24 Jan

Beanie Babies counterfeit video, ‘Amazon Pharmacy’ filing, crowdfunding trademark litigation: news digest

In our latest news digest, we look at the USPTO welcoming new members to the TPAC, Gowling WLG expanding its trademark offering in China, consumer cynicism over environmental claims, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar: 

USPTO welcomes new TPAC Members – The USPTO has welcomed three new members to the Trademark Public Advisory Committee (TPAC): Dinisa Hardley Folmar (head of intellectual property at The Hershey Company), Jennifer L Kovalcik (vice president technology & intellectual property counsel for Community Health Systems) and Susan M Natland (partner and co-chair of the trademark and brand protection group at Knobbe Martens). Additionally, the office confirmed that that Elizabeth Roth Escobar, the former vice chair, will now serve as TPAC chair, with Christopher Kelly becoming vice chair. There are four returning TPAC members: Anne Gilson LaLonde, Donna A Tobin, Stephanie Bald, and Kelly Walton. TPAC public sessions for 2020 have been scheduled for 7 February, 17 April, 24 July and 30 October. (TL)

Seven million fake cigarettes confiscated in Belgium – The Limburg Special Assistance Unit-Tactical intervention group has worked with special units of the federal police to carry out an investigation into cigarette fraud. Two industrial sheds in Smeermaas and Gellik were raided and seven million counterfeit cigarettes were seized in the operation.  This is not the first time investigators were led to Lanakan, reports The Brussels Times. Europol was involved in a raid in November 2019 where an illegal cigarette factory was shut down. (BD) 

Gowling WLG expands its trademark offering in China – Gowling WLG has announced the expansion of its intellectual property offering in China following approval of its direct trademark filing licence. The licence means that the firm is amongst the first wholly owned foreign offices with have the ability to file trademarks directly without the use of a local firm. Dr Jian Xu, the firm’s Beijing office managing director, stated: “The direct filing licence is crucial as we can now act for our clients throughout the IP journey without having to rely on external local firms. So far, the license has only been approved for a few foreign firms, meaning that we are at the forefront of the trademarks market and able to give our clients the added benefit of only using one firm throughout the process". (TL)

Amazon files for ‘Amazon Pharmacy’ – Tech giant Amazon has applied for the  ‘Amazon Pharmacy’ trademark in Canada, the UK and Australia. The company bought an internet pharmacy start-up called PillPack in 2018, and introduced ‘Amazon Pharmacy’ as a brand at the end of 2019. Amazon filed for the mark in a number of areas including surgical, medical dental instruments and pharmaceutical, and medical and veterinary preparations. These filings may be indicative of Amazon’s push into the healthcare and drug space. (BD)

Consumers’ backlash over green claims – A survey conducted by online retailer OnBuy.com, which polled 3,446 consumers, has found that 83% feel misled by green and sustainable buzzwords in retail advertising, with 90% thinking that retailers need to be more transparent about how green their stock is. Interestingly, while words such as ‘biodegradable’ and ‘recycled’ encouraged a majority of users to make a purchase, others proved a deterrent. For example, two thirds of respondents said that the phrase ‘powered by nature’ would discourage them from making a purchase. We have written extensively about the dangers of ‘greenwashing’ – or even being perceived as doing so. This research stands as a reminder that, while consumers increasingly demand environmentally-friendly brands, it is equally important that sustainable activities are viewed as legitimate and not a means to mislead. (TL)

Legal radar:

Buck Baits goes after Bell’s Brewery over trademark infringement – Buck Baits has sued Bell’s Brewery, claiming that the company has infringed its DEER CAMP trademark. Buck Baits had registered the trademark at the USPTO in 2016 for a range of coffee-related products, and had planned to make a coffee-infused beer. A division of Bell’s began using the name for one of its beers in 2018. Buck Baits says that it twice requested Bell’s to stop using the name, but to no avail. Further, Bell’s attorney allegedly said that the company would consider taking legal against again Buck Baits as they had already been producing a beer using the Deer Camp name. The plaintiffs argue against this possibility though, as Bell’s had attempted to register a trademark for ‘Deer Camp’ in 2017 and 2018, but was rejected because it was likely to cause confusion. (BD)

Couple launch fundraiser for £30k legal fees to defend their trademark, again – Lorien and Kevin Cameron-Ross successfully defended their trademarks for Loch Ness Spirits in 2018, reports The Spirits Business. Scotch producer Duncan Taylor filed an application to invalidate six of their trademarks, however the UKIPO ruled in favour of Loch Ness Spirits as they had founded their company in 2015 and already filed applications for four of their marks by the time Duncan Taylor started selling its ‘Loch Ness Whisky’ in July 2016. Despite this, Duncan Taylor has announced its intention to appeal, with the Cameron-Ross’ now looking to raise £30,000 through a fundraising drive on Go Fund Me to support their legal costs. A statement on the page says: “This new attack has upped the ante significantly and catapults us into another level of dispute. We are now fighting for the survival of our beloved company.” Duncan Taylor has disputed the UKIPO’s finding that it had not sold its whisky before July 2016, claiming it has sold the product since 2008. A statement from chairman, Euan Shand, reads: “We explored a co-existence agreement with Loch Ness Spirits… it was only when Loch Ness Spirits opposed our trademark application for Loch Ness for ‘Scotch whisky’ that we were forced to react to preserve our position. Any steps that we have taken have been measured and appropriate. We have used the processes and procedures set up by the UKIPO to attempt to resolve trademark issues when our genuine attempts to negotiate failed.” (JW)

Alcoholic gummy bear makers hit with a cease-and-desist – Spanish company Ositos & Co have been hit with a cease-and-desist from German confectionary company Haribo over a range of alcoholic gummy bears, reports The Guardian. Ositos, which means ‘little bears’ in Spanish, was founded in 2019 by two friends, producing different flavoured bears containing 15% alcohol, including: gin and strawberry, whisky and cola, rum and pineapple, and tequila and lemon. The bears are marked as products for over 18s and sold online and in physical locations that sell other alcohol products. Haribo has demanded that the company stop manufacturing the bears and to transfer the management and ownership of its domain name to them. (JW)

Office radar:

EUIPO head meets King – The EU Intellectual Property Office’s executive director, Christian Archambeau, shared his experience of meeting King Felipe VI of Spain this week. During an event at the Palacio de la Zarzuela in Madrid, Archambeau met His Majesty during a “follow-up celebration of the Office’s 25th anniversary in 2019”. During the presentation, the King was presented with a commemorative book marketing the quarter-century anniversary of the EUIPO, as well as a framed picture of His Majesty’s last visit to the registry’s headquarters in Alicante in 2002. “The EUIPO has grown from small beginnings in 1994 to become the largest EU agency and has built strong links with both the local people and the Spanish authorities, Archambeau commented. (TJL)

Media watch:

Beanie Babies counterfeit video unearthed – Earlier this week, a video was published to YouTube of a ripped VHS from 1998 on ‘how to spot counterfeit Beanie Babies’. According to the video description, the cassette was released at the height of the Beanie Babies crazy in the late 90s (in “a world gone Beanie mad”, claimed the NYT at the time). The reason that counterfeit Beanie Babies toys grace were so rife was due to the rising value of Beanie Babies on the secondary market at that time. According to one modern collector website, these fakes still infect the Beanie Babies marketplace and, during the 1990s, “some counterfeiters became so bold they even mimicked known authentication services and issued counterfeit authentication certificates”. For that reason, Beanie Mad shoppers were able to buy a VHS that compared over 50 authentic Beanie Babies with counterfeits and – in excruciating detail – reveals how to identify the fake. And now, over 20 years later, anyone can enjoy this riveting content. (TJL)

Fiat Chrysler trademark application suggests car sharing platform – Fiat Chrysler Automobiles has applied for the trademark MY FREEDOM at the USPTO. The mark is intended for use with “Motor vehicle subscription services, namely, providing temporary use of motor vehicles to members for their personal use”. Road Show reports that this wouldn’t be the first time the company has attempted a subscription car sharing programme, having already launched pilot programmes on three occasions. The article also speculates that this programme will be used for its name brands such as Dodge, Jeep and Ram. (JW)

On the move: 

Three Epstein Drangel attorneys made partner – New York IP firm, Epstein Drangel, has announced the promotion of Kerry Brownlee, Annmary Ittan and Kimberly Klibert to partners in the firm. Jason Drangel, a partner at the firm said: “All three have been instrumental in growing the firm – two of whom came through our law school internship program.” (JW)

Buchanan Ingersoll & Rooney hires John P Sullivan, Jr – John P Sullivan Jr has joined Buchanan Ingersoll & Rooney as a shareholder within the firm’s corporate practice. Sullivan advises companies of all sizes on how to identify, commercialise and enforce their brands as well as other creative projects and technological innovations. He is experienced in licensing, and also represents clients in IP, unfair competition and false advertising cases before state and federal court. Sullivan can be found at the firm’s Philadelphia office. (BD)

And finally... 

Managing Trademark Assets next week Following the success of this year’s event, WTR’s  Managing Trademark Assets Europe is back in London on 28 January 2020. The event provides an opportunity for attendees to hear best practice and insight from leading in-house counsel from the world’s biggest brands as they discuss their approaches to critical areas, as well as share their own insights with peers and colleagues. For the upcoming event we are also increasing the interactive nature of the programme, introducing informal, small-group discussions on dispute resolution scenarios - allowing participants to workshop possible responses with their peers and colleagues. Among the other areas to be explored are budget management, dispute negotiation tactics, best practices around diversity and team building, and how to fight counterfeits on a finite budget. To sign up to attend Managing Trademark Assets Europe, click here. (TL)

Jonathan Walfisz

Author | Reporter

[email protected]

Jonathan Walfisz