director of Legal Affairs for Intellectual Property and Litigation with True Religion Brand Jeans in beautiful Los Angeles, California. You are listening to IP Fridays. Thanks for the great podcast guys.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to intellectual property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Today we have the latest news on Monsanto and Apple. Ken is interviewing Kevin Nickels who is the COO of Preventice and they will talk about wearable technology, and also we will tell you about a very cool tool for patent searching which I frequently use and, in fact, I will tell you about this tool right now.

 

The Lens at www.lens.org, the link is in the show notes, is a patent search tool that I frequently use for prior art search. Many jurisdictions are covered by this database and you can build really complicated queries with the advanced search and one really interesting feature is that you cannot only search patent applications and granted patents, but you can also search search reports, you can search supplementary protection certificates, you can search plant patents, you can search design rights and some really cool other document types so you might cover even more prior art than with some paid search tools. You can search the full text or you can search inventors or owners, the title, abstract claims, or you can search applicants or you can search also by publication number or filing number, and you can also search classifications. So, it seems to be really powerful.

 

One thing that I didn’t find is the coverage of the databases and especially what kinds of countries are covered in full text and what kind of legislations are not covered in full text so I would not really use this tool for, for example FTO searches (freedom to operate searches), but for prior art it has given me a really, really helpful result. Typically, I use Total Patent by LexisNexis, but this tool, The Lens, has been complimentary for a while now and it has given me some different prior art documents that I didn’t find with Total Patent. So, go over to www.lens.org and try it out yourself.

 

Next, let’s head over to Ken and Kevin Nickels — they are discussing how wearable technology is changing the lives of many.

 

KEN SUZAN’S INTERVIEW WITH KEVIN NICKELS, COO OF PREVENTICE

 

KS: Thank you Rolf. I am joined today by Mr. Kevin Nickels who is the COO of Preventice. Preventice is a privately owned company and leading developer of mobile health applications and remote monitoring systems that connect mobile home-based and on-premises technologies to deliver continuous patient care across the health continuum. Welcome, Kevin, to our program.

 

KN: Good morning Ken. Thanks for inviting me.

This episode is about Fairway Fox and their case before the TTAB, where we learn about the importance of knowing the true owners of rights. Then we hear from Ed Timberlake and his passion for trademark prosecution. And finally, we tell you more about Google, the right to be forgotten and the recent decision of the European Court of Justice.

Please leave your comment!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 8 – August 8, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

ET = Ed Timberlake

 

My name is Ed Timebrlake and I usually don’t like to use the term “IP” but I make an exception in the case of IP Fridays.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you so much for tuning into yet another episode of IP Fridays. Today we are talking about the right to be forgotten and what the legislators in Europe have to say about Google. Then we have a really cool interview with one of our first listeners, Ed Timberlake. He is a very passionate trademark prosecutor and he tells us about trademark prosecution in the U.S. and some pitfalls and his favorite parts of the work as a prosecutor. Then, we also have a story about Fairway Fox and it is interesting because it has been a TTAB case that has been recently decided. The parties they used Accelerated Case Resolution procedures and that might be interesting for the practitioners listening to this podcast. But before we do that, we want to point out that one of our very faithful listeners, Robert Turlington, he pointed out that in our last episode we talked about Verisign and in fact Verisign is not a registrar as we said but in fact a registry. This is an important distinction because domains are not purchased from registries like Verisign, they are purchased from registrars like GoDaddy and so on.

 

So, without further ado, I hand over to Ken and he will tell us about the Fairway Fox.

 

KEN SUZAN’S DISCUSSION REGARDING FAIRWAY FOX

 

KS: Rolf, the TTAB issued an opinion on July 3, 2014, that has interesting factual issues and procedural points for the TTAB practitioner.

 

The opinion concerns former business partners Kristin Conolty and Kathryn O’Connor, who started a business together in 2008 to make “upscale, fashionable golf clothing” under the mark Fairway Fox. However, according to the TTAB there was no evidence that they had started doing business under Fairway Fox until 2009 when the partners sent sample clothing to potential customers. Conolty registered a sole proprietorship doing business as “Fairway Fox Golf” while O’Connor formed a single member LLC called Conolty O’Connor NYC LLC, a combination of the two partners’ names. However the partners had a falling out in 2012, after which both sold Fairway Fox golf clothing separately.

 

O’Connor applied to register the mark Fairway Fox, and Conolty opposed the application on the grounds of likelihood of confusion and claiming prior use. At this point the parties agreed to the Accelerated Case Resolution procedures, in which the parties submitted cross-motions for summary judgment with affidavits of evidence. The parties also stipulated to a likelihood of confusion, so the only issues before the Board were priority use and O’Connor’s defenses.

 

However, even though Conolty, the opposer, noticed only priority use as grounds for her opposition,

This episode is about generic toplevel domains (gTLDs), we have an interview with Ted Davis on Federal Trademark Caselaw and finally Ken will tell us about an interesting trademark case Sealtight vs. Sealtite.

Please leave us your comments regarding this episode!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 7 – July 25, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

 

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you very much for returning to the 7th episode of IP Fridays. If you hear this and you want to be on the show, please let us know at www.ipfridays.com/feedback or just send us an email, or if you have any favorite topics that should be covered, please let us know. Today we have three topics. The first topic will be generic top level domains and then we have an interview with Ted Davis who will tell us about the federal case law regarding trademarks and then we have the latest on the fight over the Sealtight/Sealtite trademarks. First, Ken will tell us about general top level domains.

 

KEN SUZAN’S DISCUSSION REGARDING TOP LEVEL DOMAINS

 

KS: Rolf, new generic top level domains will cause some difficulties for IP holders, but open up a new array of Web address possibilities, including more internationalized top level domains.

 

What is a domain name?

 

Domain names are labels assigned to IP addresses in the Domain Name System (DNS). IP addresses are unique numerical identifiers that computers actually use to connect to one another, but they are difficult for humans to remember. A user enters the Web address (also called URL, or uniform resource locator), including the domain name, on their local device.

 

What are the parts of a Web address, including top level domains (TLDs)?

TLDs are the end parts of a web address, the period or “dot” followed by some characters. The most common top levels domains are .com, .net, .org, .edu, and .gov.

 

Other important parts of a Web address are the second level domain, which is to the left of the TLD. There may be additional domains in the Web address to the left of the second level domain, also called sub domains. Taken together, the combination of the TLD, the second level domain, and any sub domains is known as the host name.

 

The big question is who is in charge of selling domain names to the public? Well, domain name registrars and domain name resellers. In the United States, one of the most powerful domain name registrars is Verisign, which is the authoritative registry for .com, .net, .tv, .cc, and .name. GoDaddy and eNom are also popular registrars. Not only do registrars sell domain names, but resellers may do so also. ICANN (or the Internet Corporation for Assigning Names and Numbers) maintains a list of accredited registrars and resellers for seventeen top level domains.

 

What are gTLDs?

Well, gTLD stands for “generic top level domain.” In 2000 and 2004, ICANN conducted two rounds of applications for new TLDs and released seven and eight new TLDs in each round respectively. After 2005, ICANN began a program to create an application process for gTLDs, which resulted in organizations “applying” for a gTLD, meaning that if ICANN approved the application, then the organization would run the gTLD the same way that Verisign runs .