Design Day 2018 at the United States Patent and Trademark Office (USPTO) provided a dynamic program that offered design patent examiners, practitioners, designers, and others the opportunity to learn about prevalent issues in the field of industrial design, as well as provided insight into the current state of the U.S. design patent system.
The event, which was held April 25 at the USPTO in Alexandria, Virginia, addressed a broad range of topics such as best practices, infringement via online sales platforms, and strengthening international design protection. INTA was one of the co-sponsors of the event.
Kicking off Design Day, Andrei Iancu, Director of the USPTO, articulated the importance of the design patent system—emphasizing that the inventor/designer of the Statue of Liberty obtained a design patent and leveraged the design rights to fund construction of the statue.
Karen Young, Director of TC 2900 (the Design Patent Group) at the USPTO, reviewed the current state of the USPTO’s design patent system, including:
- The number of design patent examiners: 183, with 13 more to be hired this fiscal year (FY).
- The total number of design applications filed this FY: 22,600.
- The total number of design applications waiting on 1st action: 44,677.
- The average pendency to receive a first action: 12.9 months.
- The average total pendency: 19.2 months.
Providing insight into forthcoming changes at the USPTO, Courtney Stopp, Patent Examiner at the USPO’s Office of Policy and International Affairs, said that the agency is creating a system that will make priority documents electronically available to other design offices, similar to current priority application sharing systems for patent applications.
On an international front, Ms. Stopp discussed the goals of the ID5—an Industrial design framework comprised of the European Union Intellectual Property Office (EUIPO), the Japan Patent Office (JPO), the Korean Intellectual property office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the USPTO. These goals include normalization of grace periods, normalization of partial design protection, development of design protection for cutting-edge technologies such as artificial intelligence and virtual reality, and development of consistency in registration and examination policies and procedures.
Tomoki Sawai, the Director General of the JPO, presented on the state of the art of design patent examination in the JPO and projects underway to improve its systems.
Among the other sessions, a panel of patent examiners and practitioners discussed design patent prosecution best practices, including permissible and strategic application/claim title practice, and how to eliminate prior art rejections when prior art from the grace period is applied.
For an on-the-ground look at design patents, guest speakers from four companies described their company’s use of design patents and the value of this form of intellectual property.
Sugarfina, LLC Co-Founders Rosie O’Neill and Josh Resnick presented on the evolution of the company and how its unique branding and product innovation has fostered its success. From a design perspective, they focused on the brand’s single unit packaging, and the label’s experience in creating a bento box-style packaging for selling multiple units. Sugarfina’s General Counsel Lance Miller provided examples of infringements that the company has seen.
Qudus Olaniran, Patent Attorney at Microsoft Corporation, presented on the importance of good design, good design patent examination, and acquiring a robust design patent portfolio. He pointed to Microsoft’s Surface products, Xbox systems, computer mice, and other products to illustrate how good hardware design creates “cool” products, and to Graphical User Interface (GUI) designs for Windows, Office, and Xbox to show the importance of good screen-related designs.
Noting that design patents are becoming more important, Michael Blankstein, Deputy General Counsel, Intellectual Property at Scientific Games, explained how the company uses all forms of IP to protect designs on its gaming-related products, such as video slot machines and lottery tickets.
Lastly, Bill McKeone, Manager of Design - Kallista at Kohler Co., described the considerations that influence the company’s faucet and other bathroom product designs. He noted how Kohler designers track trends over years, and consider them in the development of their products.
Also on the program, an interactive panel looked at “Enforcing Design Rights for Infringing Internet Sales.” After an introduction that framed the current situation, including how infringers are getting “smarter” and the negative impact of infringement on businesses and society, several brand representatives provided insight into the infringements their companies are experiencing, whether and how they are enforcing their design rights, the on-line takedown process, and other challenges.
Other speakers also presented throughout Design Day 2018—all contributing to an enlightening and successful event.
Katz (Banner & Witcoff), is Chair of INTA’s Design Committee.
In a timed announcement with World Anti-Counterfeiting Day, on
June 6, 2018, the European Union Intellectual Property Office (EUIPO) released a
synthesis research report highlighting that the EU is currently losing EUR 60
billion each year as a result of counterfeiting. For each EU citizen, this
amounts to a cost of EUR 116 per year, and a loss of 434,000 jobs.
Counterfeiting is a global activity that has taken a leap
from street market sales to international trade, largely as a result of
increased use of technology and the cultural shift to online shopping.
Criminals engaged in counterfeit manufacturing and sales are profiting from a
digital environment where it is easier to maintain anonymity, to falsely
advertise fake products, to build new websites as quickly as identified
websites are shut down, and to market to online shoppers all over the world.
Due to “the high value associated with intellectual property
rights (IPR),” the report said, “infringement of those rights is a lucrative
criminal activity, which generates significant costs to the rights owners and
to the economy in general.”
The report compiles findings of research studies carried out
for the past five years by the EUIPO, through the European Observatory on the
Infringement of Intellectual Property Rights. It tracks the economic cost of
counterfeiting in 13 sectors known to be vulnerable to IPR infringements: cosmetics
and personal care; clothing, footwear, and accessories; sports goods; toys and
games; jewelry and watches; handbags and luggage; recorded music; spirits and wine;
pharmaceuticals; pesticides and agrochemicals; smartphones; batteries; and
In a study done in partnership with the European Patent
Office, the EUIPO discovered that the total contribution of IPR-intensive
industries to the EU economy amounts to approximately 42 percent of GDP (EUR
5.7 trillion) and 28 percent of employment, which includes 10 percent in
indirect employment in non-IPR intensive sectors. These sectors also generate a
trade surplus of EUR 96 billon with the rest of the world and pay workers 46
percent higher salaries.
“Our work has been carried out so that policymakers and
citizens can be in no doubt of the value of intellectual property and the
damage that arises from its infringement,” said EUIPO Executive Director António
Campinos, in a press release announcing the report.
The EUIPO report builds on prior research by the EUIPO and
other organizations confirming the proliferation of counterfeit and pirated
goods around the world. INTA’s commissioned 2017 impact study, The Economic Impacts of Counterfeiting and
Piracy, estimated that by 2020, worldwide the total value of counterfeit
and pirated goods, including digital piracy, could reach as high as US $2.8
trillion and net job losses could hit 5.4 million.
INTA supports the development and passage of legislation,
regulations, and trade agreements throughout the world that increase national
and international enforcement against counterfeiting. In addition, on World
Anti-Counterfeiting Day, it called on all trade owners and Internet-related
companies to rally together and work cooperatively to implement best practices
to combat this growing problem.
Learn more about counterfeiting
and its effects; INTA’s guide, Addressing
the Sale of Counterfeits on the Internet; and the Association’s advocacy efforts.
A key component of any successful meeting is the adoption
and utilization of the mobile app. This year we have an incredible tool at our
disposal, developed by Eventbase.
To start this process, make sure you have your INTA email
and password at the ready. For security purposes, you will need both to log
into the mobile app.
Using your mobile phone, go to either your Apple or Android
app store and search for “INTA Events,” or click on the links below:
The app will be your go to solution for any questions about
the Schedule by Day, Speakers, Hotels, or Sponsors. It also provides you with
maps of the Convention Center, Exhibition Hall, and Seattle at large. You can
add Sessions, Speakers, Hotels, and even Exhibitors to your favorites by simply
clicking the (+) next to their name. These will than appear in your “My
Schedule” menu option
attendee-to-attendee communication tool (above, left) is indispensible and, more importantly,
compliant with forthecoming laws on digital privacy. To engage with attendee-to-attendee communication (and play the game) you
will need to change your privacy settings in the “My Settings” page to accept
communication and be listed in the attendee director.
Once you’ve gotten
your communication options to the setting you want, your next step is to
connect with friends and colleagues and set up your schedule. The schedule will
be laid out by day, with the time for the event above its Name. All times are
in Pacific Time Zone, so keep that in mind if you’ve been travelling!
Once you have your schedule lined up
corrected, you can even add your events to your own calendar. Simply go to My
Schedule (above, right) and click on the calendar icon next to the event. Each item on your
schedule will need to be individually synched to your calendar.
We know you’re going
to have a great time this year at INTA’s Annual Meeting, and the app will only
augment that experience.
See you in Seattle!
For the International Trademark Association (INTA), this year’s World Intellectual Property Day could not have had a more appropriate theme: Powering Change: Women in innovation and creativity. It’s a topic that has been weaving through INTA’s activities in the past few months, in addition to on World IP Day itself—April 26, 2018.
For one, INTA’s 2018 President, as well as half of its Board of Directors are women—all of whom are contributing to powering change and embracing innovation at the Association and in the industry.
Tish Berard, INTA’s 2018 President and Chair of the Board of Directors, is using her leadership role as a way to inspire women in the IP world.
“By sharing the story of my own career as an example and displaying strong leadership in my role as INTA President, I hope to inspire women in our industry and show that, ‘If I can do it, you can do it,’” said Ms. Berard.
Secondly, INTA’s 2018-2021 Strategic Plan highlights “embracing innovation and change” as one of its three major strategic objectives. The other two are: promoting the value of trademarks and brands, and reinforcing consumer trust.
Why innovation? As noted in the Strategic Plan, “Innovation inspires. Companies and consumers are embracing innovation at a faster pace than ever before. Consumer values and needs are also evolving. INTA will monitor change and innovation, assess its impact on brands, and provide support and value to its members.”
INTA will look to evaluate changes as a result of technology, innovation and evolving consumer needs and values. Through different tasks forces and committees, INTA is analyzing changes, studying correlations between brands and innovation and assessing potential impacts on brand owners.
INTA will continue to educate members on the impact of innovation, technology, and change on brands, and will remain a forum of discussion and knowledge sharing for its members. INTA also plans to take advantage of innovation and technology, identifying trends and providing enhanced and innovative services to members.
Lastly, INTA’s focus on innovation was brought to the forefront recently when the Association focused its March 2018 conference in New York City on this subject. Titled Brands and Innovation, the conference showcased two women speakers who delivered galvanizing addresses to the crowd.
Entrepreneur Caterina Fake, the founder of Yes VC and co-founder of Flickr, stressed the importance of having “the guts” to go into the unknown. “There is always something to learn,” said Ms. Fake. “Find a parade and get in front of it.”
The other speaker illustrates how women can power change even at a very young age. Teenager Natalie Hampton delivered an inspirational keynote about the journey that led her to develop an anti-bullying app, Sit With Us. “A simple act of kindness can change lives,” she declared. Then, she urged the audience, “So what will you do next?”
During her opening remarks at Brands and Innovation, Ms. Berard said there is a “clear relationship” between brands and innovation.
“Brands drive innovation, and at the same time, it is critical that brands remain innovative in order to evolve, to thrive, and maintain relevance in the marketplace,” she said.
Beyond these efforts, INTA celebrated World IP Day today and throughout the past week with various events around the world that shine the spotlight on the day’s theme.
Today, in Washington, D.C., INTA joined the World Intellectual Property Organization, the American Intellectual Property Law Association, the U.S. Chamber of Commerce Global IP Center, The American Bar Association’s Section on Intellectual Property Law, and the Copyright Society of the USA in a Powering Change event on Capitol Hill coordinated by the U.S. Patent and Trademark Office (USPTO) to celebrate women in innovation and creativity.
Ayala Deutsch, Executive Vice President & Deputy General Counsel at National Basketball Association (NBA) Properties, Inc., and Vice President of the INTA Board, is among the speakers who shared personal insights on women and leadership within the IP world.
“INTA and the trademark community at large are committed to advocating for diversity in all forms, including gender diversity,” said Ms. Deutsch. “Today we proudly honor all women who continue to drive change throughout the field of intellectual property.”
Among other events that INTA participated in to commemorate World IP Day:
In Brunei, Laos, Myanmar, and Singapore, INTA has been supporting a series of events with other organizations and government bodies, including one held on April 24 in Singapore which brought together panels of corporate legal counsel, young entrepreneurs, and vibrant start-ups who are collectively powering change through innovation and creativity. In Laos, INTA participated in a week-long celebration at the IP Fair 2018, organized by the Lao Women's Union and the Ministry of Science and Technology.
On April 25, in conjunction with the U.S. Congressional Trademark Caucus, INTA hosted a sports industry briefing on Capitol Hill in Washington D.C. with the Global Innovation Policy Center. The briefing featured remarks by Congressional Trademark Caucus Chairs Senator Chris Coons (D-DE), Senator Chuck Grassley (R-IA), and Intellectual Property Enforcement Coordinator Vishal Amin.
Coming up on April 27, INTA will participate in a panel discussion in Brussels sponsored by the USPTO which will include representatives of the U.S. Mission to the European Union, European Commission, European Patent Office, World Customs Organization, and the Digital Leadership Institute.
Also on April 27, the Association will attend a conference in New Delhi hosted by the Federation of Indian Chambers of Commerce and Industry that hails innovation and creativity among women entrepreneurs.
World IP Day may be just one day, but its theme is one that INTA intends to carry out for the long term.
Despite being the first full day of spring in New York City,
the first Board of Directors meeting of 2018 took place in the middle of a
Nor’easter on March 21.
The weather did not deter us from having a productive
meeting that started by welcoming the new Board members elected last November
for a term ending in 2020:
Marie-Laure Bonnaffous, FENDI ADELE SRL (Italy)
Annabelle DanielVarda, Google (USA)
Cecilia Emanuelson, Inter IKEA Holding Services
Elisabeth Kasznar Fekete, Kasznar Leonardos
Intellectual Property (Brazil)
Jeremy Kaufman, Netflix, Inc. (USA)
Uche Nwokocha, Aluko & Oyebode (Nigeria)
Joan Pinaire, Realogy Holdings Corp. (USA)
Melody Schottle, Exxon Mobil Corporation (USA)
Kowit Somwaiya, LawPlus Ltd. (Thailand)
I was pleased to report on the success of INTA’s inaugural
Asia-Pacific Moot Court Competition on February 23–24, 2018, at Singapore
Management University. An impressive 23 teams from 8 countries participated in
the first-ever competition, and it was a privilege to be a part of this
After Singapore, I participated in the India workshop and
delegation. The workshop, “A ‘Brand’ New Day: Preparing for the Present and Future
of Trademarks,” brought together brand owners and practitioners to discuss
challenges and opportunities resulting from changes in the social, cultural,
and technological landscape. The delegation also had the opportunity to meet
with IP attachés and officials from Customs, the Department of Industrial
Policy and Promotion (DIPP), the Cell for IPR Promotion and Management (CIPAM),
and the High Court of Delhi, as well as owners of SMEs and other brand owners
in the region. The delegation visit generated many new opportunities for INTA
to collaborate with members and officials in the country and solidified the
Association’s commitment to the region. Look for more detailed information on
these activities in the April 15, 2018, issue of the INTA Bulletin.
The Board approved the creation of a Brand Value Special
Task Force, to be co-chaired by Heather Steinmeyer, Anthem, Inc. (USA), and
Doug de Villiers, Intergroup (South Africa), to examine this complex topic and
provide a set of recommendations and actions for INTA to pursue.
The Board also received a report from Chris Oldknow, Chair,
Data Protection Committee, on the main activities of the Data Protection
Committee, which was first established in 2016 to focus on data privacy and
security issues that intersect with trademark and brand protection. He also
provided an update on the work of a rapid response team, which includes members
from the Data Protection and Internet Committees, on the impact of the General
Data Protection Regulation on WHOIS at ICANN and beyond.
We look forward to keeping up the great momentum that we
have started with this year, and I look forward to seeing all of you at the
2018 Annual Meeting in Seattle!
In a first-ever INTA visit to Kigali, Rwanda, INTA Representative for Africa and the Middle East Tat Louembe met with Mr. Richard Kayibanda, Registrar General, and Mr. Blaise Ruhima, Manager, IP Division of the Rwanda Intellectual Property Office. They discussed ways in which INTA can partner with the IPO in increasing protection for trademarks and related rights and how the organizations can mutually cooperate, which in turn will expand INTA’s presence in Rwanda.
According to the World Bank’s Doing Business Report, Rwanda’s implementation of drastic economic and regulatory reforms has made it easier for businesses to get credit, pay taxes, start a business, and attract foreign investments. Rwanda’s long-term development goals are defined in “Vision 2020,” a strategy that seeks to transform the country from a low-income, agriculture-based economy to a knowledge-based, service-oriented economy with middle-income country status by 2020. In this ambitious national economic strategy, trademarks and IP are a critical factor for the country to achieve its laudable goal of middle income status.
From the key role of trademarks in achieving economic growth to the tremendous efforts of the government of Rwanda to embrace innovation and change, the officials were eager to discuss with Mr. Louembe INTA’s contribution to capacity-building opportunities, the upcoming INTA Annual Meeting in Seattle, and INTA’s growing activities in Africa and beyond. The meeting was also an opportunity for INTA to get a better a grasp of the IP landscape in Rwanda as well as the IP Office’s activities and key role within the Rwandan Development Board (RDB), the mission of which is to fast-track economic development in Rwanda by enabling private sector growth.
With the assistance of the IP Office, Mr. Louembe also met with several stakeholders, including the Revenues Authority (Enforcement Division), the Rwanda Bar Association, and several individual IP practitioners, as well as with officials at the Kigali Special Economic Zones.
Brands and Innovation Conference Co-Chairs Monique Joe (NBC Universal Media, LLC, USA) and Diane Lau (Facebook, Inc., USA) share their thoughts on why brand professionals must keep up with technology, new services, and other innovations.
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A packed container filled with undeclared cosmetics, backpacks, wristwatches, and soccer balls worth more than US $2 million was seized by the Servicio Nacional de Aduanas (Chilean Customs Service) in the northern port city of Iquique.
Ricardo Aceituno, Deputy Director of the Iquique Regional Customs Office, explained that, thanks to the work of the Risk Analysis Unit (UAR) within the Public Health Integrated Inspection Plan (PIF), a container coming from Shanghai was separated for inspection at the Iquique Free Trade Zone (ZOFRI).
Out of 434 declared boxes and bales, a total of 359 of them did not correspond to what was stated in the cargo manifest, meaning that a total of 287,462 smuggled items (including 197,000 counterfeits) worth US $2,259,000 evaded more than US $600,000 in taxes.
Among the products seized were 144,526 sets of exclusive smuggled cosmetics with no corresponding sanitary certificates—thus these cosmetics were potentially harmful to the health and well-being of consumers, since these products are intended to be applied directly to the skin.
According to the Chilean Customs Service, this is the most substantial seizure of smuggled cosmetics and beauty products in recent years. This successful operation also included the seizure of 52,936 units of other consumer goods, such as cell phone chargers, wristwatches, soccer balls, and backpacks sold under different well-known marks. The above-mentioned goods are currently impounded, and the corresponding Chilean Customs Units are initiating further administrative/judicial actions.
During 2017, the collaborative work of all Chilean Regional Customs Offices under the PIF facilitated the seizure of 2,511,064 contraband products deemed potentially hazardous to human health, such as food, cosmetics, pharmaceuticals, toys, and medical devices.
INTA salutes the success of the Chilean Customs Service and reiterates its willingness to collaborate and expand efforts to keep training customs officials in the region about the dangers of counterfeit goods to economies and to the public health at large.
INTA’s inaugural Asia-Pacific Moot Court Competition took place at Singapore Management University, Singapore, on Friday, February 23 and Saturday, February 24, 2018.
Building upon the success of the Saul Lefkowitz Moot Court Competition in the United States (now in its 27th year), in 2017, the Association announced this new moot court competition to take place in the Asia-Pacific region.
23 teams from 8 counties across the region participated in the two-day competition. The event was an overwhelming success and enjoyed by all.
Congratulations to all the schools, students, and coaches who participated. And the winners are…
- Best Brief: SASTRA University School of Law
- Second Place Brief: Shanghai Jiao Tong University
- Best Oral Argument: SASTRA University School of Law
- Runner Up Oral Argument: National University of Singapore
- Second Place Team Overall: National University of Singapore
- Best Team: National university of Singapore
Thank you to our sponsor, I-WIN IP Services, our host, Singapore Management University, all of the volunteers who served as brief reading and oral argument judges, and to INTA’s International Moot Court Project Team for all their hard work.
A full report of the event will be published in the March 15 INTA Bulletin.
In today’s world, design touches our everyday lives. Design is in just about everything and influences the way we experience life. It is in the clothes we wear, the cars we drive, the computers and smartphones we use.
Indeed, with each passing year, good design becomes increasingly more important. It is a key driver behind our purchasing decisions, it is reflected in the rising stock market prices of successful design-driven companies. Good design makes products easier to use and more pleasing to the eye. In the words of Apple Inc. Co-Founder Steve Jobs once said, “Design is not just what it looks like and feels like. Design is how it works.”
As designs become more prevalent, the need to protect them has become more important as well. There has been a sharp rise in the number of infringements as more and more third parties have been simulating successful designs and creating knockoff products at an ever-increasing rate. This is, in part, due to the increased sophistication of many factories and the ease with which infringers and counterfeiters can sell their goods via online selling platforms.
All of these factors make it critical that attorneys practicing in the field of design stay on the cutting edge of how to best protect designs around the world and to understand where and how the framework of design protection is changing. That is exactly what INTA’s 2018 Designs Conference: The Power of Design (February 26–27, 2018, London, UK) is all about. Leading business and legal experts will teach us how to harness the power of designs and navigate the challenges of obtaining valid and enforceable protection. Learn more and register here. Hope to see you there!