27 Mar

AIPLA leadership change; filings fall; UKIPO service update – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest edition, we look at how brands are getting in on the covid-19 conversation with social distancing logos, Tom Brady’s latest trademark dip, signs that filing levels may be starting to dip in response to the coronavirus, a change to filing fees in Angola, and much more. Coverage this time from Bridget Diakun (BD), Trevor Little (TL) and Jonathan Walfisz (JW).

Market radar:

Brands get in on the conversation with social distancing logos – Just because a quarter of the world’s population is on lockdown does not mean that brands have to shut down too, reports CNN Business. Major companies such as McDonald’s, Coca-Cola, Audi and Volkswagen are just a few of the businesses that have revamped their logos to reflect the ongoing social distancing measures. The decision to launch redesigned logos is most definitely done in good faith, but experts in the field argue that there are pros and cons to these campaigns. Executive creative director at Siegel+Gale Douglas Sellers says that, while wanting to be a part of the movement is notable, it is a very serious situation “and brands designing social distancing logos have the potential to diminish the severity of what we are going through”. Some take an even harder line. “Understanding the situation, shutting up and doing something is really the only way to go here,” says Brian Braiker, editor-in-chief of Ad Age. “When you see brands like McDonald’s or Coca-Cola spacing out their logos in ‘solidarity,’ it strikes a sour note.” Braiker draws attention to companies such as Gap and LVMH, which are producing masks and hand sanitiser, respectively. Indeed, it has been a common response among distilleries and breweries to switch production to hand sanitiser, with Pernod Ricard, BrewDog and Anheuser-Busch among those taking up the challenge. Even Senator Bernie Sanders has hit back against the new McDonald’s logo, pointing out the company’s sick leave policy for employees. However brands choose to engage with consumers during these challenging times, they must be sure to do so authentically and in good faith. (BD)

Major trademark registers see drop in filing activity in midst of uncertainty – CompuMark’s Robert Reading has published on LinkedIn an initial analysis of the major trademark registers to understand how the ongoing response to the coronavirus crisis has affected filing levels this week. At first glance there have been noticeable drops at the UK Intellectual Property Office, the EUIPO and the USPTO of 30%, 15% and 10%, respectively. Of course, notes Reading, it is possible that some applications have been temporarily put on hold and there may be growth going forward as businesses adjust to the new circumstances. Further, offices may be slower at processing applications at this time. The drop will therefore need to be looked at as part of a longer-term analysis – but for now, the fall in filings is significant. (BD)

Tom Brady applies for new trademark after announcing departure from the Patriots – In a shock move this week NFL star Tom Brady announced that he would leave the New England Patriots to join the Tampa Bay Buccaneers. Brady has been a staple of the Patriots and a key driver of the team’s success, beginning his career there nearly 20 years’ ago. However, he is now looking forward and has been quick to lay the foundations for upcoming marketing opportunities by filing a trademark application for TB X TB, which was used by the Buccaneers as a promotional way to welcome him to the team. (BD)

Warning over counterfeit detergents and sanitizers – Kenya’s Anti-counterfeit Agency has issued a warning over the danger of counterfeit sanitizers and detergents in the market as the country takes preventive measures to stop the spread of covid-19. The increased demand for these products poses an opportunity for criminals to capitalise on consumer vulnerability by selling counterfeit detergents and sanitizers, with executive director Elema Halake noting that the authority is already following leads on suspected fake products. He added: “We encourage Kenyans to beware and report any suspected cases to the authority or any other law enforcement agency.” (TL)

Office radar:

UKIPO announces new service changes in light of covid-19 – The UK Intellectual Property Office (UKIPO) has temporarily closed its buildings in Newport and London following government advice aimed at reducing the spread of the coronavirus. The organisation has stated that most of its services remain unaffected, with changes to some service processes implemented. These include a period of ‘interrupted days’ to give rights holders, businesses and IP professionals flexibility until normal business resumes, a ban on the processing of business or communication by fax or paper, and a new dedicated email address for services that are not available online. The full announcement is available here. Tim Moss, CEO of the UKIPO, said: “We recognise the challenges that rights holders and businesses are facing during these testing times, so we have taken practical steps to build some flexibility in to our service processes. In this way we can honour our commitment to supporting our customers while keeping the safety of our people uppermost in our minds.” (TL)

(For more of the latest coronavirus-related updates from national IP offices, please read our dedicated article which is being continuously updated.)

Tanzania announces changes to IP agency in Zanzibar – The Zanzibar Business and Property Registration Agency has announced the introduction of the Online Registration System (ORS). The ORS, which is already operational in the rest of Tanzania, will modernise the registration process and is hoped to bring an electronic filing system to Zanzibar’s IP office. (JW)

Angola changes trademark fees – New official fees for IP procedures have been published in the Official Gazette of the Angola Republic. Coming into force on 20 March, there will now be a single fee applicable to a trademark registration, as well as filing fees, first and second publication fees, and granting and registration certificate fees. There will also be additional fees for patent claims, as well as requests for postponing a patent’s publication. (JW)

Domain Radar: 

Industry against covid-19 opportunists – Over on Domain Name Wire, Andrew Allemann has reported on industry efforts to prevent opportunists from registering and selling crisis-related domain names. He notes that registrar Namecheap has stopped allowing domain names including the words ‘coronavirus’, ‘covid’ and ‘vaccine’ to be registered through its service, while domain marketplace DAN.com is removing all coronavirus-related domain names from its offerings. Of course, people rushing to capitalise on a disaster or health emergency is nothing new, but it is positive to see the domain name industry trying to counter such activity. As Allemann concludes: “Namecheap’s move will also help stem the tide of people registering coronavirus domains to peddle fake remedies and undertake other scams. Of course, it’s easy to just switch to a registrar that will look the other way. But kudos to Namecheap for not wanting to have any part in it.” (TL)

On the move: 

Polsinelli hires experienced patent litigator – Stephen J Kraftschik has joined Polsinelli’s commercial litigation and patent litigation practices as of counsel. Kraftschik has experience handling disputes involving patents, trademarks, trade secrets and copyright. His background in electrical engineering is a strong asset when counselling clients at every stage of the litigation process. Kraftschik can be found at the firm’s Wilmington, Delaware office. (BD)

Leadership change at the AIPLA – After serving as executive director for more than five years, it has been announced that Lisa K Jorgenson is leaving the American Intellectual Property Law Association (AIPLA). In her time in that capacity, the association notes, “she has worked tirelessly to connect with AIPLA members – not only across the country but around the world – and to understand and address the challenges that IP practitioners are facing”. The board of directors has appointed Vincent E Garlock, deputy executive director, as acting executive director. (TL)

Armstrong Teasdale strengthens litigation bench – Armstrong Teasdale has hired Kyle Gottuso to the firm’s IP litigation practice. He joins as of counsel in the St Louis office. Gottuso has a varied practice handling all aspects of litigation as well as advising clients on licensing issues and representing businesses in settlement negotiations, mediations and inter partes reviews before the PTAB, and trademark opposition and cancellation proceedings before the TTAB. (BD)

And finally... 

Your ‘go-to’ resource for finding trademark expertise – The 2020 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals is now available to view online. The publication identifies the leading trademark practitioners and firms from around the globe. As well as illustrating the depth of expertise available to rights holders as they seek to protect their brands, the guide serves as the definitive tool for locating top-calibre trademark expertise worldwide. Click here to access this year’s edition. 


Trevor Little

Author | Editor

[email protected]

Trevor Little