Reports

Policy and Advocacy

Substantive reports prepared by INTA policy committees compile facts and provide analysis on select trademark issues.

2014

A Guide to Filing Amicus Curiae Briefs in Latin America

Authors: International Amicus Committee’s Latin America Subcommittee

2012-2013

Standing Requirements in Connection With Non-Use Cancellation Actions
Enforcement Committee's Opposition and Cancellation Standards & Procedures Subcommittee

Default Judgments in Inter Partes Opposition and Cancellation Proceedings
Enforcement Committee's Opposition and Cancellation Standards & Procedures Subcommittee

Best Practices in Conducting Surveys in Trademark Matters
Enforcement Committee's Courts & Tribunals Subcommittee

Social Networking Sites Trademark and Copyright Protection Mechanisms
Charts summarize the trademark and copyright protections afforded rights owners and associated policies of social networking sites and related services.

Vimeo

Yelp

YouTube
Internet Committee's Online Trademark Use Subcommittee Web 2.0 Working Group

Marketplace Site Trademark and Copyright Protection Mechanisms
Charts summarize the trademark and copyright protections afforded rights owners and associated policies of marketplace sites and related services.

Google Play

Microsoft Windows Phone
Internet Committee's Online Trademark Use Subcommittee Web 2.0 Working Group

U.S. Economic Sanctions and Anti-Boycott Laws

Trademark Owner’s Guide to Parallel Imports in the United States
Describes how to work with U.S. Customs and Border Protection to prevent importation of gray market goods
Parallel Imports Committee's North American Subcommittee

2010-2011

Online Trademark Use
Provides overview of what constitutes online trademark use in various jurisdictions

Introduction

Overview Article

Comparative Chart of Online Trademark Use
Internet Committee's Online Trademark Use Subcommittee

Keyword Advertising
Summarizes search engine policies and case law regarding disputes over trademarks used in keyword advertising

Introduction

Policies of Google, Yahoo!, Bing and AOL

Keyword Advertising Jurisprudence
Internet Committee's Keyword Working Group

Surveys of Companies Providing Domain Parking Services
Summarizes written policies and procedures of certain domain name parking companies and registrars vis-a-vis trademark issues related to domain name parking and monetization.

Introduction

Domain Name Parking Company Survey

Domain Name Parking Registrar Survey
Internet Committee's Online Trademark Use Subcommittee

Partial Cancellation Actions Based on Non-Use
Analyzes non-use cancellation actions in selected jurisdictions where a mark is used on some but
not all of the goods and services covered in the registration
Enforcement Committee's Opposition and Cancellation Standards and Procedures Subcommittee

2010 Cases Discussing Fame Before the U.S. Trademark Trial and Appeal Board and the Canadian Trade-marks Opposition Board
Dilution and Well Known Marks Committee's North American Subcommittee

2010 Case Summaries Under the U.S. Trademark Dilution Revision Act
Dilution and Well Known Marks Committee's North American Subcommittee

2009 Cases Discussing Fame Before the U.S. Trademark Trial and Appeal Board and the Canadian Trade-marks Opposition Board
Dilution and Well Known Marks Committee's North American Subcommittee

2008-2009

Substituted Service of Process by Electronic Mail
Achieving notice on fictitious owners of commercial websites for access to judicial remedies
Internet Committee's Whois Subcommittee

Legislative Trends in Latin America
Reviews trademark-related legislation pending in 17 Latin American countries, including analysis of harmonization and other regional trends. Legislation & Regulation Committee’s Latin America & the Caribbean Subcommittee

Criminal Prosecution against Counterfeiting in the EU

Appendix
Provides information to facilitate ongoing discussions between INTA and EU policymakers on criminal prosecution of trademark counterfeiting. Anticounterfeiting and Enforcement Committee’s European Union Subcommittee

Hearsay/Actual Confusion

Exhibit A Chart on Hearsay Evidence
Addresses the ways that courts have handled the hearsay objection as it relates to evidence of actual confusion, discerns patterns among various U.S. courts, and offers best practices for how courts should treat this evidence. Enforcement Committee’s Proof of Confusion Subcommittee

Types of Evidence Used to Establish Likelihood of Confusion
Details factors used to establish likelihood of confusion in dozens of jurisdictions worldwide. Enforcement Committee’s Proof of Confusion Subcommittee

WayBack Machine
Details the challenges in presenting evidence from websites that may not have been in use for some time and reviews how courts have used the Internet WayBack Machine to authenticate older versions of pages on the Internet. Enforcement Committee’s Discovery Practice and Procedures Subcommittee

Part Cancellation
Compares approaches of trademark offices and courts with respect to the requirement to provide evidence for “genuine use,” and explains problems that can arise if the trademark has been registered for a broad term but evidence of use is only provided for specific goods. Legislation and Regulation Committee’s Europe & Central Asia Subcommittee

Nontraditional Marks Matrices

Organized by region, these charts detail registrability of nontraditional trademarks in various countries.

Asia Nontraditional Marks Matrix Nontraditional Marks Committee’s East Asia & Pacific Subcommittee

Europe Nontraditional Marks Matrix

Appendix Nontraditional Marks Committee’s Europe & Central Asia Subcommittee

Latin America Nontraditional Marks Matrix Nontraditional Marks Committee’s Latin America & the Caribbean Subcommittee

United States Nontraditional Marks Matrix Nontraditional Marks Committee’s North America Subcommittee

2006-2007

The Importance of Oppositions
Summarizes the advantages that proceedings to oppose pending trademark applications have for third parties, holders of opposed marks, trademark offices and consumers. Enforcement Committee's Oppositions and Cancellations Subcommittee

Parallel Imports Position Paper
Provides support for INTA’s disapproval of parallel imports except between countries that are in recognized regions with truly harmonized markets and the Association’s position that in disputes concerning parallel imports it should be for the parallel importer to prove it has the trademark owner’s consent to sell the goods. Parallel Imports Committee

EU Trade Dress
Overview of the legal framework for protecting trade dress at the EU and member state level, as well as in non-EU countries. 2004-2005 Trade Dress Committee’s Europe Subcommittee and 2006-2007 Nontraditional Marks Committee’s Europe and Central Asia Subcommittee

Protecting Pharmaceutical Trademarks
Details how pharmaceutical trademarks (vs. generics) play a crucial role in public safety and commerce. Legislation and Regulation Committee’s Pharmaceuticals Subcommittee

Design Rights vs. Trademarks
Examines whether design laws conflict with or enhance laws that protect trademarks. 2004-2005 and 2006-2007 Emerging Issues Committee’s Design Rights Subcommittee

Unfair Competition
Analyzes legislation and relevant case law from 22 European countries. Legislation and Regulation Committee’s Europe and Central Asia Subcommittee

2004-2005

Relative vs. Absolute Grounds Examinations
Trademark offices, brand owners and attorneys in more than 18 countries provide input to debate the merits of absolute examination versus relative examination systems. Emerging Issues Committee’s Relative Examination Subcommittee

IP Holding Companies

Appendix
Examines the IP holding company structure, which can collect substantial licensing royalties and potentially save on taxes but has led to an increasing number of successful legal challenges by various U.S. states. Emerging Issues Committee’s Tax Subcommittee

Use Requirements for Registration and Renewal

Appendix B

Appendix C
Discusses the possibility of further harmonizing use requirements related to trademark registration and renewal. Emerging Issues Committee’s Use-Based Systems Subcommittee

Nontraditional Trademarks in Europe
Considers the issue of registrability and enforceability of shape and color trademarks in 36 European jurisdictions, including the European Union. Legislation Analysis Committee’s Europe Subcommittee

What Constitutes Use of a Registered Trademark in the European Union (Including New Member States)
Legislation Analysis Committee’s Europe Subcommittee

2002-2003

The Madrid Protocol: Impact of U.S. Adherence on Trademark Law and Practice
Discusses INTA’s long-term efforts to make U.S. membership to the Madrid Protocol a reality, and gives practical advice on what trademark practitioners should consider when contemplating using Madrid to protect trademarks. International Committee Task Force on the Madrid Protocol

The Negative Impact of Trademark Misuse in Official Standards and Regulations
Recommends how official standards and regulations should refer to trademarks. Regulatory Analysis Committee

Before 2001

Madrid System for the International Registration of Marks
Details the Madrid System’s numerous advantages for trademark owners. Treaty Analysis Committee’s Treaty Promotion Subcommittee

The Economic Impact of Trademark Counterfeiting and Infringement: Estimation of the Impact of Trade (1998)
INTA asked econometrics firm WEFA, Inc. to develop an economic model to quantify losses to trademark owners due to infringement and counterfeiting.

Disclaimer
Reports produced by INTA’s Policy Development and Advocacy Committees are provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication, whether in written or electronic form, can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant countries. While efforts have been made to ensure the accuracy of the information in these documents, they should not be treated as the basis for formulating business decisions without professional advice. Trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. Furthermore, the information included in these documents will not be relevant or accurate for all countries or states.