North America - World Trademark Review

North America

“We try to pick our battles carefully”: exclusive interview with AIG’s Shama Elliott

World Trademark Review speaks to Shama Elliott, IP manager at American International Group (AIG), who explains the value non-lawyers can add to trademark departments, sheds light on some of the key challenges facing insurance brands, and more.

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“Stop the uncritical worship of the God of Automation”: practitioners push back on end-to-end electronic filings

Practitioners have raised concerns about the USPTO's proposed move to implement end-to-end electronic filings, with current systems criticised and warnings that it could create an opportunity for trademark scammers...

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ICE’s anti-counterfeiting efforts highlighted as US politicians call for its abolition

Legislation was tabled yesterday in the US House of Representatives calling for the abolition of the Immigration and Customs Enforcement (ICE). It sparked a reminder on the agency's crucial role in the fight against counterfeit goods.

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Fifth Circuit: keep your claws off THE KRUSTY KRAB

In a case regarding the Krusty Krab restaurant from SpongeBob SquarePants, the US Court of Appeals for the Fifth Circuit has confirmed that a specific element from a television series can receive trademark protection.

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Can ear plugs tune out colour? Bright green colour for ear plugs not functional

In a case involving competing producers of foam ear plugs, the US Court of Appeals for the Ninth Circuit has held that there remained a dispute of material fact as to whether the bright green colour is functional for ear plugs.

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TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars

The US Trademark Trial and Appeal Board has dismissed a petition for cancellation of the mark MOMBACHO for cigars, rejecting the contention that the respondent's meager sales did not qualify as bona fide...

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Well-known marks: multijurisdictional approaches to fame

Obtaining well-known status for a trademark can be a powerful tool for rights holders. However, different approaches must be used to secure enhanced protection. This three-part series considers the best route in 10 key jurisdictions, starting with the US.

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Federal Circuit: TTAB applied wrong test in finding Coca-Cola’s ZERO mark not generic for soft drinks

The US Court of Appeals for the Federal Circuit has vacated a decision of the TTAB, holding that the latter had "asked the wrong question" in determining the genericness of Coca-Cola’s ZERO mark.

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Eighth Circuit: phonetically identical description of competing dog bags does not necessarily cause confusion

In a case involving competitors in the dog bag market, the US Court of Appeals for the Eighth Circuit has affirmed a summary judgment finding that no evidence had been presented from which a jury could infer that...

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How brands should prepare for the big changes coming to Canada’s trademark market: exclusive data analysis

In our latest report, we delve into Canada’s trademark landscape. We examine how a major overhaul of its trademark laws may lead to a clogged up register, take a look at filing and litigation trends, and much more.

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Trump administration tariffs “could help legitimise fake goods”: trade associations join up to sound alarm bells

Six major US trade associations have joined forces to send a letter warning that the Trump administration’s recent tariffs place “significant barriers on the fight against harmful fakes” and calls for an urgent...

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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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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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Registered trademark protection helps US companies to innovate and grow, new study reveals

Research from the USPTO has revealed that registered trademark protection helps companies to grow, employ more people and innovate. Along with a slew of similar research findings, the study reinforces efforts to communicate the benefits...

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Riding the tidal wave: USPTO faces 10% rise in trademark applications

With a 10% rise in trademark applications mostly spurred by Chinese filings flooding the USPTO in 2017, questions have been raised about whether the office can cope with this influx – both now and in the future.

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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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What next for trademark jurisprudence at the Supreme Court? Experts have their say

​​​​​​​Following news that Justice Anthony Kennedy of the US Supreme Court is to retire and with the prospect of a more right-thinking bench, leading IP attorneys are split over what it means for trademark cases in the future.

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As Canada legalises marijuana, research finds majority of Canadians want branded packaging for cannabis products

Canada will soon allow the recreational use of marijuana nationwide. A new survey finds two-thirds of consumers in Canada would prefer branded packaging for this new market of cannabis products.

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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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Outstanding improvement in aerospace brands despite a fall in application numbers: exclusive data analysis

In our latest data report, we examine the top brands, industry trends, and filing data in the aerospace and defence sector - revealing a marked shift from vehicle-related applications to software and research.

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Madrid System fails to have an impact for local filers: an analysis of the Indonesian trademark market

In this country data report, we hone in on the fast-growing Indonesian trademark market, revealing that the country’s recent accession to the Madrid Protocol has had little impact on local filers, while US applicants have...

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Cristiano Ronaldo to Juventus, LeBron James to LA Lakers: the brand perspective on major sporting moves

​​​​​​​The last week has seen NBA legend LeBron James and football superstar Cristiano Ronaldo signing lucrative new deals. Experts say that the strong commercial brand of both players will justify the big dollars being...

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Everything old is new again? Protecting traditional fashion designs as non-traditional marks

Birch Stewart Kolasch & Birch LLP A pending US district court case on a fashion company’s efforts to protect a handbag design as a non-traditional trademark under US law – even though variations of the design have long...

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Protecting fashion: a rounded IP strategy

Bereskin & Parr LLP Canada presents options for those seeking to protect and enforce rights in luxury brands, including effective mechanisms and alternatives for strategic defence and enforcement.

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Just what the doctor ordered: the top trademark filer in the US last year was a New York physician

New data has revealed the leading trademark filers at the USPTO in 2017, with a Brooklyn-based doctor beating out major companies to lead the pack. One expert says “trademark league tables might not be dominated by large corporations...

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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...

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Bitcoin, CNN and Elon Musk under attack: how scammers are stepping up their game

​​​​​​​An investigation from World Trademark Review has explored the evolving tactics of misleading and often malicious websites that pose as articles from well-known news outlets, with common trends including the use of cryptocurrency and...

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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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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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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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