Trump makes USPTO top pick, new Redskins trademark foe and a bitter Bentley battle: Tuesday round-up
Starting today, every Tuesday and Friday World Trademark Review will present a digest of news and happenings from across the trademark world. Alongside our usual analysis and commentary, these round-ups will highlight other developments we think are worth having on your radar. Coverage this time from Trevor Little (TL), Tim Lince (TJL) and Adam Houldsworth (AH).
On the move:
Trump prepares to fill the USPTO top spot – Late last week, the White House nominated Andrei Iancu to be the next Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office. In June, following the surprise resignation of Michelle Lee, we argued that her eventual replacement needs to boast trademark credentials, as well as patent expertise. In Iancu, who is currently managing partner at Irell & Manella, we have a candidate whose experience does cover the full range of intellectual property, although patents are a prime focus (he is ranked in the gold tier for litigation in the IAM Patent 1000). Over on the IAM blog, though, Richard Lloyd notes that he remains an unknown quantity to many in the patent world, making it difficult to predict the direction he will steer the office in. With respect to his trademark leanings, the situation is the same. (TL)
Hinman departs tech giant – Philips' chief IP officer Brian Hinman is set to stand down after four years at the helm, World Trademark Review’s sister publication IAM exclusively reports. Having enjoyed previous stints in-house at InterDigital and Verizon, Hinman took stewardship of significant trademark and patent projects during his tenure. Motivated by his desire to move back to the United States full-time, the amicable departure opens up a prestigious role at Philips and brings one of the IP world’s celebrated figures back into the recruitment marketplace – albeit likely for a short time. (AH)
Brandsight picks up industry vets – Corporate domain management solutions provider Brandsight has hired two domain industry veterans to lead its client services, marketing and policy operations. Matt Serlin has made the move from MarkMonitor to lead the company’s client services and domain name operations. An active participant in the ICANN world, Serlin is former chair of ICANN Registrar’s Constituency, in which he assisted in drafting the 2013 Registrar Accreditation Agreement. Another face familiar to those on the ICANN circuit is Elisa Cooper, who joins Brandsight from Lecorpio. A former chair of the ICANN Business Constituency, Cooper is leading the marketing and policy functions at the company. (TL)
Hogan Lovells strengthens IP litigation bench – Hogan Lovells has revealed that former US International Trade Commission (ITC) Administrative Law Judge Theodore R Essex has joined the firm, based in its Washington DC office. Appointed to the ITC bench in October 2007, Judge Essex has handled a number of Section 337 proceedings and is the only person to have served as the president of both the Pauline Newman and Giles S Rich American Inns of Court, which focus on the Court of Appeals for the Federal Circuit and significant intellectual property issues. (TL)
Hilco snags Baldwin as European director – IP commercialisation specialist Hilco Valuation Services has appointed Nat Baldwin as its new director of IP services in Europe. Set to take responsibility for business development in the United Kingdom and across the continent, Glasgow-based Baldwin brings notable experience to the role; he has valued and monetised intangible property for a decade – first at Pinsent Masons, then at Metis Partners – during which time he has handled trademarks, patents and copyrights across an array of industry sectors. (AH)
Legal radar:
Chasing the bad guys… until 2019 – The UK's Police Intellectual Property Crime Unit (PIPCU) has secured additional government funding which will keep it in action until 2019. Formed four years ago and run by the City of London Police, the unit has proved a disruptive force against online piracy and counterfeiting, but was due to run out of funding this month. However, The Law Society Gazette reports that it has secured £3.2 million in UK IPO funding, meaning that it will continue to fight IP crime for a further two years. (TL)
Bird & Bird flies high with app launch – We have previously written about the rise of free trademark databases, such as TMView, and how these co-exist alongside commercial search and watch packages. A similar situation is now emerging with court decision offerings, with law firms looking to utilise online technologies to offer clients (and potential customers) access to free searchable case law databases. At the end of June, Bird & Bird launched its 'JudgmentDay' app, providing existing clients with access to selected intellectual property judgments. The app provides both summaries and access to full decisions, and users can set up personalised push notifications to view judgments whilst on-the-go. While that app is geared for the firm’s clients, last week in the US Fish & Richardson launched a free to view Federal Circuit Summaries Tracker resource, which presents precedential intellectual property decisions from the US Court of Appeals for the Federal Circuit and the US Supreme Court. The database includes summaries of notable holdings, a link to the opinion and a rating system that highlights its potential significance. Both tools have an emphasis on curation – with the respective firm’s lawyers selecting and assessing key decisions – rather than extensive listings of decisions. However, if other firms jump on the bandwagon it would not be a surprise to see expanded offerings hit the market. (TL)
China takes court specialism into cyberspace – China’s first Cyberspace Court has been established in Hangzhou, Zhejiang Province. Writing on Lexology, Hogan Lovells’ Eugene Low and Helen Xia note that the new court will handle all internet-related disputes in all districts of Hangzhou through a fully digitalised, online procedure. While the Hangzhou Cyberspace Court is considered a pilot project, similar forums may be established throughout China and, argue Low and Xia, the move “promises a more flexible procedure and higher quality judgments, handed down by specialist judges”. (TL)
Bahrain admin change – Trademark applicants must now state their full address, including street name and building number, when registering their brands in Bahrain. This move is a tweak to the country’s newly introduced online filing system, which aims to make the trademark protection process more efficient and user-friendly. (AH)
Domain name radar:
Joining the profit ‘.club’ – The registry behind the ‘.club’ domain has revealed to Domain Incite that the company is “very close” to breaking even and could move into profit in the future. To date, ‘.club’ has sold 1.1 million domains, with 700,000 of those considered “trial accounts” (sold for as low as $0.88) and the rest seen as “sold, regular registrations” with renewal rates above 65%. Of the over million registered domains, around 120,000 are active websites. This is a rare positive story about the finances of new gTLD operators, many of which have been notoriously struggling for profits (often making significant losses) since the first round began. (TJL)
Active Dot Brand domains nears 1,000 – New figures confirm that ‘Dot Brand’ domains continue to ramp up activity, with nearly 900 active secondary Dot Brand websites currently active. Compiled by The Dot Brand Observatory last week, the latest data uncovered 850 active second level domains using a Dot Brand (eg, environment.google) across 138 active top level domains. Some of the most used Dot Brands to date are ‘.audi’, ‘.seat’, ‘.barclays’ and ‘.sky’. (TJL)
Media watch:
New trademark foe for the Redskins – After the Supreme Court judgement in Re Tam, the Justice Department wrote to a federal appeals court conceding that the result means that the Redskins will be victorious in their efforts to overturn cancellation of their marks. However, the emotive discussion about the logo continues. The Washington Times reports that a North Bethesda private school will no longer allow students or staff to wear apparel bearing the team name or logo, arguing such clothing is racially offensive and goes against the school’s mission. While unlikely to have a persuasive effect on team owner Daniel Snyder’s determination to keep the current brand alive, it does show that the fierce debate over the offensiveness of the mark will continue, no matter the legal situation. (TL)
Drawing a brand blank – A new study has found that only 16% of people can accurately draw well-known logos from memory, the Daily Mail reports. The research, undertaken by Signs.com, revealed that well-known brands (including the logos of Adidas, Apple and Burger King) were incorrectly rendered by the vast majority of 150 participants in the United States. Among its other findings are that many people make similar mistakes when recalling emblems – for example, several included a stalk in their brand depiction of Apple – and that the broader marketing symbols of companies are often conflated with their logos. The takeaway, then, is that some brands may be well-known across the world, but many consumers will struggle to recall the specifics. (AH)
Preparing for the dominos to fall – Having successfully campaigned for stringent branding regulations in the tobacco sector, health campaigners are increasingly channelling their efforts towards drink products, calling for tighter regulations on branding to counteract the health and economic costs of alcohol abuse. This so-called ‘domino effect’ has been predicted for many years, and as plain packaging on tobacco products seemingly becomes the new ‘norm’ (with 23 countries so far implementing or considering it) the spread to other industries is becoming more realistic by the day. Critics warn that such branding restrictions do not represent a cure-all solution to drinking-related problems, and many beverage companies are concerned that such changes will deliver a major blow to iconic alcohol products. This debate is unlikely to go away anytime soon, so a recent column at Packaging News is helpful reading for what steps rights owners might take to reduce the prospect of legislation or to mitigate the effects of plain packaging should it come to pass on alcoholic products. A key takeaway? Innovative brands should seek to stand out by taking a different approach to their packaging design. (AH)
Bitter Bentley battle – The Financial Times features a lengthy interview with Christopher Lees, the director of Brandlogic, a small business which owns the Bentley 1962 apparel brand and a BENTLEY trademark for clothing goods. Brandlogic has been in a bitter and costly dispute with Bentley Motors over trademark rights for a number of years. World Trademark Review spoke with Lees back in May, when he revealed a movie is in the works over the ‘David versus Goliath’ legal battle being fought for the name. But now, in the FT interview, Lees steps up the tough rhetoric against Bentley Motors and one of its law firms. He accuses Marks & Clerk, who previously represented him in his legal fight with Bentley Motors, of breaching assurances they gave him of not acting on matters for the automobile company. This claim, Lees says, is based on Marks & Clerk filing an application on behalf of Bentley Motors to extend its EU trademark classes to include clothing. “It looks like a conflict of interest and it looks improper,” says Lees, who has sent multiple complaints on the matter to trademark attorney regulator IPReg. Marks & Clerk, for its part, confirmed that it is “looking into the matter”. This is certainly a fight where neither side looks like it will back down. (TJL)
And finally...
(Free) critical insights on managing brand portfolios in China: World Trademark Review and sister title IAM have published the 2018-2019 edition of China: Managing the IP Lifecycle. The free to view publication is a must-have resource for anyone who uses the Chinese IP system – and that includes just about every major company, whether it does business in China or not. Alongside chapters on extracting maximum patent value and how to utilise big data in IP litigation, there is in-depth analysis focused on achieving well-known trademark status, customs administrative enforcement and online anti-counterfeiting.