1. 1 1 AIPLA Firm Logo American Intellectual Property Law Association AIPLA Expectations for TM5 AIPLA IP Practice in Japan Committee April 2013 _____ Materials Prepared by David W. Hill Finnegan, Henderson, Farabow, Garrett & Dunner. LLP

2. 2 2 AIPLA Firm Logo TM5 Project Overview Review of TM5 Projects –ID Project (USPTO) –Common Statistical Indicators (OHIM) –Common Status Descriptors (USPTO) –Bad Faith Project (JPO) –Image (Design) Search (JPO) –Taxonomy and Euroclass (OHIM) –User Friendly Access to TM Information (OHIM) –TM5 Website Project (KIPO)

3. 3 3 AIPLA Firm Logo ID Project Goal Purpose of project is to develop identification of goods and services acceptable in participating offices Currently 13000 IDs 5 other countries providing IDs: Philippines, Canada, Mexico, Russian Federation, Singapore AIPLA – Hope to move the world toward more specific IDs required by US practice The harmonized ID list will be on the TM5 website (expected March 2013) IDs included on the list are acceptable in the TM5 offices (U.S., OHIM, JPO, KIPO, SAIC) but not necessarily in the other offices

4. 4 4 AIPLA Firm Logo Common Statistical Indicators (OHIM) Offices are exchanging data Developing list of common statistical indicators (i.e., pendency, productivity, etc.) AIPLA will consider suggesting specific indicators desired for inclusion in project

5. 5 5 AIPLA Firm Logo Common Status Descriptors (USPTO This project would develop a list for use by the offices of common status descriptors May include a glossary or definitions of descriptors May include the use of Icons AIPLA is reviewing this project

6. 6 6 AIPLA Firm Logo Bad Faith Project (JPO) Goal is to establish legal structure and common approach to what constitutes a bad faith trademark filing AIPLA hopes project will address what constitutes a bad faith filing Topic of discussion at next TM5 meeting in Tokyo AIPLA willing to help with development of White Paper on Bad Faith discussing participating offices’ practices and cases

7. 7 7 AIPLA Firm Logo Image (Design) Search (JPO) Project seeks to address how to search design marks well Mainly a technological issue JPO currently identifying the technical issues germane to searching images (design) May also use Vienna Classification system OHIM may be preparing to launch a site for image search AIPLA supports improving ability to accurately search design marks

8. 8 8 AIPLA Firm Logo Taxonomy and Euroclass (OHIM) Euroclass is OHIM’s identification database Taxonomy sets out ID manual in harmonized fashion Taxonomy might be used in the U.S. to indicate the minimum level of specificity required for an identification Trilateral ID list could be a comparative source AIPLA is studying this issue

9. 9 9 AIPLA Firm Logo User Friendly Access to TM Information (OHIM) This involves OHIM’s TM View database The idea is for participating offices to integrate their TM Data into TM View U.S. users may have reservations regarding the use of TM View May provide, at best, a knockout search

10. 10 AIPLA Firm Logo TM5 Website Project (KIPO) KIPO anticipates website March 2013 AIPLA hopes the website will provide current information about TM5 projects, meetings, publications, etc.

11. 11 AIPLA Firm Logo Thank you for your attention! David W. Hill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington, DC david.hill@finnegan.com