Blog results - found 126
The USPTO has filed a petition for a rehearing en banc in In re: Brunetti, a decision it contends “invalidates a century-old provision of federal trademark law that renders trademarks containing ‘scandalous’ and ‘immoral’ matter ineligible for the benefits of federal registration”. The bid to maintain a ban on scandalous marks is one that practitioners will keenly follow. However, one legal expert told us that the government faces an “uphill battle” to reverse the Federal Circuit’s ruling.
Online and media criticism of a Ram Trucks ad aired during this week’s Super Bowl broadcast continues to rumble on. For its part, parent company Fiat Chrysler Automobiles has stood its ground, noting that the King Estate had given approval of its use of a Martin Luther King Jr sermon. The key question from a brand perspective is whether holding ground in the face of a social media storm is the right approach or whether appeasing critics is the better option.
LegalForce calls on USPTO to tackle Chinese firms “practicing illegally” allegations and threats revealed
Raj Abhyanker, founder and shareholder in LegalForce RAPC Worldwide the firm behind online filing engine Trademarkia has sent a grievance complaint to the US Patent and Trademark Office centred on Chinese IP law firms “practicing illegally” in the United States. Speaking exclusively to World Trademark Review, he expands on his allegations and the threats he received from one China-based filer.
In November we reported that the decade-long downward trend in US trademark litigation actions showed no sign of correction. The latest tracker data from Lex Machina confirms that the slump continued in 2017, with the 3,782 cases filed representing a nine-year low. With competition for the litigation dollar intensifying, the data also reveals the firms which are leading the representation rankings.
“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, with shareholder Raj Abhyanker telling World Trademark Review that “this is just the start”. With more litigation filings expected, he contends that the regulation he adheres to as a law firm is restricting his ability to operate on a level playing field with some competitors. As such, he argues that his end goal is a resolution that benefits the entire legal trademark profession.
Chanel bursts through $1 billion damages barrier as Coach revealed as top US trademark litigation filer
New data reveals that while Coach has filed the most US trademark litigation actions over the past nine years, Chanel is a clear leader in terms of bang for their litigation buck. Over that period, the luxury brand was awarded more than $1 billion in damages almost double that of second-place Burberry. While these are headline-grabbing figures, the decade-long downward trend in litigation actions is set to continue, with this year’s filings level expected to hit a nine-year low.
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. Winterfeldt told World Trademark Review that the move reflects a shift in the law firm landscape, with more clients turning from big law to boutiques when seeking trademark-related services.
Commentators divided over independent USPTO proposal; doubts over whether it will gain political traction
The House Budget Committee has published a proposal aimed at curbing excessive government spending, with an independent US Patent and Trademark Office (USPTO) included among its recommendations. One trademark expert told World Trademark Review that such a move would end the existing “archaic” relationship between the USPTO and the US Department of Commerce (DOC). However, the feeling on the ground in DC is that both Congress and the DOC will resist efforts to reduce their oversight of the agency.
Over the past few days media reports have focused on the case of an individual seller who saw his Amazon.com store shut down over an alleged IP-related violation lodged by a bogus law firm. His call for more considered investigations of complaints highlights the challenge facing the e-commerce giant, which is also under pressure to ensure speedy takedowns when infringement occurs.
Costco to appeal latest ruling in Tiffany dispute; claims case isn't about “common understanding” of counterfeiting
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”.
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.
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
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
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.
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