INTA 2013: protecting trademarks in the cloud


Attorneys at cloud storage providers advised trademark owners how to keep pace with the rapidly-developing technology at the Dallas annual meeting.

Sanjiv Sarwate, principal legal counsel at Dell, kicked off by saying that the cloud has a wide-ranging definition but he personally feels that it represents “a convergence of several trends – content, connectivity and mobility – and a shift in user expectations”.

For, the cloud means connecting businesses and customers in a process involving “an amazing amount of information moving from one place to another,” according to trademark counsel Alica Del Valle.

At AT&T, said general attorney David Cho, the cloud is a platform to enhance existing products and services, and introduce new ones to consumers.

The distinctions are important, according to the attorneys, because each company’s definition of the cloud affects its approach to protecting and enforcing trademarks in it.

“There have been trademark challenges since diversifying from hardware to cloud services,” said Sarwate, adding that Dell’s acquisitions mean there are more trademarks in its portfolio that require protecting.

Salesforce adopts a varied brand protection strategy, according to Del Valle, noting that collaborations can make things difficult, as defining trademark ownership and social media and domain name rights can be tricky. But “if don’t collaborate, you will miss opportunities” (which your competitors will take), she said.

The panel said that as the cloud storage has expanded rapidly, creating new and inventive technologies (and names), the products and services that can be trademarked are increasingly difficult to define.

“It can be difficult to define what technology can do and what functionality it has,” said Del Valle. “We are in constant dialogue with the US Patent and Trademark Office (USPTO) and other IP offices. It’s an ongoing challenge and an ongoing communication with the offices.”

Sarwate said he visited the USPTO last year “to make them aware of the difficulties” but added that “their workload is so big and they spend so little time on each application” that it’s not easy to progress.

The USPTO has been trying to educate itself, according to Del Valle, by sending examiners to technology companies to learn about new software. “There is recognition at both ends, but not everybody is there yet.”

This article was first published on 07 May 2013 in World IP Review

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