By Tony Guo

This past Thursday seven members of William and Mary Law School went to their first Greater Richmond Intellectual Property Law Association (GRIPLA) lecture. The two speakers were excellent. Cheryl Black of Goodman Allen & Filetti described the Madrid Protocol and protecting trademarks in foreign countries. Pam Gavin (who is an alumni of William and Mary Law School)  of Gavin Law Offices presented an excellent practicum on International Trademark Registrations. Before and after the presentations students mingled with lawyers and discussed social media, the First Amendment, the Madrid Protocol, and practicing intellectual property.

Ms. Black did a wonderful job explaining the Madrid Protocol. The Madrid Protocol was diagrammed as an “international highway” featuring a Section 66(a) inner loop and an international application outer loop. The protocol is foreign friendly; some have argued it is too friendly. There exists an uncomfortable tension between the Madrid Protocol and U.S. trademark owners. The United States Patent and Trademark Office (USPTO) has a stricter trademark policy than most foreign offices.  Trademark owners can claim more “trademark territory” at a foreign offices while the Madrid Protocol protects their rights in the United States. Foreign trademarks avoid the rigorous scrutiny and narrowing of the USPTO that all U.S. trademarks face. Given a choice to file foreign or domestic, owners often choose to file foreign to receive a broader trademark. Owners can then use the Madrid Protocol to protect their broader trademark in the United States. This cycle has caused concerns to U.S. trademark owners seeking protection globally.

Ms. Gavin’s lecture complemented and expanded Ms. Black’s. Ms. Gavin discussed how lawyers can apply the Paris Convention, National Filings, Madrid Protocol, and Community Trademarks to their trademark practice. In the Paris Convention registrations are independent from each other. Within six months, clients should file foreign applications in Paris Convention countries. National filings are a more expensive option. Clients and the lawyers representing them should research the countries they are filing in. Although expensive, local counsel can be helpful and even necessary to obtaining a national filing. When discussing the Madrid Protocol, Ms. Gavin stressed Ms. Black’s point that the description of the goods and services can be no broader than those in the home application regardless of whether priority is claimed. As an economical matter the Madrid Protocol savings may be negated by the use of local agents if problems arise. Community trademarks are a more attractive cost efficient option. They are centrally administered by the Office of Harmonization in the International Market (OHIM). A single filing covers 27 European Union nations and use of the trademark is only required in one member state. The main disadvantage is that an objection in one state can defeat the entire application. The Paris Convention, National Filings, Madrid Protocol, and Community Trademarks each have positives and negatives. A lawyer should educate their clients and pursue the decision the client is most comfortable with.

SIPS members chatted with Ms. Black after the presentations. Ms. Black offered a stimulating view on the future of intellectual property. She suggested that social media and first amendment issues are expanding areas that promise to provide rewarding experiences. Students interested in intellectual property should position themselves to be on the cusps of these new fields.   Both Ms. Black and Ms. Gavin urged students to become more pro-active and involved in attending lectures and showing an interest in the field. Good advice for William and Mary students.

To join GRIPLA (free for students)

The next event will be held at the University of Richmond. A brief description by Ms. Black follows.

The Intellectual Property Institute’s fourth annual Evil Twin Debate will take place at noon on Friday, November 5, 2010, in the moot court room at the University of Richmond School of Law. It will feature Jonathan Band of and James Grimmelmann of New York Law School. They will debate the topic The Google Books Settlement: Standing Copyright on Its Head?

Happy Halloween.

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