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Rising sales, healthy filings and new opportunities in the dynamic cosmetics sector: exclusive data analysis

In this week’s industry data report, we provide a rundown of the cosmetics market from a branding perspective. We take a big picture look at sales growth and key trends and reveal that technology trademark filings are on the rise among major brands.

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adidas v Skechers: was a preliminary injunction proper?

The US Court of Appeals for the Ninth Circuit has affirmed in part and reversed in part a preliminary injunction prohibiting Skechers from selling shoes that allegedly infringed and diluted adidas’ trade dress and trademark.

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BACKYARD GRILL summary judgment gets burnt by Fourth Circuit

In Variety Stores Inc v Wal-Mart Stores Inc, the US Court of Appeals for the Fourth Circuit has reversed summary judgment in a trademark infringement dispute over the use of the term 'Backyard' on grills.

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Second Circuit gives tidy answer on attorneys' fees in SLOPPY TUNA trademark row

In a dispute over use of SLOPPY TUNA for a restaurant, the US Court of Appeals for the Second Circuit has addressed for the first time whether attorneys’ fees should be included in an award of costs.

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New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union.

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“I wish the US president had opposed my trademark” – applicant of registered Trump mark on treating IP as art

​​​​​​​A popular author has successfully registered a trademark for the term GRABBA THE TRUMP. Talking to World Trademark Review, the applicant states that he enjoys provoking major brands with his trademark applications...

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TTAB decision underscores difficulty of proving fraud before USPTO

In a recent decision, the US Trademark Trial and Appeal Board has dismissed an opposition even though the applicant did not have use in commerce at the time of filing the application and used a mocked-up specimen.

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California district court recognises plausible trademark rights over fictional Star Wars board game

In Lucasfilm Ltd LLC v Ren Ventures Ltd a California federal court has recognised that trademark rights could arise from the use of a mark to identify a fictional board game in a popular literary genre.

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Tam’s trademark delivery, Tequila sweatshirts and a collective noun for IP lawyers: INTA 2018 standout moments

Last night's WTR Industry Awards celebrated another year of excellence in corporate trademark practice. While we are in the awards mood, we thought we'd recognise the standout moments from the 2018 INTA Annual...

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Procedures and strategies for anti-counterfeiting: Canada

Canada adopted a new border enforcement system on January 1 2015, which empowers Canada Border Services Agency (CBSA) officials to act ex officio to detain suspected counterfeit or pirated product.

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Procedures and strategies for anti-counterfeiting: United States

US law offers a full arsenal of weapons that trademark owners can employ to combat counterfeiting at every step.

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Untangling the worldwide web of counterfeiting

Counterfeiting is a priority policy issue for the International Trademark Association (INTA). Counterfeit goods are reaching consumers in all corners of the world and have permeated the online marketplace.

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Fast fashion and IP regulation: will fast fashion kill the golden goose?

Compared to other forms of artistic expression – such as literature, music, films and theatrical works – fashion designs are left with limited IP rights and protection.

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The GI stand-off: inside the IP issue stalling NAFTA and Brexit negotiations

The treatment of geographical indications is proving a sticking point in the ongoing Brexit negotiations. While trademark associations have confirmed their support for a system of mutual recognition, the UK government has not yet made any guarantees...

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US government ranks Canada’s border enforcement on same level as China; Special 301 adds Saudi Arabia and UAE

The USTR has published the 2018 Special 301 Report, and Canada has been added to the Priority Watch List due to “a failure to resolve key longstanding deficiencies in protection and enforcement of IP”.

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Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners

​​​​​​​Research from World Trademark Review reveals the political issues that counsel say could significantly impact enforcement efforts, both now and in the future.

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Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot.

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The future’s green: cannabis brands on the rise in Canada

With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners.

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In-house perspectives on diversity in the trademark industry: “All of us in this field need to do more”

The theme of today’s World IP Day is ‘Powering change: Women in innovation and creativity’. In the first of a two-part piece, corporate trademark professionals reflect on the topic of the day.

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WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up

In our latest round-up, we look at a registry’s plans to charge trademark owners for access to WHOIS data and the war of words over plans for an IP markets watch list.

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Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern.

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Ambush marketing may steal the headlines but new study shows brand benefits of official event sponsorship

New research has found a strong link between the impact of certain types of sponsorship assets and intangible rights on raising brand awareness.

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As IHOP becomes IHOb, companies should think twice before trying to emulate this ‘rebrand’ campaign

Fast food brand International House of Pancakes (IHOP) has unveiled its new IHOb identity. However, industry experts warn that this type of move is not suitable for all companies, with many critical trademark dimensions.

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Rapper Dr Dre's opposition to DR. DRAI for health-related services dismissed

The US Trademark Trial and Appeal Board has dismissed rapper Dr. Dre's opposition to the registration of the word mark DR. DRAI and the figurative mark DOCTOR DRAI for goods and services in the field of women's and men's health.

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Coexistence of trademarks: Federal Court's decision reaffirms limited scope of consent agreements

The Federal Court of Canada has upheld the refusal to register EDMOND DE ROTHSCHILD because it was confusing with the registered mark ROTHSCHILD - despite the fact that the applicant submitted a consent agreement with the owner...

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The INTA Annual Meeting 2018 is here: our unofficial guide to Seattle

Based on extensive first-hand experience, Seattle-based trademark experts – both working in corporate departments and at law firms – give us the inside track on what to do, see, eat and drink while visiting the Emerald City for this year’s INTA Annual...

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Reducing the phantom menace: strategies for protecting and using adaptable marks

Although phantom trademarks have clear advantages for their registrants, the US Patent and Trademark Office has been somewhat unpredictable in its response to applications for such marks over the years.

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Case law as a guide to trademark ownership, licensing and enforcement

Under common law in the United States, ownership is conferred through first use of a trademark – including use by a licensee. Recent case law can help to determine which party has the right to enforce the licensed mark where an infringement suit arises...

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Trademark licensing in Canada: control is key

The upcoming amendments to the Trademarks Act may bring short-term uncertainty over ownership and licensing issues. One thing that is unlikely to change is the established principle of proving a licensor’s control over a mark.

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Is the trademark litigation slump over? 2018 trends and predictions

Analysis of the latest data from Lex Machina suggests that US trademark litigation filing numbers will be flat in 2018 – potentially ending a four-year decline. We also take a look at the most popular venues for litigation and the go- to law firms so far...

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Private practice perspectives on diversity: “We must push forward in the name of achieving greater equality”

Law firm professionals reflect on the theme of this year’s World IP Day, which highlights the ingenuity and courage of the women who are driving change in our world.

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Trademark trolls in Canada? Data reveals rise in “suspicious” applications are nearly all related to millionaire Gleissner

After recent reports of a steep rise in so-called “trademark trolls” in Canada, research suggests most are related to notorious trademark filer Michael Gleissner – leading to calls for the Canadian...

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US Customs head confirmed, Latvia trims WHOIS data and trademark offers Cambridge Analytica clues: news round-up

In our latest round-up, we look at how a trademark scammer has rebranded, how a trademark may offer clues on the company that has hit headlines across the world, Cambridge Analytica, and much more.

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