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ACC Austin October CLE Luncheon

ACC Austin October CLE Luncheon. October 17, 2013. Managing Your Trademark Portfolio: Top 10 Tips for the In-House Counsel. Erin Hennessy Bracewell & Giuliani Association of Corporate Counsel CLE Luncheon October 17, 2013. 1. Choose a Mark You Can Protect. Spectrum of distinctiveness

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ACC Austin October CLE Luncheon

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  1. ACC Austin October CLE Luncheon October 17, 2013

  2. Managing Your Trademark Portfolio: Top 10 Tips for the In-House Counsel Erin Hennessy Bracewell & Giuliani Association of Corporate Counsel CLE Luncheon October 17, 2013

  3. 1. Choose a Mark You Can Protect. • Spectrum of distinctiveness • A means for determining a mark’s inherent distinctiveness or strength. • Also determines a trademark’s scope of protection. The more distinctive the mark, the greater its level of legal protectability.

  4. 2. Trademark Clearance Tips • Conduct trademark clearance before you launch the product. • Trademark Clearance = Risk Management

  5. 2. Trademark Clearance Tips • Consider life-cycle of product or service. • Not one size fits all. • Cost control

  6. 2. Trademark Clearance Tips • Streamline the Clearance Process

  7. 2. Trademark Clearance Tips • Train Marketing Team to Do Quick “Knock-Out” Searches

  8. 2. Trademark Clearance Tips • When you are doing the searching, use RED, YELLOW, GREEN indicators to indicate risk.

  9. 2. Trademark Clearance Tips • If you are in a specialized industry, include industry-specific databases in your preliminary searches. • Gaming • Amazon.com, GameStop.com • Music • ArtistDirect.com, Amazon.com, iTunes • Software • CNet.com, Amazon.com

  10. 2. Trademark Clearance Tips • Be Creative!! • How can you turn a “no” into a “yes”?

  11. 3. Conduct Trademark Basics Training Seminars for Marketing Team on Regular Basis.

  12. 4. Establish Policies for Proper Trademark Use – Internally and Externally PROPER TRADEMARK USE STARTS AT HOME!

  13. 5. Leverage Your Domain Name Portfolio • Are all domain names pointing to home site? • Monetization? • Can legal be a revenue stream? • Are you tracking launch of new gTLDs?

  14. 6. Be proactive!  (part I) • Trademark Searching • Trademark Watch Programs • File Trademark Registrations with Customs • Ebay VeRO Program • Monitor Social Media

  15. 7.  Monitor Competitors

  16. 8.  Be Creative! (part II) – Enforcement • “Duty to Enforce” • Carefully Consider Best Approach.

  17. 9. Make Sure You Have Rights to Use Third-Party IP

  18. 10. Negotiate Outside Counsel Fees • Flat fees? • Alternative fee arrangements – monthly spends, etc.

  19. THANK YOU!

  20. We hope you enjoyed today’s program. Please take a moment to complete the evaluation form from your smartphone: If you do not have a smartphone, feel free to stop by the registration desk to complete the online evaluation. Bit.ly/10172013

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