16 Apr
2019

Trump rebrand advice, INTA to offer free trademark legal services, and P&G sells two brands: 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 the biggest ever bust of counterfeit goods on the US west coast, the USPTO unveiling details of its World IP Day event, the IPOPHL seeking to amend the country’s IP code, a ranking of most relevant brands, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

INTA to offer free trademark legal services to Boston SMEs – The International Trademark Association (INTA) community descends on Boston next month for the 2019 Annual Meeting and the association has announced it will host a Pro Bono Trademark Clinic in the city on 20 May. At the Pro Bono Trademark Clinic, which will be held at the BCEC, participants can meet with INTA members to discuss a wide range of critical trademark-related issues, including trademark rights, filings, searches, and litigation. Applications to participate in the program are due by May 10, and applicants will be pre-screened for eligibility. INTA CEO Etienne Sanz de Acedo explains: “Today, Boston is a thriving hub of commerce, a hotbed of innovation, and home to an ever-expanding pool of talent. These entrepreneurs are poised to make important contributions to the economy. However, many of those who are in the initial stages of building a business often overlook the importance of early trademark registration and protection. The Pro Bono Trademark Clinic will help put them on the right path, and, in doing so, will also support economic growth and innovation.” (TL)

Biggest bust of counterfeits on the US’s west coast – Authorities in Vernon, California, have seized $15 million worth of counterfeit goods last week in what was deemed ‘the largest ever [bust] on a West Coast counterfeit supplier’. The Los Angeles Sheriff’s Department Counterfeit and Piracy Enforcement Team and the Los Angeles Police and the Department of Homeland Security cooperated to carry out the raid, which was the result of a 6-month long investigation. (BD)

USPTO unveils World IP Day event – The USPTO has unveiled its annual World IP Day event, and this year’s theme will be ‘Reach for the Gold: IP and Sports’. The offices event, held on Capitol Hill on April 29, will focus on the game-changing technological advances in robotics and artificial intelligence which are fueling change in all sports fields – the office stating: “These types of innovation and creativity, along with IP rights, are driving the development of sport and its enjoyment around the world.” Exhibitors at the event include Fanatics Inc, IBM, the National Football League, NBA Properties, Nike and Under Armour. Full details are available here. (TL)

P&G sells off two brands to streamline its portfolio – P&G is expected to close a deal with Unilever on Friday in which it will sell two of its toothpaste brands, Fluocaril and Parogencyl. While P&G has owned these brands for over 13 years, combined they represent less than 2% of P&G’s European Oral Care business. A P&G spokesperson,Velvet Gogol Bennett, said that this move would allow the company to focus more on developing and supporting its key oral care brands, as well as other major household names across the portfolio. (BD)

Most relevant brand ranking puts Facebook on top – Facebook has secured first place in the W2O Group’s Relevance Index, reports Forbes. This is the index’s second year, which analyses Fortune 100 companies using considerations such as search visibility as a measure of consumer interest; amplification of content as a measure of engagement; employee feedback and commentary; financial community perspectives; and perceptions of a firm’s CEO. “Reputation is about yesterday,” says a principal at W2O Group, “relevance is about today and tomorrow and how you stay essential in a world where people can turn you on and off in a moment’s notice.” Similar to other rankings, the top five is dominated by big tech, with Facebook, Microsoft, Google, Amazon and Apple taking the top spots. The study concluded that there was a high risk of companies to lose out on their relevance, with 51% of the Fortune 100 reporting ‘weak’ relevance. Another takeaway worth noting was the importance of the CEO in determining a brands relevance. Companies with more charismatic CEOs who engage more with the market are more likely to be viewed as relevant. Overall, the rankings show that being useful is the key to achieving relevance, as shown by Facebook which – despite backlash over the past year – still rang in at number one. (BD)

Legal radar:

IPOPHL seeks to amend IP code – The Intellectual Property Office of the Philippines (IPOPHL) has submitted a bill to Congress seeking to amend the IP Code, reports The Philippine Star. Among the reforms being ousted for are to push for reforms the power to take down online sites with IP rights violations and enable copyright owners to claim damages from infringing sites. The outlet quotes IPOPHL director general Josephine Santiago, who stated: “We have put legal mechanisms in place through the Amendments to the IP Code (House Bill 9148), the bill which was already submitted to the Philippine Congress… Strong remedial measures like these may hopefully embolden copyright owners to really plant their feet and pursue these infringers and pirates.” (TL)

Supreme Court judges avoid saying “scandalous” four-letter trademark in hearing – The judges of the highest court in the United States have been considering whether trademark applications should be rejected if deemed “scandalous” or “immoral”. The case at hand concerns the Californian fashion brand “FUCT”, which argues that the provision banning such marks should be struck down as an unconstitutional restraint on freedom of speech. But, as a number of commentators have pointed out (see here and here) with some amusement, the judges themselves went to great length to avoid saying the word “FUCT”. Justice Samuel Alito referred to “the word your client wants to use”, while Chief Justice John Roberts called it the “vulgar word at the heart of the case” and Justice Stephen Breyer spoke of “the word at issue”. The case follows in the footsteps of the Supreme Court’s decision two years ago to scrap a provision prohibiting the registration of disparaging trademarks. In Monday’s hearing in the “FUCT” case, more than one judge pointed out the apparent inconsistency with which the existing rules have been applied, with marks such as “Phukit” having been granted by the USPTO, while similar applications have been turned down. (AH)

Baker McKenzie confirm unexpected death of global chair – In sad news, Baker McKenzie has announced the unexpected passing of Paul Rawlinson, the firm’s global chair, on Friday 12 April 2019. It was announced in October last year that Rawlinson, who assumed his position as global chairman of Baker McKenzie in 2016, was temporarily stepping away from his role due to medical issues. A firm statement posted yesterday said: “The firm’s thoughts are with Paul's family, who we will continue to support during this most difficult of times. Our thoughts also go out to the very many friends at Baker McKenzie and outside the firm who worked with and admired Paul. For all of us Paul was a visionary, a true leader and a good friend. He will be greatly missed.” Jaime Trujillo was appointed acting global chair of the firm in October 2018 and will continue in this role while the firm identifies a new global chair. Those wishing to pass on condolences to Paul’s family at this time can send an email to: PaulRawlinson.Condolences@bakermckenzie.com. (TL)

Media watch:

USPTO update on efforts to protect register – Speaking at last week’s Silicon Valley IP Forum 2019, USPTO deputy director Laura Peter provided an update on trademark operations, including efforts to improve the accuracy and integrity of the US register. We have previously written about the notice of proposed rulemaking, which would require foreign domiciled trademark applicants and registrants to be represented by a US-licensed attorney in order to file trademark documents with the office. She noted that, with the consultation period now closed, the office is “currently reviewing the comments collected”. In terms of other efforts, she observed: “To combat inaccurate or fraudulent claims of use and the rise in fake specimens, we are piloting software to help determine if a photograph has been digitally altered, and we are actively encouraging lawyers to report suspicious specimens in pending applications.” (TL)

US president on virtues of a rebrand – Often one to voice his opinion on the topics of the day, US President Donald Trump took to Twitter yesterday to explain why he thinks Boeing should rebrand one of its aircraft models. As has been widely reported, technical issues with Boeing’s 737 MAX plane model has potentially had catastrophic consequences, and led to airlines and governments around the world grounding the passenger airliner after two crashes within five months killed 346 people. While the immediate concern for Boeing is to identify and fix the issue, according to Trump the company should also consider a rebrand. “What do I know about branding, maybe nothing (but I did become President!), but if I were Boeing, I would fix the Boeing 737 MAX, add some additional great features, and rebrand the plane with a new name. No product has suffered like this one. But again, what the hell do I know?”. Looking back at past examples of rebrands following product disasters, that is not necessarily the most effective next step. “A rebrand can become a disaster when it is a mere whitewash, because nobody likes being fooled,” claims one expert in an article in PR Week, with another saying: “There is a risk of alienating existing customers and clients, and it may arouse cynical and negative PR around the reasons for the rebrand, ie, trying to cover something up or deceive in some way.” There are seemingly logical reasons to rebrand a company or product that has been through significant difficulties – but consumers are more adept than ever at spotting a cynical rebrand. Boeing should therefore think carefully at taking Trump’s suggested route. (TJL)

Renew Canadian trademarks before new law comes in – Brand owners can save money by renewing their trademark registrations prior to the implementation of Canada’s amended trademark law on 17 June 17, says Philip Lapin of Smart & Biggar/Fetherstonhaugh in a recent blog. At present a renewal costs C$350, whether the mark lists one or all 45 classes. But when the new law comes in, there will by a charge-per-class model in which the first class costs C$400 and each additional class costs C$125. As such, brands registered across numerous industry sectors will be significantly more expensive to renew after 17 June. Any Canadian trademark can be renewed prior to that date regardless of deadline, Lapin points out; and the renewal term will be the same, regardless of when the payment is made. (AH)

On the move:

Windels Marx Lane & Mittendorf scoops up 19-person IP team – Windex Marx Lane & Mittendorf has added an IP practice to its bench, welcoming a team of 19 to its Madison office. The troupe is led by Andrew J Miller, who was formerly with Budd Larner PC. In addition to Miller, there are six other partners, including Constance S Huttner, Ajay Kayal, Alan Pollack, Frank D Rodriguez, Stuart Sender and Louis H Weinstein. (BD)

Turley joins Baines Wilson – UK law firm Baines Wilson has announced IP specialist Adam Turley has joined its ranks as an associate solicitor. According to the Lancashire Business View, Turley will be based in the firm’s Newcastle upon Tyne office, and brings experience in copyright, trademarks, designs and patents. According to Baines Wilson’s head of corporate and commercial, and partner, Andrew Hill, the appointment is particularly important due to recent political events in the UK: “Brexit uncertainty means businesses should be re-viewing their intellectual property strategy to ensure they have maximum protection moving forward. This can be invaluable, especially for any business looking to sell. We’re therefore delighted to have a specialist join our team who can help clients with strategy review, strengthening the specialist intellectual property services we already provide.” (TJL)

And finally…

Accessing litigation know-how – WTR recently published the third edition of Trademark Litigation: A Global Guide 2019, which helps rights holders navigate the litigation regimes in key jurisdictions. The third edition of the guide serves as an invaluable reference guide to the litigation regimes in 15 key jurisdictions, each chapter examining critical issues such as the availability of alternative dispute resolution mechanisms, defences to trademark infringement or dilution, the use of survey evidence and expert witnesses, and the intricacies of the appeals process. The full publication is available and free to access here. (TL)

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 the biggest ever bust of counterfeit goods on the US west coast, the USPTO unveiling details of its World IP Day event, the IPOPHL seeking to amend the country’s IP code, a ranking of most relevant brands, and much more. Coverage this time from Trevor Little (TL), Adam Houldsworth (AH), Bridget Diakun (BD) and Tim Lince (TJL).

Market radar:

INTA to offer free trademark legal services to Boston SMEs – The International Trademark Association (INTA) community descends on Boston next month for the 2019 Annual Meeting and the association has announced it will host a Pro Bono Trademark Clinic in the city on 20 May. At the Pro Bono Trademark Clinic, which will be held at the BCEC, participants can meet with INTA members to discuss a wide range of critical trademark-related issues, including trademark rights, filings, searches, and litigation. Applications to participate in the program are due by May 10, and applicants will be pre-screened for eligibility. INTA CEO Etienne Sanz de Acedo explains: “Today, Boston is a thriving hub of commerce, a hotbed of innovation, and home to an ever-expanding pool of talent. These entrepreneurs are poised to make important contributions to the economy. However, many of those who are in the initial stages of building a business often overlook the importance of early trademark registration and protection. The Pro Bono Trademark Clinic will help put them on the right path, and, in doing so, will also support economic growth and innovation.” (TL)

Biggest bust of counterfeits on the US’s west coast – Authorities in Vernon, California, have seized $15 million worth of counterfeit goods last week in what was deemed ‘the largest ever [bust] on a West Coast counterfeit supplier’. The Los Angeles Sheriff’s Department Counterfeit and Piracy Enforcement Team and the Los Angeles Police and the Department of Homeland Security cooperated to carry out the raid, which was the result of a 6-month long investigation. (BD)

USPTO unveils World IP Day event – The USPTO has unveiled its annual World IP Day event, and this year’s theme will be ‘Reach for the Gold: IP and Sports’. The offices event, held on Capitol Hill on April 29, will focus on the game-changing technological advances in robotics and artificial intelligence which are fueling change in all sports fields – the office stating: “These types of innovation and creativity, along with IP rights, are driving the development of sport and its enjoyment around the world.” Exhibitors at the event include Fanatics Inc, IBM, the National Football League, NBA Properties, Nike and Under Armour. Full details are available here. (TL)

P&G sells off two brands to streamline its portfolio – P&G is expected to close a deal with Unilever on Friday in which it will sell two of its toothpaste brands, Fluocaril and Parogencyl. While P&G has owned these brands for over 13 years, combined they represent less than 2% of P&G’s European Oral Care business. A P&G spokesperson,Velvet Gogol Bennett, said that this move would allow the company to focus more on developing and supporting its key oral care brands, as well as other major household names across the portfolio. (BD)

Most relevant brand ranking puts Facebook on top – Facebook has secured first place in the W2O Group’s Relevance Index, reports Forbes. This is the index’s second year, which analyses Fortune 100 companies using considerations such as search visibility as a measure of consumer interest; amplification of content as a measure of engagement; employee feedback and commentary; financial community perspectives; and perceptions of a firm’s CEO. “Reputation is about yesterday,” says a principal at W2O Group, “relevance is about today and tomorrow and how you stay essential in a world where people can turn you on and off in a moment’s notice.” Similar to other rankings, the top five is dominated by big tech, with Facebook, Microsoft, Google, Amazon and Apple taking the top spots. The study concluded that there was a high risk of companies to lose out on their relevance, with 51% of the Fortune 100 reporting ‘weak’ relevance. Another takeaway worth noting was the importance of the CEO in determining a brands relevance. Companies with more charismatic CEOs who engage more with the market are more likely to be viewed as relevant. Overall, the rankings show that being useful is the key to achieving relevance, as shown by Facebook which – despite backlash over the past year – still rang in at number one. (BD)

Legal radar:

IPOPHL seeks to amend IP code – The Intellectual Property Office of the Philippines (IPOPHL) has submitted a bill to Congress seeking to amend the IP Code, reports The Philippine Star. Among the reforms being ousted for are to push for reforms the power to take down online sites with IP rights violations and enable copyright owners to claim damages from infringing sites. The outlet quotes IPOPHL director general Josephine Santiago, who stated: “We have put legal mechanisms in place through the Amendments to the IP Code (House Bill 9148), the bill which was already submitted to the Philippine Congress… Strong remedial measures like these may hopefully embolden copyright owners to really plant their feet and pursue these infringers and pirates.” (TL)

Supreme Court judges avoid saying “scandalous” four-letter trademark in hearing – The judges of the highest court in the United States have been considering whether trademark applications should be rejected if deemed “scandalous” or “immoral”. The case at hand concerns the Californian fashion brand “FUCT”, which argues that the provision banning such marks should be struck down as an unconstitutional restraint on freedom of speech. But, as a number of commentators have pointed out (see here and here) with some amusement, the judges themselves went to great length to avoid saying the word “FUCT”. Justice Samuel Alito referred to “the word your client wants to use”, while Chief Justice John Roberts called it the “vulgar word at the heart of the case” and Justice Stephen Breyer spoke of “the word at issue”. The case follows in the footsteps of the Supreme Court’s decision two years ago to scrap a provision prohibiting the registration of disparaging trademarks. In Monday’s hearing in the “FUCT” case, more than one judge pointed out the apparent inconsistency with which the existing rules have been applied, with marks such as “Phukit” having been granted by the USPTO, while similar applications have been turned down. (AH)

Baker McKenzie confirm unexpected death of global chair – In sad news, Baker McKenzie has announced the unexpected passing of Paul Rawlinson, the firm’s global chair, on Friday 12 April 2019. It was announced in October last year that Rawlinson, who assumed his position as global chairman of Baker McKenzie in 2016, was temporarily stepping away from his role due to medical issues. A firm statement posted yesterday said: “The firm’s thoughts are with Paul's family, who we will continue to support during this most difficult of times. Our thoughts also go out to the very many friends at Baker McKenzie and outside the firm who worked with and admired Paul. For all of us Paul was a visionary, a true leader and a good friend. He will be greatly missed.” Jaime Trujillo was appointed acting global chair of the firm in October 2018 and will continue in this role while the firm identifies a new global chair. Those wishing to pass on condolences to Paul’s family at this time can send an email to: PaulRawlinson.Condolences@bakermckenzie.com. (TL)

Media watch:

USPTO update on efforts to protect register – Speaking at last week’s Silicon Valley IP Forum 2019, USPTO deputy director Laura Peter provided an update on trademark operations, including efforts to improve the accuracy and integrity of the US register. We have previously written about the notice of proposed rulemaking, which would require foreign domiciled trademark applicants and registrants to be represented by a US-licensed attorney in order to file trademark documents with the office. She noted that, with the consultation period now closed, the office is “currently reviewing the comments collected”. In terms of other efforts, she observed: “To combat inaccurate or fraudulent claims of use and the rise in fake specimens, we are piloting software to help determine if a photograph has been digitally altered, and we are actively encouraging lawyers to report suspicious specimens in pending applications.” (TL)

US president on virtues of a rebrand – Often one to voice his opinion on the topics of the day, US President Donald Trump took to Twitter yesterday to explain why he thinks Boeing should rebrand one of its aircraft models. As has been widely reported, technical issues with Boeing’s 737 MAX plane model has potentially had catastrophic consequences, and led to airlines and governments around the world grounding the passenger airliner after two crashes within five months killed 346 people. While the immediate concern for Boeing is to identify and fix the issue, according to Trump the company should also consider a rebrand. “What do I know about branding, maybe nothing (but I did become President!), but if I were Boeing, I would fix the Boeing 737 MAX, add some additional great features, and rebrand the plane with a new name. No product has suffered like this one. But again, what the hell do I know?”. Looking back at past examples of rebrands following product disasters, that is not necessarily the most effective next step. “A rebrand can become a disaster when it is a mere whitewash, because nobody likes being fooled,” claims one expert in an article in PR Week, with another saying: “There is a risk of alienating existing customers and clients, and it may arouse cynical and negative PR around the reasons for the rebrand, ie, trying to cover something up or deceive in some way.” There are seemingly logical reasons to rebrand a company or product that has been through significant difficulties – but consumers are more adept than ever at spotting a cynical rebrand. Boeing should therefore think carefully at taking Trump’s suggested route. (TJL)

Renew Canadian trademarks before new law comes in – Brand owners can save money by renewing their trademark registrations prior to the implementation of Canada’s amended trademark law on 17 June 17, says Philip Lapin of Smart & Biggar/Fetherstonhaugh in a recent blog. At present a renewal costs C$350, whether the mark lists one or all 45 classes. But when the new law comes in, there will by a charge-per-class model in which the first class costs C$400 and each additional class costs C$125. As such, brands registered across numerous industry sectors will be significantly more expensive to renew after 17 June. Any Canadian trademark can be renewed prior to that date regardless of deadline, Lapin points out; and the renewal term will be the same, regardless of when the payment is made. (AH)

On the move:

Windels Marx Lane & Mittendorf scoops up 19-person IP team – Windex Marx Lane & Mittendorf has added an IP practice to its bench, welcoming a team of 19 to its Madison office. The troupe is led by Andrew J Miller, who was formerly with Budd Larner PC. In addition to Miller, there are six other partners, including Constance S Huttner, Ajay Kayal, Alan Pollack, Frank D Rodriguez, Stuart Sender and Louis H Weinstein. (BD)

Turley joins Baines Wilson – UK law firm Baines Wilson has announced IP specialist Adam Turley has joined its ranks as an associate solicitor. According to the Lancashire Business View, Turley will be based in the firm’s Newcastle upon Tyne office, and brings experience in copyright, trademarks, designs and patents. According to Baines Wilson’s head of corporate and commercial, and partner, Andrew Hill, the appointment is particularly important due to recent political events in the UK: “Brexit uncertainty means businesses should be re-viewing their intellectual property strategy to ensure they have maximum protection moving forward. This can be invaluable, especially for any business looking to sell. We’re therefore delighted to have a specialist join our team who can help clients with strategy review, strengthening the specialist intellectual property services we already provide.” (TJL)

And finally…

Accessing litigation know-how – WTR recently published the third edition of Trademark Litigation: A Global Guide 2019, which helps rights holders navigate the litigation regimes in key jurisdictions. The third edition of the guide serves as an invaluable reference guide to the litigation regimes in 15 key jurisdictions, each chapter examining critical issues such as the availability of alternative dispute resolution mechanisms, defences to trademark infringement or dilution, the use of survey evidence and expert witnesses, and the intricacies of the appeals process. The full publication is available and free to access here. (TL)

Adam Houldsworth

Life sciences reporter

ahouldsworth@GlobeBMG.com