North America

“We’re running out of good trademarks” – groundbreaking study reveals 81% of common words are registered marks

A new study finds that most common words are already registered as single-word trademarks at the USPTO. The paper's author describes the finding as "disturbing", and calls for changes including higher renewal fees.

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Pushing the boundaries – identifying the world’s most innovative IP offices

In a new multi-part series, World Trademark Review identifies the IP offices leading the way in offering innovative non-core tools and services – and the registries trailing behind.

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“A steep uphill battle”: experts pessimistic over USPTO bid for U-turn on scandalous marks

The USPTO has filed a petition for a rehearing en banc in In re: Brunetti, an effort to maintain a ban on scandalous marks. Legal experts are sceptical about the move, telling us that the government faces an “uphill battle” to reverse...

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US Senate confirms Iancu, Zimbabwe targets fakes and brands oppose Conor McGregor: news round-up

In our latest news round-up we look at how the Zimbabwe government is pledging to tackle counterfeit goods, the brands being accused of using “underhand tricks” to fool consumers, and much more.

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New York court issues decision in bottle dispute

In Can’t Live Without It LLC v ETS Express Inc, a federal court has granted a partial summary judgment in a trade dress infringement and unfair competition case involving an alleged knock-off bottle.

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Signed, sealed and almost delivered - new trademark law is in sight

Canada is finally completing the last steps necessary for implementing its new trademark law, which will introduce significant changes.

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Federal Circuit bleeps Lanham Act ban on immoral or scandalous marks

In In re: Brunetti, the Federal Circuit has reversed the TTAB's finding that the mark FUCT as used in connection with various apparel items was unregistrable under Section 2(a) of the Lanham Act.

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Tactics of a trademark scam: GloTrade offers clues on the strategy of solicitation campaigns

​​​​​​​A recently launched trademark solicitation campaign is offering to publish trademark registrations in a “private database” for up to $2,800. We investigate the tactics it uses, and share further calls to tackle misleading...

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TTAB grants motion for summary judgment as to fraud counterclaim

In Kastle Systems v Lee Strategy Group, the TTAB has granted the opponent’s motion for summary judgment, dismissing the applicant's fraud counterclaim.

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Chinese government questions “objectivity and credibility” of USTR’s Notorious Markets List

The Chinese government's Commerce Ministry has claimed the USTR's latest report lacks “solid evidence” to include the nine Chinese marketplaces accused of engaging in rampant IP infringement.

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Alibaba on the offensive: warns brands not to trust Notorious Markets List, undecided on future cooperation

​​​​​​​Alibaba Group continues to talk tough in the wake of Taobao remaining on the USTR's latest Notorious Markets List, now suggesting that brand owners should no longer trust the report.

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Alibaba labels itself a “scapegoat” as Taobao remains on USTR's Notorious Markets List

​​​​​​​The Office of the US Trade Representative (USTR) has released the latest edition of its annual Review of Notorious Markets. The re-admission of Taobao to the list has spurred owner Alibaba Group to label itself a "scapegoat".

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With Black Friday in full swing, exclusive research reveals brand protection gaps in new gTLDs

While consumers enjoy the low prices offered on Black Friday, the sales period is a significant challenge for trademark practitioners – especially for protecting shoppers from online scams.

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Online trailblazers – the IP offices breaking new ground in digital services, and those falling behind

In the second of our four-part series on IP office innovation, we take a look at digital tools and services. We reveal the registries leading the way in areas including website functionality, e-filings and open data access...

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LegalForce calls on USPTO to tackle Chinese firms “practicing illegally” – allegations and threats revealed

Raj Abhyanker, founder and shareholder in LegalForce RAPC Worldwide and Trademarkia, has sent a grievance complaint to the USPTO centred on Chinese IP law firms “practicing illegally” in the United States.

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USPTO pledges to hire “substantial number” of examiners following record year of trademark activity

New figures show that the US Trademark and Patent Office received over 440,000 new trademark applications in 2017, a rise of more than 13% year on year.

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A new era at the USPTO – 2017 in review

The last year has proved another significant one for the US Patent and Trademark Office’s trademarks organisation. Latest developments include fee changes for paper filers and a new declaration format.

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Trump's tough talk on trade could reverse improving US business sentiment towards IP in China

US businesses have reported improved confidence in China’s economy. However, the political war of words between the two countries threatens to dampen growing confidence in the IP environment in China.

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Effective trademark protection leads to significant profit boosts, new research finds

A paper analysing the value of brands has recently been updated to explore in more detail the effect of trademark protection on a company’s profitability and innovation.

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Stuck in limbo: new class of trademarks may be created by proposed Canadian legislation

Canada’s proposed Child Health Protection Act is making its way through the country’s legislative process. It could have a significant impact on the use of food and beverage trademarks.

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81% of consumers believe “branding on products matters”, as Canadian scepticism of plain packaging highlighted

New research has revealed that eight out of 10 Canadian consumers believe that “branding on products matters” because it provides information and distinguishes goods from one another.

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America first... for now: how Chinese and European brands are closing the gap

Exclusive analysis reveals why major US brands are feeling the pressure of increased competition in the global marketplace – and how they can fight back.

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Jones Day and Skadden named strongest US law firm brands; alternative models on the rise

Jones Day has been named the strongest law firm brand in the United States for the second year running. The new brand index also reveals the rising threat to traditional law firms from alternative legal service brands.

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US and Chinese bank brands continue to dominate, but challenges lie ahead

Brand Finance's Banking Forum looked at the most pressing issues banking brands are facing. World Trademark Review attended the event, and here are some of the key takeaways.

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Ram Trucks ad backlash; will negative press translate to longer term brand value?

Criticism of a Ram Trucks ad aired during this week’s Super Bowl broadcast continues to rumble on. A key question from a brand perspective is whether holding ground in the face of a backlash is the right approach.

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Demise of Chief Wahoo shows how challenging Redskins brand was “successful legal failure”, expert claims

Prominent IP lawyer claims removal of the controversial Chief Wahoo logo from NBA uniforms next year is sign of changing attitudes.

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Trademark litigation slump continues; the law firms capitalising on dispute-related work revealed

The latest tracker data from Lex Machina confirms that the litigation slump continued in 2017, with the 3,782 cases filed representing a nine-year low.

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Shaky dominance of the United States – litigation on decline as Chinese filings surge; exclusive data analysis

We survey the world’s leading market for brands: the United States. We take a look at the performance of the country’s trademark office and leading brands, and analyse key filing and litigation statistics.

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Comic-Con infringement verdict gives hope to large brand owners facing jury trials, argues expert

​​​​​​​A jury in a US federal court has rejected claims that the COMIC-CON trademark has become generic, ruling that a Utah-based comic convention’s name infringes the mark owned by San Diego Comic-Con.

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“There’s a new sheriff in town”: LegalForce founder reveals motivation behind lawsuits against competitors

LegalForce RAPC Worldwide, the firm behind Trademarkia, has initiated a number of lawsuits against competitor online trademark filings portals.

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Ambitious DC-based IP boutique launches; founder points to changing law firm landscape

World Trademark Review can exclusively reveal the formation of a new Washington DC-based IP law firm led by Brian J Winterfeldt. The firm, Winterfeldt IP Group, opens for business today and boasts almost 20 employees from outset.

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MLB’s top TTAB user, Thai IP Office gets an upgrade and Russia to introduce “Made in Prison” label: news round-up

In this news round-up, we look at how India may remove the controversial Goods and Services Tax exemption for unbranded food products and how the Chicago Cubs are tackling an increase in counterfeiting.

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Considering the value of a law firm’s brand

What is the value of a law firm’s brand? That question triggered a cancellation by the Trademark Trial and Appeal Board in Merchant & Gould PC v MG-IP Law, PC, which concerned the application for registration of the mark MG-IP for “legal services; attorney services”.

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Issue 71