By Sheila Pursglove
Legal News
Fishermen often talk about “the one that got away.”
“When Reggie Jackson’s application was assigned to me randomly, he offered to examine a more ‘complicated’ case in exchange for Mr. October,” Aurini says. “I was a Yankees fan when Mr. October and ‘Louisiana Lighting’ – Rod Guidry – were in their heyday, and looking back would not make that exchange again.”
But Aurini, now a partner with Harness Dickey & Pierce in Troy, has had plenty of other fascinating cases, including work on registration of the quirky “Crazy Good” trademark for Pop-Tarts toaster pastries during two years as in-house trademark counsel for a Fortune 500 consumer packaged goods company.
He got the trademark registered after an appeal before a three-judge panel of the Trademark Trial and Appeal Board. The appeal was necessary because the Trademark Examiner refused registration on statutory grounds, namely, that the mark was merely descriptive and should therefore be available for all to use. Three opinions and 32 pages later, a majority vote reversed the PTO’s merely descriptive refusal of “Crazy Good” for “toaster pastries, [and] fruit preserve filled pastry product[s].”
The case illustrated four tests various tribunals often employ – the dictionary test, imagination test, competitors’ need test, and the competitors’ use test.
“This was a close case as illustrated by the split decision and by the reaction of one well-known blogger who lamented his own trademark for TTABlog was not similarly approved,” Aurini says.
Other interesting trademarks have included Gutter Helmet’s “Never clean your gutters again” slogan; and the color blue as applied to medical implants and plastic piping for transporting ultrapure fluids, and product packaging cases. Color is an interesting and challenging candidate for trademark protection but one that more companies could take advantage of as they strive to distinguish themselves in the marketplace, Aurini notes.
“While there’s a strong presumption against single color trademarks, my first exposure to color marks in the legal field came when I examined one of Owens Corning’s pink insulation applications – an application I was able to allow, consistent with others that had been allowed previously.”
Aurini first got interested in IP Law while earning his J.D., magna cum laude, at The Catholic University of America in Washington, D.C. A course in copyright law piqued his interest in intellectual property – and after graduation, when a classmate who was a patent examiner indicated the USPTO Examination branch was hiring, Aurini jumped at the chance to work there as a Trademark Examining Attorney.
Aurini – who previously worked in an examination office of the USPTO that produced four Trademark Trial and Appeal Board judges – joined Harness Dickey in 2000, where his practice focuses on trademark clearance and prosecution; opposition and cancellation proceedings before the Trademark Trial and Appeal Board; drafting intellectual property agreements; and counseling clients in the enforcement of various intellectual property rights.
“Working with driven business people is interesting and challenging,” he says. “Working at a firm allows exposure to numerous brands across a wide spectrum of industries which is very interesting to me.”
He has seen the Internet and social media vastly change the IP law landscape in recent years.
“It’s made enforcement of IP rights a challenge as imposters and infringers have a new landscape or real estate to create mischief – as someone has probably said, it becomes a game of WHAC-A-MOLE® – the registered trademark of Mattel!”
He added his expertise to last year’s book, “Revising Trademark Protection and Litigation Strategies in a Changing Marketplace” – one of several IP experts contributing advice on educating clients on protecting trademarks in the current marketplace, and insights on evaluating new applications, exploring potential risks, addressing infringement concerns, and understanding litigation tactics.
“I provided a high level look at trends in the trademark field, including a short discussion on the perils of sending cease and desist letters indiscriminately and being labeled as a ‘Trademark Bully,’” he says.
Before his law career, Aurini spent time in the political arena, after earning his undergrad degree in Diplomacy and Foreign Affairs from Miami University, Oxford, Ohio, and a master’s degree in public policy from Regent University, Virginia Beach, Va. One of his professors and mentors in grad school formerly worked in an advisory capacity on Parliament Hill in the Canadian capital, Ottawa, Ontario.
“One thing led to another and I interned and then took a salaried position with a Member of Parliament,” he says. “My responsibilities largely centered around responding to constituent letters and briefing the Member of Parliament on legislative issues. It was very interesting work but as I saw firsthand laws being shaped by non-lawyers, it simply confirmed my interest in earning a law degree.”
Aurini is a native of Burlington, Ontario, and his brother and parents still live in the land of the Maple Leaf. He grew up in Poland, Ohio, and currently lives in Birmingham with his wife, Shanda, and daughters Coco, Emmie and Thandie. An avid tennis player, he is enjoying introducing the game to his daughters.
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