A Halloween cease-and-desist, an attorney's IP poetry and the USPTO’s creepy (and slightly awkward) Reddit AMA: news round-up
In today’s news round-up we look at the Internet Corporation for Assigned Names and Numbers' (ICANN's) delayed enforcement of thick WHOIS, Oman’s progress towards electronic filings and a new partnership between an IP consultancy and a corporate powerhouse. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
USPTO conducts #CreepyIP Reddit AMA – The US Patent & Trademark Office are giving the users of social platform Reddit an opportunity to ‘ask them anything’ this afternoon in a bid to promote its annual #CreepyIP campaign. In a post on the /r/IAmA/ subreddit, USPTO representatives including acting chief communications officer Paul Rosenthal and press secretary Paul Fucito are answering questions on intellectual property matters posed by the site’s users. Amongst the standard questions about the #CreepyIP campaign and working at the USPTO, there have been some slightly awkward moments so far. One user, for example, asked whether the USPTO would be launching a campaign on Valentine’s Day focused on “sexy” intellectual property – with the USPTO representative dutifully responded “nope” and suggested the user do a trademark search for such marks “in the privacy of your own home”. Another user said the creepiest thing about the USPTO is the TESS interface, and asked whether there were plans for a refresh – Fucito answered that the user should tune in to today’s TPAC live-stream about upcoming IT upgrades. One user asked if anyone has sought patent protection for "a horse-sized duck" or "a thousand duck-sized horses" (a quirky reference often used in Reddit AMAs), which at the time of publication remains unanswered. All-in-all, though, this is the USPTO taking a novel approach to educating the general public about IP (indeed, in our feature article on trademark education, we suggested Reddit could be an effective tool for outreach) – let’s just hope there are less cringeworthy questions in the remaining hours of the AMA. (TJL)
A Royal hashtag trademark – The International Business Times has reported on an application filed by the Royal Foundation for the hashtag #stopspeaksupport. The Royal Foundation is the organisation setup by the UK’s Duke and Duchess of Cambridge and Prince Harry as part of their work promoting mental health. The trademark, filed at the UK IPO in October, is for goods and services in Classes 16, 35, 36, 41 and 44, and it is speculated that the hashtag – which is not currently in use – will be implemented for a mental health awareness campaign in the future. While it’s not unusual for entities related to the Royal Family to file a trademark (the Royal Foundation has a range of registered trademarks), the fact it is seeking one for a hashtag is a reminder of the newfound popularity of hashtag trademark. We’ve written before about the opportunities and risks associated with seeking exclusive rights into hashtags (and emoticons), and it appears the Royal trio see the positives in such a move. (TJL)
TGI Fridays as a ‘hero for Halloween’ – In response to a Chicago bar’s plans to decorate itself as TGI Fridays, the restaurant chain’s legal team has sent a firm but light-hearted cease-and-desist letter akin to Netflix’s recent viral letter (which was also served to a Chicago-based bar). The letter states that it is “certainly a rite of passage to dress up as your personal hero for Halloween”, but that “[u]nfortunately (for you – not us), trademark law requires us to protect our brands and to take action”. A packaged gift was also included with the letter. TGI Fridays may be hoping that the letter achieves the same viral status as other similar responses (such as ones from Netflix or Jack Daniel’s), but it remains to be seen whether TGI Fridays will be viewed as a ‘hero for Halloween’ by the greater public. (TA)
Oman digitization on track – Oman’s Ministry of Commerce and Industry has revealed figures related to its project to archive IP applications electronically. So far this year, the office has digitised just over 115,000 applications, with 112,000 being for trademarks and a further 3,500 for patents. In a statement, the Oman government department stated that the project “will facilitate procedures during the course of the work of the IP department”, and also that it will “contribute to reducing the burden for the employees to ensure that the procedures are carried out in the required manner”. Furthermore, a spokesperson added: “The completion of applications electronically ensures the accuracy of these applications and that they are flawless, to save fees when finalising the applications electronically. It ensures better and more effective management and access to archived information easily.” This is positive news for rights holders both in and outside of Oman, especially in relation to IP offices improving their digital services. When we conducted our first annual IP Office Innovation Index earlier this year, we noted that a key goal should be ensuring that all IP offices around the globe work towards electronic filing and search. With the news of this ambitious project in Oman, it hopefully means we are one step closer to that milestone. (TJL)
Taiwan to tighten up copyright law – A draft bill to amend the Taiwanese Copyright Act has passed a Cabinet review and is one step closer to implementation, according to the Taipei Times. The final hurdle is final approval from the Legislative Yuan, a move that most agree should be straightforward. The bill will feature a total of 93 amendments and 17 completely new articles to the current Copyright Act in Taiwan, and, according to a statement, the country’s IP office “reviewed copyright regulations in different nations to present a legal framework suitable for the digital age”. While obviously focused on copyright rather than trademarks, it includes changes – such as an update to the fair use scheme – that will be relevant to trademark practitioners. (TJL)
Novagraaf and Mitsui join forces – It has been announced that international IP consultancy Novagraaf has established a partnership with Japanese corporate powerhouse Mitsui. The agreement includes an investment by Mitsui in Novagraaf and will allow the latter to offer a greater range of services to Japanese patrons. A new Japanese office under the name Novagraaf KK has been established as part of the arrangement. This office will be housed by both Novagraaf and Mitsui staff and supervised by Arjen van Blokland, the new managing director of Novagraaf Japan. This is the second investment this year in Novagraaf: at the start of 2017, Paragon Partners, an independent private equity company, took a majority stake in the IP provider. (TA)
Domain name radar:
‘.feedback’ CEO makes further domain (and trademark) acquisitions – Domain Name Wire reports that domain name investor Jay Westerdal has acquired the domain names ‘Vanity.com’, ‘Vanity.net’ and the Vanity.com trademark for $340,000 in a Chapter 11 bankruptcy auction. While domain auctions don’t always merit coverage on World Trademark Review, this one is worth noting due to Westerdal’s involvement. As the CEO of the controversial ‘.feedback’ TLD, Westerdal has clashed with trademark owners over pricing policies for the TLD and engaged in a high profile spat with MarkMonitor, which saw the latter terminate all registry agreements with the TLD. (TL)
Delay to thick WHOIS announced – Staying on Domain Name Wire, Andrew Allemann also reports that ICANN has agreed to delay enforcement of thick WHOIS in ‘.com’, ‘.net’ and ‘.jobs’ by six months – the move primarily attributable to concerns over European Union’s General Data Protection Regulation (GDPR). As we noted previously, the GDPR is the centre of discussion in the ICANN world, with fears that it could mean the end of WHOIS in its current form. This could have a significant impact on trademark policing activities, and should be closely monitored by counsel. (TL)
IP firm shows off new digs – The Tampa Bay Business Journal had an article over the weekend focused on the new Florida office of IP firm Brinks Gilson & Lione. Reporter Frances McMorris filmed a video from the balcony of the new office and gushed at the “stunning view of Tampa” from the 35th floor office. Meanwhile, the firm’s managing partner Alejandro J. Fernandez “pointed to the artwork on the walls carefully selected by the firm's art committee in Chicago”. In a great example of promoting a current client, Fernandez also pointed out how the new office’s conference room “is adorned with overhead fixtures from Barnlight Electric, a vintage lighting maker and a client that the firm successfully represented in a trademark infringement and cybersquatting case”. While the firm’s new digs do look impressive, the staff will no doubt be equally happy at the positive press from one of the biggest local media outlets in the region. (TJL)
There once was a trademark attorney poet – Tarter, Krisky & Drogic partner Amy B. Goldsmith has penned a series of poems for Inside, a publication of the corporate counsel section of the New York State Bar Association. Titled “IPoems: Lessons from the World of Intellectual Property”, the attorney (and poet) uses short verses to explain various trademark, copyright and patent-related situations for a fictional toy company called Zotz. The first, for example, looks at what can happen without a sufficient trademark search/clearance:
There once was a company named Zotz,
Which created toys for tots,
The newest toy, named Ketter™,
Recalled after a cease and desist letter,
Oh my, no trademark search, CEO Zotz?
With the ‘rap cease-and-desist’ earlier in the year, and now this series of poems to explain IP concepts, the trademark world has become increasingly creative of late. What next, a video game about being a trademark attorney? Oh... (TJL)
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