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White & Case Wins Ruling Allowing Registration of "Thumbdrive" Trademark

Silicon Valley, New York, December 13, 2010 ... Global law firm White & Case LLP has won a significant trademark victory for Trek 2000 International Ltd., inventor of the ThumbDrive™ USB flash drive. The Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO) held that Trek's highly valuable ThumbDrive™ trademark is not generic and is entitled to registration on the principal register of the USPTO. As a result of this November 30, 2010 ruling, Trek alone is able to sell these ubiquitous flash drives in the United States under the ThumbDrive™ brand.

Henn Tan, Trek's Chief Executive Officer, coined the mark ThumbDrive™ in 2000 in connection with Trek's pioneering invention of the USB flash drive. Trek applied for US registration of its ThumbDrive™ trademark on the principal register of the USPTO in 2007; however, the Trademark Office refused to register ThumbDrive™, arguing the mark was "generic." Fearing that its highly-valuable ThumbDrive™ trademark would go the way of other unique and famous marks that became generic and lost all their value – such as aspirin, e-mail, zipper and escalator – Trek engaged in a lengthy legal battle to avoid this fate.

White & Case introduced evidence of Trek's long and extensive use of the mark, its successful efforts in policing incorrect use of the mark and the absence of competitors using the mark in a generic way. Citing this evidence, the Board rejected the Trademark Office's position that the mark was generic and ordered that Trek's commercial rights should be protected and the ThumbDrive™ mark should be registered.

Warren Heit, White & Case partner who represents Trek, stated: "The ruling confirms Trek as a true innovator in the USB flash drive market."

Christopher Glancy, another White & Case partner involved in the matter, continued, "The decision confirms the high burden the Trademark Office bears when considering whether a coined mark has become generic, particularly where competitors do not use the term."

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Luis Mocete
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White & Case LLP
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