Five things you need to know – North America
In July the Canadian Intellectual Property Office (CIPO) confirmed that the turnaround time for trademark examination stood at 22 months for an applicant to receive an examiner’s first report and 28 months for the approval of a mark. The backlog has been a result of numerous factors, including the impact of covid-19 on the CIPO workforce and the office adapting to new legislation, regulations and examination practices. Nevertheless, CIPO has stepped up examiner hiring over the past 22 months – with 45 new examiners onboarded since Autumn 2018 and plans for more in the coming months.
US Customs and Border Protection (CBP) has issued an administrative ruling clarifying the duty-free exemption status of certain low-value shipments sent to US fulfilment centres and domestic warehouses. Section 1321 of Title 19 of the US Code, often referred to as Section 321, enables the CBP to admit qualifying merchandise duty and tax-free provided that it is imported by “one person on one day” and has a total fair market value of $800 or less. The new ruling, intended to enhance accountability in the e-commerce environment, recognises fulfilment centres and domestic warehouses as the “one person” for any goods that have not been sold to a specific consumer at the time of import into the United States, making them potentially eligible for Section 321 provisions.
The US Second Circuit Court of Appeals has overturned a $21 million damages judgment against Costco. Tiffany had been awarded the sum after a summary judgment in a case that it initiated when Costco began selling engagement rings next to signs advertising them as platinum ‘Tiffany’ rings. The district court found Costco liable for trademark infringement, but the appeals court decided that Costco had not used the word as a trademark and had instead used it “in the exact same manner that it displayed setting information for other engagement rings”.
Amazon has announced the establishment of a Counterfeit Crimes Unit dedicated to bringing to justice counterfeiters that violate the law and Amazon’s policies by listing counterfeit products in its stores. The unit is led by Cristina Posa, who joined the company in February after more than 12 years at the US Department of Justice.
In USPTO v Booking.com, the US Supreme Court has handed down a verdict in favour of Booking.com, ruling that the USPTO was incorrect when it denied a trademark application for the name of the travel company. In doing so, the Supreme Court rejected the USPTO’s ‘sweeping rule’ that the combination of a generic word and ‘.com’ is automatically generic, stating that “a term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers”.