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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, December 15, 2020

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide trademark counsel and brand owners on genericism and its threat to brands. The panel will discuss the risks of genericide to brand owners and where and how they arise. The panel also will discuss the steps companies and their counsel should take to minimize these risks. The panel will review recent federal court cases and TTAB proceedings addressing genericism and the lessons learned from those decisions.

Faculty

Stephen R. Baird
Shareholder
Greenberg Traurig LLP

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.

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Candice E. Kim
Shareholder
Greenberg Traurig LLP

Ms. Kim focuses her practice on the clearance, procurement, maintenance, enforcement, licensing, and monetization of intellectual property rights, including trademarks, trade dress, domain names, copyrights and rights of publicity. She counsels clients on all aspects of the branding process. She has wide-ranging experience in trademark prosecution, licensing, enforcement, and TTAB opposition and cancellation proceedings, with an emphasis on global brand expansion and management through strategic trademark filing, protection, and enforcement programs.

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Sabina A. Vayner
Of Counsel
Greenberg Traurig LLP

Ms. Vayner represents brand owners and creators across a broad spectrum of industries in trademark, copyright, and advertising litigation, enforcement, and counseling matters. She has experience litigating federal trademark, copyright, false advertising, and trade dress infringement actions, and regularly represents clients in proceedings before the TTAB. Ms. Vayner additionally advises clients on a wide variety of issues to minimize the risk of disputes, including those involving copyright and trademark clearance and portfolio management, advertising review, social media, and right of publicity. 

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Description

Aspirin, escalator, and trampoline are a few examples of once-valuable trademarks that became, over time, generic terms and part of the public domain, free for anyone to use, including direct competitors. In recent years, Google successfully defended against claims to cancel the GOOGLE mark alleging it had become a generic term. Brand owners and their counsel must understand the realistic risks associated with trademark genericide.

Brand owners and their counsel need to understand when and how it is appropriate to take protective action. For example, a few years ago, Velcro Corporation created a now-famous video that instructed people to stop referring to all hook and loop fasteners as "Velcro." The video informed the public that using the Velcro name violates trademark laws, and misuse can cause the company to "lose the circled R" and kill its trademark.

Similarly, Xerox Corporation has taken out ads to educate the public about proper trademark use, asking the public only to use "Xerox" to identify its products and not to use the term as a verb in place of "copy" or as a noun referring to "copies." Steps to minimize the risks of genericide are essential to safeguarding the value of the mark.

Listen as our authoritative panel of IP attorneys examines genericism and the threat it poses to brands. The panel will discuss the risks of genericide to brand owners and where and how they arise. The panel will also discuss the steps companies and their counsel should take to minimize these risks. The panel will review recent federal court cases and TTAB proceedings addressing genericism and the lessons learned from those decisions.

Outline

  1. Genericism
  2. Risks of genericide to brands
  3. Steps to minimize risk of genericide
  4. Lessons from recent court and agency decisions

Benefits

The panel will review these and other important issues:

  • What risk does genericness pose for trademarks and brand owners?
  • Can a mark's use in every day practice demonstrate genericness? Can counsel use such evidence in litigation to prove genericness?
  • What steps should counsel take to protect marks from genericide?