Blog results - found 117
Costco to appeal latest ruling in Tiffany dispute; claims case isn't about “common understanding” of counterfeiting (Blog)
A US District Court judge has found that Tiffany & Co is entitled to recover $11.1 million in lost profit (plus interest), as well as $8.25 million in punitive damages, from Costco over the sale of counterfeit Tiffany rings. In response, the wholesale giant has pledged to appeal, contending that the case is not about counterfeiting “in the common understanding of that word”.
EFF highlights “trademark bullying” evasion tactics as debate over new gTLD policing heats up (Blog)
The Electronic Frontier Foundation (EFF) and Public Knowledge have published a report advising domain name registrants that, in a bid to “minimise exposure to trademark bullying”, they should avoid registering domains in the new gTLD environment. While counsel may object to the ‘bullying’ label being extended to legitimate enforcement efforts, the report could have a positive payback for policing strategies.
Last week the US Patent and Trademark Office and Trademark Public Advisory Committee hosted a roundtable to strategise on how to tackle fraudulent solicitations. The in-depth discussion revealed details on how scammers go about duping consumers, and the inter-agency approach that will be required if this new ‘whac-a-mole’ challenge is going to be overcome.
Last November, we reported that the projected number of US trademark litigation suits for 2016 would represent the lowest in more than a decade. While the final number 3,587 was marginally higher than projected, the number of litigation filings was indeed at its lowest since 2001. As we enter the second half of 2017, it appears that the downward trend is continuing into 2017 and looks set to be a new record low.
Nike’s reported partnership with Amazon has both economic and anti-counterfeiting implications (Blog)
It has been reported that Nike is preparing to sell products directly through Amazon.com for the first time, utilising the latter’s new brand registry offering. As well as representing a potential commercial win for both companies, the move could highlight the benefits of the e-commerce giant’s new programme for brands fighting the spectre of counterfeit goods on the platform.
A violation of the First Amendment: Supreme Court issues long-awaited decision on disparagement clause (Blog)
The Supreme Court has handed down its long-awaited ruling in Matal v Tam, holding that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. In a unanimous 8-0 opinion, the court states that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’”. In response, the USPTO has confirmed to World Trademark Review that it plans to "issue further guidance" on how it will affect the examination of applications.
On Friday, President Trump unveiled his plans to re-adjust the policy of the United States towards Cuba, announced that he was “cancelling the last administration’s completely one-sided deal” with the country. The move has implications for trademark owners, although in many respects overall strategies shouldn’t change not least when companies are faced with third parties seeking to register their brands.
Sharp Corporation has initiated an unfair competition lawsuit against Chinese brand licensee Hisense, which produces and markets Sharp branded televisions in the Americas. A rare instance of a brand rather than patents taking centre stage in a tussle between tech giants, the dispute also highlights the delicate balancing act that must be walked when initiating an action that could harm brand reputation.
After USPTO director's surprise resignation, the trademark credentials of her successor need to be considered (Blog)
In a surprise move, Michelle Lee, director of the US Patent and Trademark Office, has resigned after four years in the role. The discussion over her replacement will no doubt focus on the patent background of potential candidates. However, it is important that trademarks are not lost in the mix.
The Court of Appeals for the Ninth Circuit has confirmed that “‘verb use does not necessarily constitute generic use” and affirmed a district court judgment in favour of Google in an action seeking cancellation of the GOOGLE mark on the ground that it is generic. One industry commentator argues that other big brands have "a lot of reason to cheer" the ruling.
The landmark emoluments lawsuit initiated by Citizens for Responsibility and Ethics in Washington seeking to find the president in violation of the emoluments clauses of the Constitution has been updated to include the receipt of “gratuitous Chinese trademarks”. Specifically, the suit aims to link the granting of registrations to President Trump’s affirmation of the ‘One China’ policy.
Three months into his presidency, Donald Trump has revealed his nomination for IP enforcement coordinator. However, with the USPTO hit by a hiring freeze and uncertainty over the future leadership of the agency, the question of what impact his administration will ultimately have on trademarks and the IP ecosystem remains unanswered. So what do we know?
Pernod Ricard and Bacardi’s battle over HAVANA CLUB trademark erupts again after call for renewal U-turn (Blog)
A bipartisan congressional delegation has called on the Trump Administration to reverse a US Office of Foreign Assets Control decision to grant a licence allowing Cubaexport to renew the HAVANA CLUB trademark registration in the United States. Slamming the licence as “misguided”, the group has catapulted the long-running dispute between Pernod Ricard and Bacardi back into the political arena.
The Trademark Company ditches trademark registration services, but the low-cost filing model continues elsewhere (Blog)
This week, The Trademark Company's website removed trademark registration services from its offerings. This follows founder Matthew H Swyers agreeing to resign from practising before the USPTO. However, low-cost registration filings are still being offered by another company established by Swyers ensuring that the debate over the commoditisation of trademark work will continue unabated.
The founder of The Trademark Company, one of the most prolific trademark filers at the USPTO, has agreed to resign from practising before the office. The development ends a fractious relationship between the USPTO and one of its biggest customers.
Publicising ‘aggressive’ trademark enforcement; HomeVestors reveals motivation behind unusual PR move (Blog)
In a press release issued last week, HomeVestors of America highlighted the range of legal actions it initiated in 2016 and pointed to its growing reputation for aggressive trademark enforcement. For many companies, the ‘aggressive’ label is one to be avoided so World Trademark Review reached out to obtain insight into the business motivations for shouting about its willingness to litigate.
The introduction of a bill in the California legislature, which seeks to create the ability to secure state-level trademark protection for cannabis products, has led to a wave of media reports highlighting the challenges facing the marijuana industry. Crucially, it also shines a light on the potential role that state-based registrations can play.
The USPTO’s Performance and Accountability Report for fiscal year 2016 has revealed that trademark filings rose by 5.2% last year, while the number of trademarks proceeding to registration spiked by almost 10%.
US government releases national IP strategy; concern over ‘introduction of shadow regulation’ (Blog)
While the community waits to see what impact a Donald Trump presidency has on the IP ecosystem in the US, the US government’s gears are still turning and this week it released the 2017-2019 US Joint Strategic Plan on Intellectual Property Enforcement. The report signals the key focus areas for federal government agencies over the coming few years. While welcomed by IP stakeholders, there have been accusations that the plan represents an effort to introduce shadow regulation for the online world.
The latest available data from Lex Machina estimates that 3,529 trademark litigation suits will be filed in the United States in 2016. If so, the level of filings will be the lowest since 2001. For law firms, competition for the trademark litigation dollar seems set to intensify.
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