Five things you need to know – North America

Canada

In Canadian Internet Registration Authority Domain Resolution Policy proceeding Williams-Sonoma Inc v Bensabath, settlement privilege was found to apply to certain documents filed with a complaint. Therefore, the documents were not considered when assessing the alleged bad faith of the domain name registrant. The sole panellist disregarded correspondence between the parties that was marked “without prejudice” or that was argued to be settlement privileged but had been submitted by the complainant as evidence. Bereskin & Parr’s Tamara Céline Winegust stated that the decision is a reminder that settlement privilege may be critical to discussions with regard to a domain name transfer, even outside the context of formal litigation and careful consideration should be given to how such correspondence is marked.

United States

The International Anti-counterfeiting Coalition (IACC), in collaboration with the National IP Rights Coordination Centre, has launched the HSI/IACC IP Advisory Board, with the goal of enhancing operational effectiveness in the fight against counterfeiting and piracy. Brands in more than 19 industry sectors are currently participating in the initiative, which also includes federal and state prosecutors, as well as a group for intermediary businesses (eg, marketplaces, payment providers, shippers, search engines and social media platforms).

United States

Amazon is set to launch its IP Accelerator programme. This will allow customers who apply for a trademark through one of the participating firms to access Amazon.com’s various brand protection offerings immediately, rather than wait for registration.

United States

The USPTO has declared changes to trademark fees, with the preliminary proposal featuring many significant alterations to the fee structure. This includes increases of more than 50%, as well as new payments. The office’s objectives for the changes are to better align fees with costs, ensure the accuracy and integrity of the register, recover more of the costs in TTAB matters and address concerns in filing behaviour with regard to post-registration filings. Writing for World Trademark Review, Erik Pelton of Erik M Pelton & Associates – while believing that some fee adjustments are appropriate – called for further dialogue with users, including small businesses, and more details with regard to justifications for the additional revenue.

United States

The Supreme Court has granted the USPTO’s petition for writ of certiorari in USPTO v Booking.com. A Fourth Circuit court previously allowed the registration of BOOKING.COM in 2011 and 2012 for the Dutch travel reservation company. The USPTO argued that ‘booking’ is too generic to be registerable for its services and that adding ‘.com’ does not render the mark distinctive. Similarly rejected registrations include ‘hotels.com’, ‘mattress.com’ and ‘lawyers.com’. Fighting its case, Booking Holdings Inc appealed with a survey showing that 74% of consumers identified Booking.com as a brand name. The issue will now be heard at the country’s highest court.

Get unlimited access to all WTR content