I was honored to present today at the 11th International Litigation and Arbitration Conference at the beautiful Biltmore Hotel in Miami, Florida. We discussed various aspects of international law, with my focus being on trademark issues relating to import/export of goods.

A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: "Mark, my goods were stopped at the port due to a trademark issue. Help!" Often, the problem relates to missing paperwork regarding permission or authorization to use a registered trademark, such as a certification mark, like HDMI. Without the proper paperwork, Customs and Border Protection will assume you have no permission to use the registered trademark and will stop your goods at the port. Today, along with colleagues Robert Becerra, Lenny Feldman and Santigao Cueto, I discussed preventative steps that one can take before importing or exporting goods bearing a registered trademark, steps that can be taken if goods are halted at the port by Customs and Border Patrol and steps that may be taken by an intellectual property rights holder to help enforce his trademark rights in the U.S. A copy of some of the slides I used today can be found here. And here is a photo at lunch showing Robert Becerra on the left and Santiago Cueto on the right.

Some of the preventative steps that can be taken prior to importation of goods bearing a registered trademark include reviewing the product for potential trademarks, including the packaging, any paper inserts, and the product itself. For computer devices, the device should be turned on and the most accessible screens should be scrolled through.

Subsequently, prepare a list of all potential trademarks found on product and perform a search of the trademarks, such as on the U.S. Patent and Trademark Office trademark database (http://tess2.uspto.gov) Trademark Electronic Search System (TESS), and the World Intellectual Property Office trademark database (http://www.wipo.int/madrid/en/romarin/) ROMARIN (International Trademark Information Database)

If no existing trademark registrations are found, then you are in the clear. If a trademark registration is found, then you determine whether the registered mark matches the trademark on your product you are importing and whether the description of goods in the trademark registration matches the product you are importing. If there is a match, the you should contact the owner of the registered mark for permission.

Often, permission to use a certification mark, such as HDMI or Bluetooth, involves obtaining a certificate of compliance froma third party (such as a laboratory), signing a usage agreement, paying a royalty according the amount and type of use and abiding by the usage policy. Here is a link to the HDMI web page that explains its usage policy and provides information on how to obtain permission to use its certification mark.

Like many other areas of life, when dealing with trademark issues relating to the import and export of goods bearing a registered trademark, an ounce of prevention is worth a pound of cure.

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Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had there own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture - even making its way into an Outkast song ("... shake it like a Polaroid picture!"). But then Polaroid filed for bankruptcy in 2001 ... and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.

Land, the inventor of the Polaroid system (Patent No. 1,956,867) left Harvard just months before graduation in 1932 to establish the Polaroid company. Land is named on 533 Polaroid patents, including one for the first synthetic polarizer, and kept Polaroid innovative for decades with products including 3-D film. He also developed the Polaroid OneStep, which was the world's best-selling camera in the 1970s. The coming of the digital age, however, marked Polaroid Corp.'s doom.

After its first bankruptcy in 2001, however, One Equity Partners LLC, JP Morgan's private equity unit, purchased a 53 percent stake in Polaroid for $56 million, helping it come out bankruptcy. Petters Group then began licensing Polaroid's brand name in 2002 and bought the company in 2005 for $426 million. After it filed for bankruptcy protection (the second time) in December 2008, a group of investors in 2009 paid $88 million in the company for the brand name. So even after two bankruptcies and a multitude of negative press, the Polaroid brand was worth tens of millions of dollars

There are iconic brands that transcend generations and continue to thrive. See my previous blog post about the famous Coca Cola brand. But for those brands that may have lost their ability to keep up with changing technology, like Polaroid, at least their names will live-on in new products. What is the name Polaroid worth? The amount is subjective (though $88 million is a good place to start), but it highlights the fact that whether you are a local business or an international business, it's important to protect your brand. As we learned from Polaroid, sometimes the only thing remaining with any value after bankruptcy is the brand.

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Michael Jackson's unfortunate passing highlighted his international fame and the value of the Michael Jackson brand. What was surprising to many was that Michael Jackson had major financial troubles before his death, which is why he decided to go on his final "This Is It" tour. Michael Jackson's music and products generated large amounts of income before his death, but I was stunned to see the magnitude of his earnings after his death. Since his death, the Michael Jackson brand, as reported by Billboard, has generated over $1 Billion from sales and a record deal.

Much of Michael Jackson's income was, and is, tied to his personal brand. There are 16 live trademarks that protect the Michael Jackson brand which range from a word mark filed in 1993 for "Planet Michael the Ultimate Michael Jackson Online Game," which was filed after his death on January 20, 2011, to a simple word mark for his first and last name.

Being a media legend, Michael Jackson and his business managers took full advantage of creating revenue streams from his personal brand. And as new products bearing his brand are released, the value of his trademarks will increase. But Michael Jackson is not the only dead celebrity to cash in on his brand's fame. Just to highlight a few: Albert Einstein's likeness has been licensed, generating over $75 Million over the past five years ("Baby Einstein" being one of those products using the Einstein name and likeness) and Elvis Presley's estate generates over $55 Million a year!

If the above teaches us anything, it's that trademarks are not only important as business brand names (see my previous posting about the famous Coca Cola trademark) but also tremendously important as personal brands for celebrities before and after their lifetime.

On a side note, Michael Jackson also obtained a U.S. Patent for his famous shoe illusion (click here to see Michael Jackson's Patent)

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