Lord of the Rings crypto domain dispute; NextCar acquires Autonomy brand; IPOPHL enhances IP Depot  – news digest

Every Tuesday and Friday, WTR presents a round-up of news, developments and insights from across the trademark sphere. In our latest round-up, we look at GIview celebrating its first birthday, the acquisition of the Autonomy brand and related IP, the latest law firm appointments, and much more. Coverage this time from Victoria Arnold (VA), Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL). 

Brand radar:

FAT Brands to acquire Native Grill & Wings – FAT Brands has struck a deal to acquire Arizona-based restaurant chain Native Grill & Wings for $20 million. It is the company’s fourth acquisition this year, after announcing the planned purchase of Fazoli’s in early November. “With the chicken wing sector growing in popularity throughout the pandemic, we knew that we wanted to continue developing our portfolio further into this category by bringing in a brand that would complement our existing wing concepts,” said FAT Brands CEO Andy Wiederhorn. “Native Grill & Wings has been on our radar for some time given its ability to remain nimble and deliver strong system-wide sales growth over the past year. We’re pleased to build off the success established by Dan Chaon, Native brand CEO, and Cybeck Capital Partners, and we look forward to expanding Native Grill & Wings’ presence into new markets.” Native Grill & Wings will benefit from FAT Brands’ resources and franchising experience. Chaon says that the new ownership has the power to “maximise the potential of the potential of the Native Grill & Wings brand” and its franchisees. (BD

NextCar buys Autonomy brand – NextCar/NXCR, a fintech and insurtech vehicle subscription platform, has completed the acquisition of the Autonomy brand as well as its related IP. The deal includes the primary global domain ‘autonomy.com’, the country and subdomain extensions, as well as related trademark applications and goodwill. NextCar purchased the assets from Micro Focus, which acquired Autonomy from Hewlett-Packard company. “Customer acquisition cost is one of the critical factors in determining the success of any business. Going to market with a compelling brand that people can relate to in tandem with a magical product and consumer experience creates a moat for any business and is the foundation for scaling this business profitability,” said Scott Painter, co-founder and CEO of NextCar/NXCR. Georg Bauer, co-founder and president of NextCar/NXCR, added: “Easy and affordable access to mobility is a challenge for consumers everywhere. The ability to immediately become a global brand through our acquisition of an IP brand library that is inclusive of assets in over a dozen countries is an incredibly valuable strategic asset. We believe Autonomy will be a pivotal financial and insurance innovation through which consumers get access to a vehicle.” (BD)

Vans honours US Postal Service with footwear and apparel collection – Vans is collaborating with the US Postal Service (USPS) on a series of postal-inspired footwear and apparel. The collection will feature the USPS eagle logo, Priority Mail verbiage and old-school US Mail branding on four classic Vans sneakers. Apparel will include a Priority beanie and a Bulk Mail sweatshirt and t-shirt, while shoeboxes will use a traditional Priority Mail packaging design. The collection, available from 29 November, is a tribute to hard-working USPS staff, whom “neither snow nor rain” can stop from delivering mail through the holiday season. (VA)

Legal radar:

Lord of the Rings crypto domain shut down for trading off Tolkien works – The domain name ‘jrrtoken.com’ has been found confusingly similar to the J R R TOLKIEN trademark owned by the estate of famous Lord of the Rings author JRR Tolkien. The domain was registered by Florida-based developer Matthew Jensen in February 2021 for the sale of a Lord of the Rings-inspired cryptocurrency. At the time of the complaint, the domain resolved to a website, ’thetokenofpower.com’, which included images of wizards and other characters related to Tolkien’s works, as well as the phrase “The One Token That Rules Them All”. The Tolkien Estate argued that the domain name could “be viewed only as an instrument of fraud, specifically designed to mislead Internet users” with the aim of “taking unfair commercial advantage of the enormous goodwill” attaching to Tolkien’s works. The infringement was aggravated by the fact that the domain was used for the sale of cryptocurrency, which the Tolkien Estate described as “in itself a highly contentious area of activity”. Jensen responded that the domain name was a parody and therefore only meant to be humorous. However, the WIPO panel agreed that the digital token was set up for commercial gain and was “confusingly similar” to the trademark owned by the Tolkien Estate. “There is no doubt that the respondent was aware of Tolkien’s works and created a website to trade off the fame of these works,” the panel held. “The Respondent’s website is clearly a commercial venture, which is clever but not humorous,” it added. Jensen was ordered to cease operations under the JRR Token name and delete all infringing content, including social media accounts and websites. (VA)

Office radar:

(For the latest coronavirus-related updates from national IP offices, please read our dedicated article, which is being continuously updated.)

IPOPHL enhances IP Depot – The Intellectual Property Office of the Philippines (IPOPHL) has enhanced its IP Depot, a digital marketplace for IP assets. The offering was created by IPOPHL to help stakeholders promote their patented inventions, registered utility models, industrial designs, trademarks and copyrighted works to potential investors and buyers for free. It currently showcases 90 IP assets, 70 of which originate from Innovation and Technology Support Offices. The latest changes to the IP Depot include the introduction of a more user-friendly interface and a forum that aims to create an online community of IP buyers and sellers from all over the world. The IP Depot has also been linked to IPOPHL’s official website to help improve searchability. “Overall, the IP Depot webpage has been enhanced with a design and visual elements that are more in line with the IPOPHL branding. This shows our own commitment to protect the brand we have worked hard for and provide our stakeholders with a better experience,” IPOPHL director general Rowel S Barba explained. “We hope with a platform that enables increased engagement, we can also boost our visibility, with engagement being one of the top factors for search engine optimisation. With this, we will see the IP Depot facilitate commercialisation of IPs and attract more international buyers, thereby generating income for the local IP owners and contributing to the economic condition of the country.” (TL)

UKIPO seeks communications manager – The UK Intellectual Property Office is seeking a senior strategic communications manager. As part of the UKIPO strategic communications team, which guides the implementation of external communications activities across the UKIPO, the role will entail designing and coordinating communication activities that support UKIPO priorities, ensuring the right mix of communications interventions, developing strong relationships with business areas and communications teams, and working with the head of strategic communications and the senior management team to develop and implement the annual communications plan. Details on how to apply are available on the UK Civil Service website. (TL)

GIview celebrates first birthday – The EUIPO celebrated the first anniversary of the launch of GIview this week. GIview currently contains more than 5,200 geographical indications (GIs) protected in the European Union and more than 40,000 entries showing the protection of EU GIs worldwide. “A year after its launch, GIview is showing its full potential by providing the most complete and reliable GI data worldwide,” the EUIPO states. “The EUIPO, in cooperation with [the Directorate General for Agriculture and Rural Development] DG AGRI, has trained and provides continuous support to the Member States’ competent authorities, allowing them to take full advantage of the tool’s capabilities by providing ‘extended data’.” Over the past three years the EUIPO and DG AGRI have launched a number of initiatives in four GI-related areas: capacity building, knowledge expansion, promotion, and the development of tools and databases. The office notes that it “is also involved in the extensive EU GIs legal reform, providing technical assistance to the Commission in the ongoing legislative reviews in the areas of both agricultural, and craft and industrial GIs. This will reshape the landscape of GI protection in the EU”. (TL)

Domain Radar:

ICANN opens comment window on registration data – ICANN has opened a public comment window to receive input on the final policy recommendations of the Generic Names Supporting Organisation Expedited Policy Development Process (EPDP) on the Temporary Specification for gTLD Registration Data – Phase 2A. As part of the effort to address the lack of access to WHOIS data, ICANN previously initiated an EPDP to focus on the temporary specification model and discuss, among other elements, a new system to handle requests for non-public registration data centrally – namely, the System for Standardised Access/Disclosure. The latest comment period focuses on two issues: the differentiation of legal versus natural persons' registration data; and the feasibility of unique contacts having a uniform anonymised email address. It is an important topic and one that rights holders should engage with. The submissions window closes on 13 January 2022. (TL)

Law firm radar: 

Mayer Brown announces promotion round – Mayer Brown has elevated 65 lawyers in a promotion round, including 39 who will become partners and 26 who will attain the position of counsel. Allison M Aviki (New York), Amanda Streff Bonner (Chicago), Saqib J Siddiqui (Washington DC) and Jonathan W Thomas (New York) have all been promoted to partner within the IP practice area. New-York based IP attorney Scott A McMurry has been elevated to counsel. The promotions come into effect on 1 January 2022. (BD

Ryan B Hawkins promoted to senior counsel at Perkins Coie – Perkins Coie has promoted five attorneys to senior counsel, effective as of 1 January 2022. Ryan B Hawkins is the only member of the IP department selected to move into a senior counsel role. Hawkins is a technology attorney with over 13 years’ experience. He handles litigation matters, provides product counselling and IP portfolio management, and helps clients to address privacy issues. (BD) 

White & Case promotes 68 lawyers across 29 offices – White & Case has announced the promotion of 40 lawyers to counsel and 28 lawyers to local partner. Henry Huang (Silicon Valley) and Daniel Sternberg (Boston) were the two members of the global intellectual property practice in the Americas to be promoted to counsel. In the EMEA offices Anna Dold (Frankfurt) has been named local partner, and Caroline Lyannaz (Paris) has been named counsel. All promotions will take effect in January 2022. (BD) 

In-house vacancies radar:

Devialet seeks IP counsel – French audio technology company Devialet is seeking a legal counsel, intellectual property/IT. Reporting to the head of intellectual property/IT, the successful candidate will draft and negotiate strategic contracts with major international partners, provide support to internal teams, ensure the protection and valuation of Devialet’s IP assets, and conduct legal watch and analysis activities. (TL)

And finally... 

WTR Special Report explores how to manage the brand balance sheet – The ability to measure and record brand value is crucial for a host of business reasons: to gain a 360-degree insight into an enterprise’s worth; to measure a company’s health or product offerings; to calculate licensing royalties; to determine potential reputational hits and damages in dispute scenarios; to underpin M&A decision making. The list goes on. WTR’s most recent Special Report takes a deep dive into brand valuation, the reporting of intangibles and strategic best practice for brand leaders. As well as tracking recent developments in the industry and presenting a guide to the fundamentals of valuation practice, we focus in on key trends, the companies that own the most valuable brands and their financial performance. In addition, we present a rundown of the most valuable brand acquisitions since 2000. WTR subscribers can access “Managing the brand balance sheet” here.

Unlock unlimited access to all WTR content