Thursday 30 May 2013

IP attorneys: would you want your daughter to marry one?

This blogger has just read the following media release:
Today, is releasing findings from a new survey asking parents if they want their child to grow up and become or marry a lawyer. Highlights from the survey include: 
  • 64% of survey respondents with children in the household want their child to become a lawyer.
  • Moms (55%) are more likely to be interested in having a lawyer as a son- or daughter-in-law than dads (38%).
·         80% of parents with household incomes of less than $25,000 per year said they’d like their child to become a lawyer, versus 54% of those with household incomes over $75,000. 
Full details are in the release below and on the blog.
It seems strange that, in a jurisdiction in which lawyers are so widely disliked, distrusted and generally subjected to generalised abuse (just key 'lawyer jokes' into your favourite search engine and see what you get). However, the perception that lawyers earn a lot of money is widely held, as is the faith that a lawyer in the family will do whatever damage he or she does outside rather than within his or own domestic patch, in much the same way as cats like to use other people's gardens as lavatory facilities rather than soil their own.

It would be good to know how many people polled would, if informed of the option, prefer their child to be or to marry a patent or trade mark attorney -- even if they knew the truth about what many IP practitioners, particularly those working in-house or for themselves, were actually taking home after deductions for tax, social security, pensions and whatever.

Thursday 23 May 2013

Lost in Translation : Trademarks

Buy the music instead
One of the issues that often vexes me is why a word may be registrable as a trade mark in Europe but not in the US or, far more commonly, vice versa. A change that the European commission intends to introduce to both the Community Trademark Regulation and to the Directive in the current revision proposals may bring some harmony in the area of foreign language marks. This is an extension to the absolute grounds for refusing a trademark to allow an objection such as descriptiveness to be raised notwithstanding that the grounds of non-registrability obtain only where a trademark in a foreign language or script is translated or transcribed in any script or official language of a member state.
There is also going to be an obligation on applicants to provide a translation or transcription.
Now this may make sense for the European problem of having community registrations for composite mattress marks from Germany refused because of the now highly distinctive and famous MATRATZEN registrations in Spain, but does it go too far? Will Chinese and Arabic marks  highly distinctive in Europe suddenly find themselves refused as descriptive. Will we find that our invented words are considered to be transcribed versions of Chinese characters. This new absolute ground could be quite a nightmare and it certainly attracted most interest at the Marques conference on Monday.
They already have this rule in America but it isn't an absolute embargo as this legislation seems to impose.  The "ordinary American purchaser" has to be likely to stop and translate the foreign words into its English equivalent. While it seems fair that a community trademark as a unitary right should be denied registration if they can't be distinctive across the whole of the European Union, why do we have to put this into national legislation? Is the British consumer to be denied hypothetically descriptive marks in the Greek script?  The Max Planck study concluded that there was no need to clarify or otherwise amend article 7 (2) CTMR but it seems the commission disagrees. While no doubt this may be a welcome change for the minority languages spoken in Europe which are not recognised as official languages so dont get considered in Alicante towers, it does seem a little overwhelming to protect every language in the world in this way.
The objection can be overcome by acquired distinctiveness but we all know that that is very difficult to prove. If nothing happens, the brand creators will have to move all those obscure languages dictionaries from their creative resources to the desks of those who try to clear their suggestions. If your trademark can be translated better get it registered in Europe while you can and don't forget to use a great value solo practitioner to help you.

Tuesday 7 May 2013

Do you really matter?

The hardest message to
get across to a prospective
client ...?
No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route.  This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.