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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.
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. Although the dispute has been billed as a major test case for questions surrounding genericide, one legal commentator suggests that it will have more of an “atmospheric” than precedential effect.
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. Exclusive research looks at how well-known fashion and retail brands have utilised (or not) key new generic top-level domains (gTLDs), including ‘.blackfriday’ and ‘.shop’. We find that few brands are taking advantage of new gTLDs for marketing purposes and, unsurprisingly, numerous examples of cybersquatting and unusual examples of brand hijackings.
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.
Boycotts, backlashes and Russian bots: Keurig crisis highlights challenge for brands in politically partisan times
It has been a particularly tumultuous week for coffee maker Keurig, with the hashtag BoycottKeurig trending on social media following the company’s public declaration that it was pulling advertising linked to a right-wing news pundit. As one expert tells us, the week’s events highlight the challenge that brands face at a time when partisan tensions are at an all-time high.
Digital language databases more effective than dictionaries or media usage to defend against genericide: study
A recent study has analysed the three most common forms of evidence used in genericism cases and found that corpus linguistics (ie, the use of a digital language databases) could prove to be “more beneficial” for rights holders looking to protect their brand from the threat of genericide. However, the author urges cautions over its use, saying that courts should reconsider the use of linguistic data altogether and reclaim the primary significance test in genericism cases.
Houston IP Law Association president calls on trademark community for support following Hurricane Harvey
The president of the Houston Intellectual Property Law Association has spoken to World Trademark Review about the ongoing recovery efforts in the wake of the devastation caused by Hurricane Harvey. Noting that countless members of the IP community have been severely affected by the storm, she has urged law firms and organisations to offer space or resources if they can.
USPTO pledges additional support following Hurricane Harvey; questions raised over speed of response
The US Patent and Trademark Office has vowed to offer extra guidance and support for users affected by the catastrophic effects of Hurricane Harvey, which has devastated areas of Texas and Louisiana over the past 10 days. The move follows criticism by some in the trademark community, with one practitioner suggesting the response was slow in comparison to the office's swift reaction following Hurricane Sandy in October 2012.
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”.
Groundbreaking study suggests extraterritorial application of US trademark law “burdens” rights holders
A first-of-its-kind empirical study into the territorial scope of US trademark law has concluded that much of the conventional wisdom regarding extraterritorial rights “is questionable, if not incorrect”, with its author declaring that “the current over-extension of the Lanham Act must be curbed”. Crucially, the research provides insights that could aid US brand owners in future enforcement endeavours.
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.
Groundbreaking study suggests trademark count, rather than patent count, is a better predictor of innovation
A new study has benchmarked the most common innovation proxies and concluded that the size of a company’s trademark portfolio is a more consistent indicator of innovation than patent count or R&D expenditure. The result adds to the evidence that trademarks hold value beyond simple exclusivity and recognition, with one academic telling World Trademark Review that it may indicate that these rights “are actually undervalued”.
New data has revealed that technology giant LG was the most prolific filer of trademark applications at the US Patent and Trademark Office in 2016, with entertainment conglomerates CBS, Time Warner and Disney just behind. Meanwhile, Apple which had the most trademarks of any major tech company a few years ago filed less than 70 marks last year, leading one industry commentator to ask: “Hey Apple, why aren’t you filing trademark applications?”
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.
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.
Exercise tracking technology company Fitbit has filed a lawsuit against a New Jersey business which sells discontinued and refurbished products to consumers. In the suit, Fitbit claims the defendant sold ‘counterfeit’ and ‘non-genuine’ versions of Fitbit products a claim staunchly denied, with a representative telling World Trademark Review that Fitbit is engaging in “litigious scare tactics” in response to a lawsuit it had filed a month previously.
New research from The Coalition Against Domain Name Abuse has revealed the extent of identity squatting targeting this year’s presidential election candidates, as well as members of the US Congress and Senate.
“I’m the Banksy of trademarks” millionaire applicant of NASTY WOMAN regards cease-and-desist from Beyoncé as “great marketing”
Self-proclaimed millionaire Mike Lin, who garnered a significant net worth as an early employee at LinkedIn, has a trove of politically charged trademark applications that have gathered much media attention. In an exclusive discussion, Lin compares himself to street artist Banksy and reveals that he has received oppositions (so far) from parties including Beyoncé Knowles, Kobe Bryant and Disney.
With the event just one week away, World Trademark Review is pleased to present the session-by-session speaking faculty for Managing the Trademark Asset Lifecycle 2016. A handful of delegate places remain for next week’s high-level interactive conference, which focuses on practical strategies for the maximisation of the value that resides in, and revenues derived from, strong brands. Make sure you reserve your place now before it's too late.
Online communities of so-called ‘alt right’ internet users have developed code words to hide bigoted slurs on social media in a bid to avoid perceived censorship. The code uses high-profile brand names, including Google, Yahoo and Skype, to substitute for offensive words to describe ethnic groups including African Americans, Mexicans and Jews. World Trademark Review has spoken to experts about what the affected brand owners can do but in terms of legal remedies, the options appear to be limited.
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