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This week ICANN representatives met with the Article 29 Working Party (WP29), seeking clarity over the future of WHOIS in light of the GDPR. With the enforcement date of May 25 fast approaching and registries rolling out different policies in a bid to be compliant, the US government and INTA have expanded on their concerns with the WP29 guidance with the latter warning that “a WHOIS blackout on May 25 will result in a field day for bad actors to purchase and misuse domain names at the public’s expense”.
Despite court's non-infringement ruling, TTAB affirms Section 2(d) refusal of MOAB for automobiles and parts
The TTAB has affirmed a Section 2(d) refusal to register the mark MOAB for motor vehicles, finding it likely to cause confusion with the mark MOAB INDUSTRIES for automotive conversion services. While the application was pending, a federal court ruled in favour of the applicant in a trademark infringement and unfair competition action brought by the registrant, but the TTAB found that the ruling had no estoppel effect on the determination of this ex parte appeal.
adidas takes anti-counterfeiting fight to Instagram sellers, highlights enforcement challenge faced by brands
In a lawsuit filed last week on behalf of adidas and Reebok International in the US District Court for the Southern District of Florida, the sports brands took aim at 53 sellers of alleged counterfeit goods on social media and e-commerce sites (ie, eBay.com, Bonanza.com, iOffer.com and Instagram.com). For those not yet monitoring the platform, the action provides a reminder that Instagram should be a part of policing strategies.
WHOIS access charges, NGOs take aim at watch list plans and INTA applauds ‘Brand India’: news round-up
Every Tuesday and Friday, World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at a registry’s plans to charge trademark owners for access to WHOIS data, the war of words over the European Commission’s plans for an IP markets watch list and a blow for Apple in the Norwegian courts.
Despite being key litigation battlegrounds, World Trademark Review's Global Trademark Benchmarking survey reveals that counsel confidence in the court systems of China and the United States remains shaky.
Trademark trolls in Canada? Data reveals rise in “suspicious” applications are nearly all related to millionaire Gleissner
There have been recent reports of a steep rise in so-called 'trademark trolls' in Canada, following fears that the impending overhaul of the Canadian Trademarks Act could lead to an increase in nefarious activity on the register. However, new research suggests the vast majority of the “suspicious” applications over the past year are related to notorious trademark filer Michael Gleissner leading to calls for the Canadian IP Office to “take action”.
Trademark counsel have had their say on the efficiency of customs authorities across the globe with some of the largest importers of counterfeit goods giving cause for continued concern.
In In re Serial Podcast LLC, the TTAB has ruled that 'serial' is generic for a multi-instalment audio programme and cannot be registered as a trademark. Although the applicant pointed to thousands of media stories about the Serial podcast, the TTAB found that these references amounted, at most, to "de facto secondary meaning".
How the legal profession underutilises paralegals: exclusive interview with Deborah Hampton of Chemours
In the latest of our series of exclusive interviews with leading, WTR 300-ranked in-house professionals, The Chemours Company’s Deborah Hampton reflects on the underutilisation of paralegals in trademark management and about her approach to stewarding the company’s global brand rights. Crucially, she contends that companies often underestimate the substantive work that paralegals can undertake and are missing out on unique insights into brand management.
“IP is not about politics” INTA CEO confirms US lobbying spend has dropped, urges counsel to support PAC
In an exclusive interview, Etienne Sanz de Acedo, CEO of the International Trademark Association, has confirmed to World Trademark Review that the association’s spending on government lobbying in the United States has fallen in recent years and, with the US midterm election fast approaching, he explains why counsel should consider contributing to its political action committee.
Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners
New research from World Trademark Review has revealed the key political issues that trademark counsel say could significantly impact enforcement efforts, both now and in the future. Leading the way are the policies of US President Donald Trump, the potential implications of the UK’s exit from the European Union, and the possible reunification of the two Koreas.
The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot.
In Larry Pitt Associates PC v Lundy Law LLP, the TTAB has sustained an opposition to the registration of the slogan “remember this name” as a trademark for legal services on the ground that the phrase does not function as a service mark. The applicant had failed to provide direct testimony or survey evidence regarding consumer perception of the slogan as a source indicator.
In Eat Right Foods v Whole Foods, addressing the affirmative defences of laches and acquiescence in the context of a supplier’s use of another party’s mark on food products, the Ninth Circuit has vacated a district court’s grant of summary judgment. Among other things, the Ninth Circuit found that the court had “violated the cardinal rule of summary judgment: that disputed issues of material fact must be resolved in favour of the non-moving party”.
In Klipsch Group Inc v ePRO E-Commerce Ltd the US Court of Appeals for the Second Circuit has rejected a party’s position that penalties must be proportional to either the value of the evidence uncovered by remedial measures or the ultimate value of the case. The court upheld discovery sanctions that amounted to more than 100 times the district court’s appraisal of the likely damages.
This week, LegalForce founder Raj Abhyanker filed an amended complaint in his litigation battle with LegalZoom. The dispute centres on the latter’s business model, which Abhyanker alleges involves the “brazen, illegal, unlicensed practice of law”. LegalZoom has defended its practices but, with the USPTO also in Abhyanker’s sights (and given the parties involved), the case is one that trademark counsel will want to follow closely.
US Customs head confirmed, Latvia trims WHOIS data and trademark offers Cambridge Analytica clues: news round-up
In our latest round-up, we look at how a trademark scammer has rebranded, Latvia's plans to cut back on WHOIS data collection, how India’s anti-counterfeiting efforts are under scrutiny and how a trademark may offer clues about the company that has hit headlines across the world Cambridge Analytica.
In Commodores Entertainment Corp v McClary the US Court of Appeals for the 11th Circuit has upheld a permanent injunction precluding a musician from using the trademarks of his former band. The court found that, because the band members owned the band’s trademarks only jointly, the trademark registration was not defective and the injunction was not over-broad.
First Circuit allows Chapter 11 debtor to terminate trademark licence; creates split with Seventh Circuit
Trademarks are absent from the Bankruptcy Code’s definition of ‘intellectual property’, and it is unclear whether Congress intended to leave trademark licences vulnerable to rejection. In In re Tempnology, the US Court of Appeals for the First Circuit held that Chapter 11 debtors may reject trademark licences, thus creating a split with the Seventh Circuit over a company’s ability to terminate a trademark licence while in bankruptcy.
Sweeping amendments to the Trademarks Act are expected to be implemented in 2019. The amendments will fundamentally affect the way in which all trademark owners will need to approach their selection, clearance and registration strategies, and the pharmaceutical industry is no exception.
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