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Archive for March, 2010

Threatening Web Site Comments Not Protected Free Speech

Posted by M. Reichel On March 30, 2010

A recent decision by the Court of Appeal of the state of California, Second Appellate District in Los Angeles held that a 15 year old Web site owner can sue his schoolmate for posting menacing messages on his personal Web site. The 79 page ruling on March 15, 2010 (available HERE), according to a recent SFGate article (link HERE) is one of the first such rulings in Calif. “to examine the boundaries between free expression and so-called cyber-bullying.”

As noted in the SFGate article, the minor plaintiff “set up a Web site in 2005 to promote an entertainment career after recording an album and starring in a film,” and “[b]elieving – wrongly, the court said – that he was gay, some fellow students at a Los Angeles high school posted comments that mocked him, feigned sexual interest or threatened violence.” The plaintiff had a record album set to be released, and the reference to “starring in a film” was to his lead role in a feature film presented at an international film festival. More…

On Friday, March 18, 2010, the World Intellectual Property Organization (WIPO) published statistics comparing 2009 trademark filings under WIPO’s Madrid System for the International Registration of Marks (Madrid) to filings made in 2008. In total, and as noted in the WIPO article available HERE, Madrid filings decreased 16 percent in 2009, with several countries reporting double-digit decreases. For example, countries in the top 40 by total number of filings such as (in order by number) Germany, Benelux, Italy, Spain, Denmark, the Czech Republic, Sweden, Portugal, Latvia, Liechtenstein, Greece, Lithuania, Belarus, Monaco, and Romania all had more than 20 percent fewer filings, with Portugal having the largest percentage decrease at 60.8 percent. A number of countries had more Madrid filings in 2009 as compared to 2008, such as (in order of total number of filings) the European Union (3.1 percent), Japan (2.7 percent), the Republic of Korea (33.9 percent), Hungary (14.5 percent), Croatia (17.5 percent), and Singapore (20.5 percent). The United States filed 13.1 percent fewer applications in 2009 than in 2008. Complete statistical data for the top 40 2009 filing countries dating back to 2005 are available at the link referenced above.

East Meets West 2010

Posted by M. Reichel On March 23, 2010

The European Patent Office (EPO) recently announced additional details regarding its East Meets West 2010 forum to be held from April 21-23, 2010, in Vienna, Austria. As noted by the EPO (main forum webpage HERE), “Japan, China, and Korea are all among the five top patenting nations in the world, making Asia one of today’s important innovation hubs,” and “[f]or patent searchers worldwide accessing and understanding patent information from Asia has become a must.” This forum is directed toward users of patent information who “need to know about the latest database offerings in the field of Asian patent data, are looking for an opportunity to meet experts from Asia and Europe, [and] want to gain new insights, share experiences or simply get inspiration from colleagues and other patent information users.” Two training sessions will be held on April 21 (regarding classification matters and advanced features of free Asian patent databases), with an introductory session to be held on April 22 and a series of product presentations, discussion rounds, and a poster session on April 23. This will be the third East Meets West session hosted by the EPO.

A recent article on the Marketing Pilgrim Web site (link HERE) caught my attention, as it was one of the first concise articles I have read regarding the positive impact for businesses based upon their corporate/branded social media networking sites. As referenced within the article, market research firm Chadwick Martin Bailey and iModerate Research Technologies surveyed more than 1,500 consumers, with the results showing that the consumers were more likely to purchase and recommend brands that they personally follow on Twitter and Facebook. According to the statistics shown in the article, 51 percent of consumers surveyed were more likely to purchase a brand since becoming a fan/follower of the brand on Facebook, and 60 percent were more likely to recommend the brand to others based on their Facebook followings. Results for Twitter were even more impressive, as 67 percent of consumers following the brands on Twitter were more likely to purchase, and 79 percent were more likely to recommend the brand. So – is your retail business taking advantage of these free social media mechanisms?

USPTO to Hold Independent Inventors Roundtable

Posted by M. Reichel On March 21, 2010

On Monday, March 29, 2010, the U.S. Patent and Trademark Office (USPTO) will be hosting a roundtable for independent and small entity inventors at the USPTO campus in Alexandria, Va. This roundtable, hosted by USPTO Director David Kappos, will “address current issues of concern to the independent and small entity inventor community including patent reform legislation” according to the USPTO announcement (link HERE) on the USPTO Independent Inventors Web site (available HERE). This roundtable will also be available via webcast on the USPTO’s Web site, and instructions will be made available HERE the day of the webcast. This roundtable will run from 4:30-5:30 p.m. EDT.

FINRA Hosts Webinar on Issues Related to Social Media

Posted by E. Moore On March 17, 2010

On March 17, 2010, the Financial Industry Regulatory Authority (FINRA) hosted a webinar titled “Implementing Compliance Practices for Social Media.”  The focus of the webinar was FINRA’s recently released Guidance on Blogs and Social Networking Web Sites (the Guidance) (prior BLOG post HERE).  The panel was comprised of FINRA and industry representatives, who discussed best practices for firms looking to participate in social media forums.

At the beginning of the presentation, FINRA reiterated that its Guidance only addresses use of social media for business purposes.  A FINRA representative stated that FINRA is “not trying to reach into the personal use of social media by registered representatives.”  Nevertheless, firms that permit their personnel to use social media for personal purposes, were cautioned to adopt policies detailing the type of information that may or may not be posted.  For example, some firms only permit their personnel to post “business card” information on their personal Facebook pages.  

Although it was once thought that firms would be shut-out of growth opportunities presented by social media, FINRA has made clear that with the proper tools and supervision, firms can participate in this forum.  Firms are advised, however, that all advertisement, advice or other business conducted via social media channels must comply with FINRA’s rules and regulations.  The requirements related to record-retention and supervision pose the greatest challenges.  Several suggestions for “best practices” were provided, such as:

  • Adopt policies and procedures related to personal and professional use of social media;
  • Provide guidance on how to comply with firm policy and FINRA rules;
  • Monitor use and block access to prohibited sites and features (i.e. a firm may provide access to LinkedIn but prohibit access to the recommendations feature);
  • Provide training to staff on technology and polices;
  • Perform on-going evaluations to ensure regulatory compliance with record retention and surveillance requirements;
  • As technology changes, revise and update policies and procedures; and
  • Prior to providing access to social media sites, consider representatives’ compliance history and require representatives to participate in training.

One of the panelists, from New York Life Insurance Company, stated that her firm has engaged a vendor to assist it with FINRA compliance.  She recommended that when selecting a vendor, a firm should make sure that the vendor will be able to retain and retrieve all records from social media activity and to move that information into the firm’s surveillance system for review.

FINRA explained that although the Guidance is not a rule, it should be followed to ensure compliance with its FINRA rules and regulations.  Additionally, FINRA expects that new rules will soon be adopted related to issues addressed by the Guidance.  FINRA examiners, analyzing a firm’s participation in social media and compliance with the FINRA rules, will expect the firm to: (1) have written procedures; (2) enforce compliance with those procedures; and (3) perform testing to ensure that monitoring and surveillance processes are working.

Ice Miller representatives participated in the FINRA webinar and will continue to follow these issues.  For more information about FINRA compliance, please contact Ice Miller at

WIPO Announces 23rd Trademark Standing Committee Session

Posted by M. Reichel On March 17, 2010

On April 19-22, 2010, the World Intellectual Property Organization (WIPO) will be hosting its Twenty-Third Session of the “Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications” in Geneva, Switzerland. This meeting (WIPO meeting link HERE), will cover several topics, including “Grounds for Refusal of All Types of Marks,” “Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks,” “Draft Questionnaire Concerning the Protection of Names of States Against Registration and Use as Trademarks,” and “Possible Areas of Convergence in Industrial Design Law and Practice,” with materials currently available in PDF format for each topic on the WIPO link above. For example, the documentation in connection with the Grounds for Refusal references 16 individual reasons, including signs not constituting a trademark, lack of distinctiveness, descriptiveness, genericness, functionality, public order and morality, and deceptiveness, to name a few. A formal draft agenda (PDF link HERE) is also available, noting the topics to date and the order in which they will be presented.

Hotels Are Looking For Positive On-Line Reviews

Posted by E. Moore On March 16, 2010

A CNN contributor has recently reported that hotels are taking dramatic steps to get favorable online reviews, including hounding guests to say positive things on social media sites.  To read the complete article follow this link:  According to the article, across the board hotels are engaging in “reputation management” and are relying on consumers to become their best advertisers. 

Hotels looking for favorable reviews, however, must proceed cautiously., one of the largest sites offering travelers consumer-generated content related to hotels, has a policy against hotels spinning their own ratings.  TripAdvisor’s policy is “property owners are welcome to encourage their guests to submit user reviews upon their return home, but they are not allowed to offer incentives, discounts, upgrade, or special treatment on current or future stays in exchange for reviews.” 

Trip Advisor’s policy is consistent with the Federal Trade Commission’s (FTC) guidelines (the Guides) concerning the use of endorsements and testimonials in advertising.  The Guides require endorsements to include a disclosure of any material connection between the endorser and the company he is endorsing.  As the Ice Loop has previously reported (prior BLOG post HERE), the Guides explain that “[w]hen there exists a connection between the endorser and the seller of the advertised product that might materially affect the weight of credibility of the endorsement (i.e., the connection is not reasonably expected by the audience), such connection must be fully disclosed.” 

On March 17, 2009, Ice Loop contributor Michael  Wukmer will be presenting at the Hoosier Hospitality Conference on issues related to social media pertinent to the hotel and restaurant industry.

Google Obtains Patent on Using Location Data in Advertisements

Posted by Administrator On March 15, 2010

On the heels of a recent Facebook patent of note (prior blog post HERE), Google, Inc. has been in the news for receiving its own technology patent, entitled “Determining and/or using location information in an ad system.” U.S. Patent No. 7,668,832 (available HERE) was issued on February 23, 2010, and includes eight method and apparatus claims relating to advertising on client devices based upon geographical location information. This issued patent is actually a continuation-in-part patent application of a prior filed patent application having the same title (Serial No. 10/654,265), which, according to the U.S. Patent and Trademark Office’s electronic records, is itself set to issue on March 16, 2010. More…

USPTO and UKIPO Address Patent Application Backlogs

Posted by M. Reichel On March 15, 2010

On Wednesday, March 10, 2010, the U.S. Patent and Trademark Office (USPTO) and the UK Intellectual Property Office (UKIPO) announced a joint action plan to reduce overall patent application processing backlogs in both patent offices. As noted in the USPTO announcement (link HERE), “[p]atent backlogs hinder the deployment of innovation and have clear adverse effects on the global economy,” and according to a study by London Economics released on behalf of the UKIPO, which is one of the first studies attempting to quantify the economic impact of patent backlogs, “the cost to the global economy of the delay in processing patent applications may be as much as £7.65 ($11.4) billion each year.” The leaders of both offices (David Kappos of the USPTO and David Lammy, the UK Minister of State for Higher Education and Intellectual Property), according to the announcement, “committed both the UKIPO and the USPTO to develop a plan to optimize reuse of work on patent applications that are filed jointly at the USPTO and the UKIPO,” and “[t]o this end, the offices will identify all areas of reutilization potential by the end of this calendar year, and shall pursue measures designed to facilitate maximum reuse by building confidence in the work done by each office.”

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