10 May
2020

Historic US Supreme Court hearing, lessons from Gleissner opponents, world’s leading corporate trademark professionals, and much more

Everything we covered on WTR over the past seven days – and all you need to know from the world of trademarks to set yourself up for the start of another busy week.

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Top stories

Trademarks took centre stage in a momentous US Supreme Court hearing this week, when the court made history for not only conducting its first teleconference hearing, but also providing a live audio feed of the session, taking the public inside the proceedings process. The lively discussion saw the distinctiveness of the BOOKING.COM trademark come under scrutiny once again in the latest in a long-running dispute between the USPTO and the travel reservation service. With concerns raised over the applicability of existing tests, the court’s ruling looks set to bring clarity on the methods used to distinguish generic and descriptive marks. (Read more)

Meanwhile, in an exclusive guest post, lawyers from international law firm Bird & Bird presented an inside look at a case that they were recently involved in featuring notorious trademark filer Michael Gleissner. With the EUIPO Grand Board of Appeal referring to Gleissner’s actions as “an abuse of rights and process”, the attorneys offered essential advice to brand owners that may be facing a similar legal situation. (Read more)

On Thursday, we broke the news that MARQUES has cancelled its 34th Annual Conference, which was due to be held in Stockholm, Sweden, in late September. The association explained that the decision has been made based on the latest information regarding the current and anticipated business and travel restrictions in place in many countries – the organisation opting to act now in order to give members and potential attendees as much notice as possible. The announcement makes the MARQUES Annual Conference, which last year was attended by 800 people, the latest in a long line of trademark industry event cancellations and postponements. (Read more)

Elsewhere, we were pleased to announce the release of this year’s WTR 300: The World’s Leading Corporate Trademark Professionals, identifying the individuals deemed to be leading lights of the corporate trademark world. After a four-month campaign to elicit nominations from the trademark community, the results emphasise the sheer depth of expertise being utilised by organisations around the world – with the teams at Facebook and Amazon.com boasting the highest number of members in this year’s publication. (Read more)

Headline news

With coronavirus-related issues currently accounting for 40% of the messages received by mental health charity LawCare, we discussed the long-term impact of the pandemic on the wellbeing of individuals and the steps that law firms should be taking to protect employees. (Read more)

Throughout the week we have also continued to report on the measures that national IP offices are implementing in response to covid-19. (Read more)

We assessed the key takeaways of this year’s Special 301 Report, in which the Office of the US Trade Representative (USTR) has rebuked the current EU geographical indications regime for its “negative market access effects” on US producers and traders. (Read more)

After INTA announced that its upcoming 2020 New York Conference on “Brands in Society: Their Influence and Responsibility” will now be held virtually, WTR got the inside track on what attendees can expect from the digital event. (Read more)

Snapdeal’s response to the USTR, a Swiss watch trademark suit at the South Africa Supreme Court of Appeals, Partnerize’s acquisition of BrandVerity, and delayed partner promotions were among Tuesday’s news digest stories. (Read more)

In the latest instalment in our regular series on notorious counterfeit marketplaces, we highlighted six hotspots in Hong Kong that brand owners should have on their radar. (Read more)

We considered the valuable lessons that can be learned from Bud Light’s recent win in a false advertising dispute over its Miller Lite “corn syrup” ad. (Read more)

In another guest piece, two Holland & Hart partners offered insight into how the USPTO may approach examination of cannabidiol marks in the food and beverage industry once legal prohibitions are lifted. (Read more)

Our end-of-the-week round-up reflected on further tributes being paid to Q Todd Dickinson, Sonoma Brands acquiring KRAVE from Hershey Company, Acritas launching the latest UK law firm brand index, a fashion academia trademark spat, and much more. (Read more)

Plus, a new report from TrademarkNow exploring the impact of two major recessions on USPTO filings gave WTR readers some hopeful insight into what is to come. (Read more)

In the meantime, Saturday’s instalment in the WTR archive series presented a selection of articles on how to manage trademark finances and operations under tough economic conditions. (Read more)

Legal updates and international reports

Plus, we published eight legal updates and three international reports examining key trademark decisions and developments from around the globe:

Victoria Arnold

Author | Senior Editor, IP Editorial

[email protected]

Victoria Arnold