INTA and USPTO Collaborate on Entertainment Industry Training

INTA’s Trademark Office Practices Committee (TOPC) and the U.S. Patent and Trademark Office (USPTO) held an industry training at the USPTO headquarters in Alexandria, Virginia, in late November. The event focused on intellectual property (IP) protection for well-known brands and featured a moderated discussion among entertainment industry experts for the USPTO’s examining attorneys and staff.

Three highly accomplished in-house entertainment lawyers provided an overview of their respective companies’ well-known brands and shared their practical knowledge in overseeing protection of large trademark portfolios. Approximately 600 USPTO officials and trademark examining attorneys were in attendance, both in-person and virtually. The speakers included INTA Board member Monique Cheng Joe (NBCUniversal Media, LLC, USA), Michael Moore (Mattel, Inc. USA), and Tina Pompey (The Walt Disney Company, USA).

The speakers provided the participating examiners with practical insights and shared their experiences in securing protection and policing their brands. They also discussed trends that have influenced how entertainment service providers work day-to-day to meet USPTO requirements. Ms. Joe and Ms. Pompey provided examples of steps they take to meet USPTO trademark specimen requirements, highlighting how changes in entertainment industry business practices have influenced these efforts. They also offered observations on goods and services descriptions and discussed examples of standard wording used by the USPTO and how the specifications matched to their businesses.

Focusing on issues unique to the entertainment industry, including protection of character names and other story elements, both frequently a target of copycats, the speakers all provided examples of infringements that have arisen based upon character names and other content found in highly popular movies and television shows. At the core of these cases is the likelihood of false association, which in some cases the panelists noted USPTO examiners do rely on as a basis for refusals.

Discussing their policing programs, the panelists gave observations on USPTO efforts to respond to fraudulent activities on the register. The panelists’ companies are highly active in policing due to the well-known nature of their trademarks. In particular, Mr. Moore discussed recent efforts in protecting BARBIE-related trademark assets and provided examples as to how parties have attempted to appropriate the fame of the Barbie name.

TOPC USPTO Subcommittee member Britt Anderson (Perkins Coie, USA) moderated the event. Rick Biagi (Neal & McDevitt, USA), Danielle DeFilippis (Norris McLaughlin, USA), and Catherine Farrelly (Frankfurt Kurnit, USA) helped prepare the panelists for the event.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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