14 Aug
2018

IP Australia wins digital award, Stephen Colbert talks trademarks, and USPTO seeks new judge: 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 UFC star Conor McGregor potentially facing a hefty fine in his latest trademark tussle, the Supreme newspaper promotion reminding us of the power of strong logos, a Minneapolis official who sought registered trademark protection of a blog that criticised her, and a Delhi court getting tough on perjury in a trademark case. Coverage this time from Trevor Little (TL), Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).

Legal radar:

McGregor faces clothing line ban and hefty fines in latest trademark tussle Our previous reports on the trademark endeavours of Ultimate Fighting Championship (UFC) icon Conor McGregor have focused on his attempts to register – with mixed success – a slew of marks associated with his name and image. His latest trademark dispute, however, arose after a Netherlands-based fashion label, also called McGregor, sought out an injunction against Adidas and its subsidiary Reebok – which sells the UFC fighter’s line of clothing – claiming that consumers could be confused into thinking that Conor McGregor’s hoodies, sweaters and shorts were a part of their own label. Finding in favour of the fashion house, a Dutch court has ordered Adidas to cease using the UFC fighter’s name on its clothing products within seven days and to withdraw all related merchandise from outlets across Europe within the same period. A failure to comply will see the sports giant dishing out compensation of €1000 a day, up to a maximum of €250,000. (TA)

Marvel extends opposition time against Wakanda trademarks – We previously reported on the appearance of a number of trademark filings related to Wakanda, the fictional setting of Marvel’s popular Black Panther film, following the release of the movie in early 2018. This includes an application for “Wakanda Wine Fest” for “charitable donation services, namely, providing educational special events, seminars, workshops in the field of wine”, which the comic book giant’s subsidiary, Marvel Characters, is still considering opposing. Now, Marvel Characters has also been granted an extension until November to oppose a filing for ‘Wacoinda’ by cryptocurrency startup Wilsondom LLC for financial and educational services. The mark was filed back in February, but Marvel Characters only requested an extension last week, stating that it needs more time to investigate the claim. (TA)

Delhi court gets tough on perjury in trademark case – Over on Lexology, Chadha & Chadha’s Nitsimar Guliani and Sonal Madan have posted a case review of Louis Vuitton Malletier v Mr. Omi and Anr, in which the Delhi High Court sentenced one of the defendants to one month imprisonment, as well as a Rupees 2,000 fine, for making false statements under oath. The suit was filed against the sale of counterfeits bearing Louis Vuitton Malletier’s marks. After a defendant denied selling any branded goods under oath, the fashion company moved an application to appoint another local commissioner, who uncovered counterfeit products at the premises in question. A contempt petition was then filed, with the court finding that the defendant had committed ‘perjury’ by making false statements under oath. Taking the view that lying under oath strikes a blow at the rule of law, and that justice would be met if the defendant was imprisoned and fined, the suit was accordingly disposed off. (TL)

Nintendo tackles retro games downloads – Legal action by Nintendo has lead to the voluntary closing down of EmuParadise, a website offering unauthorised versions of retro computer games downloads in the form of rom files. The site, which had operated for nearly 20 years, closed after two other online portals were sued by the Japanese gaming giant, which is seeking $150,000 for each game illegally offered by the site, as well as $2 million for each trademark infringement committed, according to BBC News. EmuParadise’s founder MasJ said that the site would not risk “potentially disastrous consequences” and would reorient, so as to “keep(s) us out of trouble”. Nintendo said that EmuParadise and its sites were “built almost entirely on the brazen and mass-scale infringement of Nintendo’s intellectual property rights”. (AH)

Market radar:

IP Australia awarded business impact accolade for ‘digital first’ strategy – Australia’s patent and trademark office has been presented with a global impact award by software company Pegasystems for its ongoing efforts to become the first fully-digital government agency. According to The Canberra Times, the IP office was one of more than 1,000 businesses to enter the award, and shared the prize with PayPal, Vodafone UK and media company Foxtel. IP Australia’s general manager Robert Bollard noted: “A few years ago we had a very archaic, very inefficient and costly paper-based system, and we would receive millions of pieces of paper every year. The 850,000 transactions we received were all from state offices or through the post or by fax sometimes, and now we've managed to work with customers to drive them to digital channels. We've been going through this for about two years and it's an ongoing program. The award really recognises the incredible achievement of IP Australia's transformation.” The award highlights IP Australia’s well-regarded digital platform; in World Trademark Review’s annual IP office innovation ranking, IP Australia ranked second (just behind New Zealand’s national IP office) in terms of its digital offering. (TJL)

USPTO hiring new trademark judge –  The US Patent and Trademark Office has announced that it is seeking to hire a new Deputy Chief Administrative Trademark Judge. Whoever gets the position will exercise full administrative, legal and technical authority over the office’s Trademark Trial and Appeal Board, of which they will be a full voting member. Working alongside the Chief Judge, they will also have an important hand in shaping the Board’s future policy and strategic initiatives. The closing date for applications is 28 September. (AH)

Media watch:

Supreme newspaper promotion reminder of power of logos – An edition of the New York Post this week featured a cover advert for trendy fashion brand Supreme, and it became a reminder of the power of branding. The ad, which is simply Supreme’s iconic red-and-white logo, turned that issue of the Post into “an impossible to find commodity”, according to an article in the New York Times. “We knew that this would be a collector’s item,” said Jesse Angelo, the paper’s publisher, in the article. “Supreme is such a cool brand and we have so much affinity, to the design kinship of the logos, to being bold, and never shy, and New York-based.” Supreme is famous for plastering its logo onto seemingly random products – including bricks, crowbars and fire extinguishers – and seeing them become sought-after, sold-out items. “Slap a Supreme logo on it, and it will fly off the shelves, literally no matter what it is,” says Jonathan Sawyer, a staff writer for the street wear blog Highsnobiety. This week’s Supreme issue of the Post is a reminder, then, of the lucrative power of a strong logo – and for any readers who picked up a copy on Monday, they’re already being sold on eBay, with one seller appears to have sold over 100 copies for $8.99 each. If copies of the ‘Supreme edition’ of the New York Post become lucrative for resellers, could we see counterfeit copies on sale soon? (TJL)

Minneapolis official seeks registered trademark of blog that criticised her – There’s been discussion this week about an elected official in Minneapolis, United States who sought registered trademark protection for the name of a blog that had been critical of her. According to a detailed piece at TonyWebster.com, university professor Carol Becker, who has served on the Minneapolis Board of Estimate and Taxation for over a decade, penned a forum post in October 2017 calling out a number of community blogs, including Wedge LIVE!, a site set up by blogger John Edwards a few years earlier. The site, which focuses on urban planning and political issues, has sometimes been critical of Becker – and the two have often been at loggerheads over contentious community issues. It appears at some point last month, Becker filed a trademark at the USPTO for the term WEDGE LIVE (as well as Minnesota business documents), which were discovered last week after a fan of the blog “was flipping through newspapers and came across a legal notice in the Star Tribune classifieds” which declared that Becker “would begin conducting business as ‘WedgeLive’”. After being asked about it, Becker seemed to be proud of the trademark application: “There were no legal entities using that name, and I think it would be an awesome name for a podcast. And so since no one else is actually legally using that name, it seemed like a good thing to do,” she said (it should be noted that none of the trademark application’s goods and services is for podcasting). According to the article, “Becker said that she is willing to hand over the business registration and trademark applications to [blogger] Edwards, but that conditions would have to be met”. However, from yesterday, it appears the trademark application had been voluntarily abandoned by Becker. Reacting to the article, Mark H Jaffe, partner at Tor Ekeland PC, described the move as “a misguided attempt to silence a critic”, adding: “This is NOT how trademarks work, and it sounds like an ethical issue.” He also listed a number of learnings that users can take from the episode, including the fact the the USPTO examining attorney could have used Google to find the Wedge LIVE! blog during the search for conflicting marks. (TJL)

Stephen Colbert talks trademarks – In a segment on a recent edition of The Late Show with Stephen Colbert, the comedian spoke about a recent trademark application from rapper Drake for the term GOD’S PLAN. “It turns out that Drake is trying to trademark the phrase 'God's Plan’,” Colbert said during his opening monologue. “That’s a pretty common expression to try and trademark. [...] The phrase became popular after Drake released a song of the same name earlier this year, and if he gets his way he’ll be using the phrase on music, clothing, marketing and promotions, and a gameshow to be broadcast on TV and the internet.” In it, Colbert ostensibly suggests that the trademark sounds generic (due to be widely used before Drake used it as a song title), even asking ‘God’ whether he was happy that Drake was seeking registered trademark protection in the phrase. While only a short segment (the full 3-minute video can be viewed on YouTube), it’s positive to see an accurate portrayal of trademark law on a popular TV show. (TJL)

Domain name radar:

DomainTools’s records hit one billion domain namesOver on its blog, DomainTools announced that its database recently recorded the one billionth unique domain name. To put that into perspective, the company states that there are only about 350 million domains currently active – so, there are more than twice as many deleted or expired domains that were never re-registered as domains online today. Explaining that there is no way to know the true figure of the number of unique domains that have ever existed, DomainTools suggests that its estimate is within 10% of the actual number. It also revealed that ‘.realty’ is the generic top level domain name with the highest percentage of deleted domains with almost 97% of these domains now deleted. On the other hand, only 0.3% of ‘.boston’ domains have ever been deleted and not re-registered. (TA)

On the move:

Montgomery McCracken launches IP department with new hires – Philadelphia-based full-service firm Montgomery McCracken has announced the hiring of veteran IP lawyers Alfred Zaher and Shawn Li to manage its newly formed intellectual property department. Joining them are litigators Maryellen Madden and John Powell. All four lawyers come from Buchanan Ingersoll & Rooney. Zaher and Li specialise in patent and trademark litigation and prosecution work, as well as licensing and counselling. (TA)

Sunstein adds associate – Boston-based IP firm Sunstein Kann Murphy & Timbers has announced that Sarah B Kelleher has joined the firm’s trademark practice as an associate. Kelleher concentrates her practice on trademark and other intellectual property issues across a broad range of industries including consumer goods, financial services, technology, entertainment, retail, and fashion.  Her practice focuses on worldwide clearance, procurement, enforcement and portfolio management, as well as trademark and copyright litigation in federal court and proceedings at the TTAB. (TL)

Squire Patton Boggs acquires Silicon Valley team – A seasoned team of Silicon Valley IP lawyers has joined Squire Patton Boggs. Frank L Bernstein, Vid R Bhakar and Ronald S Lemieux arrive from intellectual property boutique Singularity LLP as partners in the firm’s Palo Alto office. The trio have tried cases before the USPTO, in US district courts, and have argued several successful appeals before the Federal Circuit. In addition to IP litigation, the they have experience negotiating technology license agreements, handling trademark transactions, and prosecuting patents across a broad range of industries. (TL)

And finally…

Get to know the corporate trademark world’s leading lights – World Trademark Review has published the enhanced version of the 2018 WTR 300: The World’s Leading Corporate Trademark Professionals list. This community-led research project identifies the individuals deemed to be the leading lights of the corporate trademark world, and now features profiles of many of the industry’s leading trailblazers. Click here to access the enhanced version. (TL)

Adam Houldsworth

Life sciences reporter | IAM

[email protected]

London