The mid-morning session was Similarity in a Global Context featuring Dr. Michael Best (Freitag & Best, Rechtsanwälte) with speakers Fabio Angelini (De Simone & Partners S.p.A.), Bernard Volken (Furhrer Marbach & Partner), and Ho-Hyun Nahm (Braun IP & Law).

Moderator Michael Best kicked off the session by illustrating a case example of an in-house counsel (played in this case by Fabio Angelini) seeking advice of outside counsel as to the registrability of his client’s proposed new mark. The in-house counsel provided an instruction letter to the outside counsel (referred to humorously and perhaps as an intentional double-entendre as the out-house counsel by one panelist) clarifying the scope (i.e., classes of goods & services) of the intended mark and the intended geographic scope of the mark’s roll-out along with certain factual information such as the sophistication of the marks consumers and the desire not to license the mark. The three proposed marks for the architectural firm were: ANLOD, deBUILD, and SKYLINES. Speaking first, Angelini noted that the first step prior to outsourcing the search was a knock-out or “identical marks” search. Based on these results, he outlined 4 levels of risk he would anticipate receiving from outside counsel: mark available, manageable risk (e.g., a risk that could be eliminated by cancellations, buy-out, or amicable resolution), substantial risk (e.g., a risk of litigation or other adverse action that may exceed the client’s budget or willingness to assume such a risk), and unacceptable risk (e.g., direct conflicts).

Bernard Volken spoke next about the scope of searches when rolling out new marks, namely, whether the search should cover classes of goods and services closely related to the anticipated offered services. He gave examples of court precedent to the effect that a trademark owner might want to conduct a cross search for financial services if their product is automobiles as automakers typically offer leasing services. Similarly, banking, counseling, and legal services have been held to be related such as to require counsel to conduct cross-searches in appropriate circumstances. However, he noted that his is not an easy concept to define, and that it may not always work both ways. Finally, he noted that it is important to conduct searches for domain names that may conflict with a proposed mark.

Next Mr. Nahm built on this idea of cross-searching by noting that in some instances, goods such as breads, ham, and bacon were held to be similar to restaurant services. He (dovetailing on the morning session) highlighted that it is important to conduct searches both with regard to the phonetic and transliteration of a mark. He noted that the KIPS looked at factors such as pronunciation, appearance, and concept (i.e., transliteration), all of which must be dissimilar to proceed with a proposed mark. Turning to the SKYLINE example proposed mark, he noted that it would also be important to look at whether the mark was seen as singular, or whether it could be viewed in a dual sense, i.e., SKY – LINE.

Turning back to the in-house perspective, Mr. Angelini confirmed that given the above information, he would expand the scope of the searched goods and services because of possible crossover from architectural services to other goods and/or services. He noted particularly, that there might be close calls in which a mark owner might shy away from product roll out because of the distinct possibility of expansion into the owner’s core goods or services by prior owners in similar classes. However, where this is the case, he noted that if the risk is otherwise low, it may be appropriate to consider use investigations which could be used to bring cancellation proceedings, buy-outs, co-existence agreements, or letters of consent. In the end, the informed panel opined that there was no right or wrong answer as to which proposed mark would present less challenge (as each presented unique obstacles, e.g., in its descriptiveness, transliteration, or existence of similar marks) at least legally speaking. Ultimately, it would boil down to the client’s perspective on risk, which geographic regions they might expand into, and their marketing and legal budget.