GLOBAL TRADEMARK CLEARANCE STRATEGIES · EMPORIO ARMANI, MARC JACOBS and MICHEL KORS. Fossil's products are sold to department stores, specialty retail stores, and specialty watch

GLOBAL TRADEMARK CLEARANCE STRATEGIES

HEATHER FOSTER, Dallas Assistant General Counsel

Fossil, Inc.

State Bar of Texas ADVANCED TRADEMARK WORKSHOP

March 3, 2010 Austin

CHAPTER 4

BIO Heather C. Foster is the Assistant General Counsel for Fossil, Inc., a Richardson, Texas-based global design, marketing and distribution company that specializes in consumer fashion accessories. Fossil’s principal offerings include an extensive line of men's and women's fashion watches and jewelry sold under proprietary and licensed brands, handbags, small leather goods, belts, sunglasses, cold weather products, footwear, and apparel. In the watch and jewelry product category, Fossil's offerings include a diverse portfolio of globally recognized proprietary and licensed brand names, under which its products are marketed. Fossil’s proprietary brands include, FOSSIL, RELIC, ZODIAC, MICHELE, and WATCH STATION. Fossil also holds licenses to make watches (and in some instances jewelry) under brands such as ADIDAS, BURBERRY, DIESEL, DKNY, EMPORIO ARMANI, MARC JACOBS and MICHEL KORS. Fossil's products are sold to department stores, specialty retail stores, and specialty watch and jewelry stores in the U.S. and in over 100 countries worldwide through 23 company-owned foreign sales subsidiaries and a network of 59 independent distributors. Fossil also distributes its products in 342 company-owned and operated retail stores and e-commerce websites. Ms. Foster was hired by Fossil in 2005 to act as their Intellectual Property Counsel and became their Assistant General Counsel in 2009. While her responsibilities have become much broader, Ms. Foster continues to oversee all intellectual property matters for the company worldwide, including copyright and design protection, as well as managing the protection and enforcement of the company’s trademark, domain name, copyright, design and patent portfolios. Her practice also includes, advertising law, sweepstakes law, licensing, anti-counterfeiting, product compliance, and regulatory compliance. Before joining Fossil, Ms. Foster specialized in intellectual property law at Thompson & Knight in Dallas, Texas. Ms. Brunelli received her B.A. in Psychology from Wellesley College in 1997 (cum laude) and her J.D. from Boston College Law School in 2000 (magna cum laude).

Global Trademark Clearance Strategies Chapter 4

i

TABLE OF CONTENTS

WHAT DO CLIENTS REALLY WANT? ..................................................................................................................... 1

OVERVIEW ................................................................................................................................................................... 2

KNOW YOUR CLIENTS .............................................................................................................................................. 2

UNDERSTAND CLIENT RISK TOLERANCE AND EXPECTATIONS ................................................................... 3

PRELIMINARY ASSESSMENTS................................................................................................................................. 3

ACTUAL SEARCHING – WHAT DOES FOSSIL DO? .............................................................................................. 4

ASSESSING THE RESULTS ........................................................................................................................................ 4

QUESTIONS?................................................................................................................................................................. 5

Global Trademark Clearance Strategies

Advanced Trademark Workshop 2010Wednesday, March 3, 2010

P t d BPresented By:Heather Foster, Assistant General Counsel, Fossil, Inc.

What do clients really want?• One client’s perspective

on clearance needs.on clearance needs.• When everything is

global.


1

Overview

• Know your Clients• Asses Risk Tolerance• Understand scope and client expectations• Conducting searches• Assessing results

Know your clients– What do they do in-house vs. send to outside

counsel?– Is outside counsel the first line of defense? – Have they already done Google Searches?– Have they already done preliminary searches?– Do they only contact outside counsel for the sticky

issues? – Are they looking for an opinion of counselAre they looking for an opinion of counsel– Clear product names and not brand names? – Clear all US-only items but send global to outside

counsel?


2

Understand Client Risk Tolerance and Expectations

• Company’s general risk toleranceS ifi i k t l f thi l• Specific risk tolerance for this clearance– how is the mark to be used (product name, marketing

material, brand name, licensing).– How easy would it be to later change the name

• Is it printed on the product or is it only used on a website or in a catalog?

– How long is the name to be used?• Set realistic expectations – nothing is ever

certain or completely clear

Preliminary Assessments– How strong is the mark, descriptive? Generic?

Suggestive? Diluted? – Translation Issues?– Concern about enforceability, registration, use or all

of the above– Geographic scope

• Must have countries (these may need to be searched first)• Importance of markets (current and future)• Known problem countries (consider manufacturing as well as

l )sales) – Understanding the industry and International Class

coverage• Clothing and software vs. sunglasses and pet food


3

Actual Searching – what does Fossil do?

• Product Names/Short term tag lines / Marks not to be enforcedto be enforced– SAEGIS international searches– GOOGLE SEARCHES

• Collection Names/Marks to be registered/Brand expansion– SAEGIS international searches– Google Searches– Outside counsel preliminary searching– Selected full searches– Selected Foreign associate searches

Assessing the Results

• Infringement vs. non-registrabilityPi t l iti t thi d ti• Pirates vs. legitimate third parties

• Known use vs. non-use– Use investigations– Cancellation actions

• Individuals vs. Companies• One conflict vs. many conflicts• Geographic location of problems• Is client willing to purchase registrations?


4

Questions?


5

GLOBAL TRADEMARK CLEARANCE STRATEGIES · EMPORIO ARMANI, MARC JACOBS and MICHEL KORS. Fossil's products are sold to department stores, specialty retail stores, and specialty watch

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