5 Mar
2021

USPTO ends specimen protest email; New York Times drops Time lawsuit; UK debut for Amazon Fresh – 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 a groundbreaking report on IP in Mexico, INTA holding events marking International Women’s Day, Apollo acquiring craft retailer Michaels, and much more. Coverage this time from Trevor Little (TL), Bridget Diakun (BD), Jonathan Walfisz (JW) and Tim Lince (TJL).

Market radar:

INTA to hold events marking International Women’s Day Last week INTA’s Women’s LeadershIP Initiative released a report and best practice toolkit to empower women in the IP field to develop strong leadership skills and advance their careers. In the run up to International Women’s Day on 8 March it has revealed further plans to call for greater representation and advancement of women in IP by hosting events around the world. It will hold virtual discussion forums, entitled Championing Women Leaders: The Road Forward, in various time zones. Facilitated by women leaders, the one-hour forums will discuss the implementation of best practices to foster career advancement and leadership opportunities for women. Meanwhile, later in March the association’s virtual What’s Next for Brands: A View from Europe Conference, will include table topic discussions on diversity, equity, and inclusion (DEI), work-life integration, and culture exchange. Additionally, on 30 March and 13 April, INTA’s Brand & New podcast will focus on the legacy of US Supreme Court Justice Ruth Bader Ginsburg, including an interview with Professor Jane Ginsburg, an IP scholar and the daughter of the late Justice. (TL)

Apollo to acquire crafting retailer Michaels – Apollo Global Management is set to acquire retail brand Michaels for $3.3 billion. The US craft retailer received a major boost last year as locked down families and individuals took up crafts and home decor to pass the time, with shares rising 61% accordingly. “While demand may drop back a bit in 2021, the crafting market will remain elevated compared to where it was pre-pandemic,” Neil Saunders, managing director of GlobalData, said in an emailed statement. “Michaels’ new owners, Apollo, will be able to take advantage of this as they look to grow the company’s top line.” While a lot of businesses have been negatively impacted by the pandemic there are some, like Michaels, that have become favourites of those stuck at home. Ultimately, it appears the pandemic has allowed the retailer to get back on the map, and being purchased by Apollo will give it further opportunities to build and refine its brand. (BD)

Amazon to debut ‘Amazon Fresh’ in UK – Amazon is opening a cashierless convenience store in the UK, the first expansion of a physical store outside the US, reports Bloomberg. While Amazon has opened 26 of these stores under the Amazon Go brand in its home country, as well as two larger versions called Go Grocery, the UK location will be Amazon Fresh-branded. Notably, the company already operates a line of US grocery stores with conventional checkout lines called Amazon Fresh. An Amazon spokesperson said there were no plans to change the current branding of the US stores. As part of the London debut the company will introduce a new private label food brand in the UK called “by Amazon,” to be sold in the store. (BD)

Legal radar:

New York Times drops trademark suit with Time Magazine New York Times (NYT) has dismissed a November lawsuit that argued Time Magazine was infringing on its marks with the “Time 100 Talks” event series. The NYT claimed the events infringed upon three registered trademarks for the “Times Talks” events which the publisher has been hosting since 1999. The NYT also claimed that the infringement was so clear that Time was refused an application for the new series at the USPTO. The two parties settled and NYT dismissed its case with prejudice on 26 February, reports WWD. Although details of the settlement are unknown, Time seems to be continuing with the use of the name for its virtual events, launched in April 2020. (JW)

INTA files amicus briefs in George Orwell cases – INTA filed two amicus briefs before the Grand Board of Appeal of the EUIPO in three parallel cases brought by the Estate of the Late Sonia Brownell Orwell. The cases concern the issue of whether (famous) names and titles can be registered as trademarks for books, films, and certain services, or whether such marks should be considered descriptive of the content/subject matter of the goods/services claimed and therefore not able to function as trademarks. The first case concerns the registrability of GEORGE ORWELL (case R 2248/2019-5), while the remaining two cover trademark applications for ANIMAL FARM and 1984, the titles of two books authored by George Orwell (cases R 1719/2019-5 and R 1922/2019-5). With the applicable laws and EUIPO guidelines stating that names and titles can in principle function as trademarks, INTA argues that the names of famous authors and the titles of famous literary and artistic works should not be excluded from trademark protection per se, or subject to special treatment that is more severe than that applied to other trademarks. It adds that a case-by-case assessment should be carried out, taking into account all the circumstances of the case and that public perception may vary over time. The association further argues that an author’s name or book title do not necessarily describe any kind of goods or services – the average consumer will not understand the name or title as being a generic term for books or any kind of book, unless (in exceptional circumstances when) the title is purely descriptive of the subject matter of the book. The argument is also made that famous titles are not descriptive of any goods or services because of their fame per se (as this would make all famous marks ineligible for registration after they have acquired reputation).The briefs are available here and here. (TL)

Office radar:

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

New EUIPO examination guidelines come into force The latest edition of the guidelines for examination of European union trademarks and registered Community designs entered into force on 1 March 2021 following the approval by the executive director of the EUIPO by means of Decision EX-21-1. The latest edition of the guidelines was timed to coincide with the entry into force of the most recent decisions of the executive director: EX-20-9 on communication by electronic means and EX-20-10 on technical specifications for annexes submitted on data carriers. The latest edition of the guidelines is currently available in five languages (English, French, German, Italian and Spanish) but will be made available in the other 18 official languages of the EU during the course of 2021. The Guidelines are available in both electronic and PDF format on the EUIPO website. (TL)

USPTO ends specimen protest email pilot programme The USPTO has announced the discontinuation of its specimen protest email pilot programme, which was implemented in March 2018 to allow third parties to submit information regarding trademark applications with specimens that were potentially not in actual use. The move to discontinue the programme comes because the office is now implementing additional tools, resources, and training for identifying suspicious specimens. Additionally, it states the Trademark Modernisation Act of 2020 provides statutory authority for the longstanding USPTO Letter of Protest practice, which allows third parties to submit evidence to the USPTO prior to registration regarding a trademark’s registrability, including evidence regarding digitally altered specimens. The email inbox '[email protected]' will also no longer be available. (TL)

EUIPO holds two-day meeting with JPO – The EUIPO has held a two-day virtual event with the Japan Patent Office (JPO) focused on bilateral cooperation activities between the two registries. Some of the key topics discussed include new technologies related to trademarks, priority rights, and bad faith. (TJL)

Mexican IPO and EUIPO launch unprecedented IP study – The Mexican IP Office (IMPI) and the EUIPO have released an “unprecedented study” on the influence of IP on the economy of Mexico. It reveals that between 2010 and 2019, trademarks and patents contributed “almost 50%” to Mexico’s GDP, while IP generated a third of jobs in Mexico with wages 18% in those jobs. The general director of IMPI, Juan Lozano, says he hopes the study will be a “strategic tool” to boost the country;s economy. “If we have learned well the lessons that recent global events give us, we all, society, government and companies have the challenge of protecting and fostering an economy based on innovation,” he added. “This study reveals that creativity, the generation of the new and the inventive capacity of people are fundamental engines for the economy.” (TJL)

On the move:

Latham & Watkins strengthens litigation bench – Susan Tull has joined Latham & Watkins in Washington DC as counsel in the litigation & trial department and as a member of the intellectual property litigation practice. She represents clients before US District Courts, the US International Trade Commission, and the US Court of Appeals for the Federal Circuit. “Susan is a fantastic addition to the firm’s IP litigation practice, whose experience litigating patent cases on a wide variety of issues complements Latham’s formidable courtroom reputation,” said Michael Morin, global vice chair of Latham’s IP litigation practice. Tull formerly practiced at Finnegan, Henderson, Farabow, Garrett & Dunner. (BD)

McGlinchey adds entertainment and IP attorney in Nashville office McGlinchey has announced the hire of Brenner Lackey McDonald who has joined the firm as a member within the Nashville office. McDonald is an experienced entertainment and IP attorney, with over 30 years of experience. “We are thrilled to welcome Brenner to the firm,” said Drew Patty, who leads the intellectual property group. “She brings a unique background to our practice and great value to our creative clients in Nashville and across the country. Musicians, writers, comedians, athletes, and other entertainers need to safeguard their works, brands, and reputations - just as inventors and businesses protect their intellectual property. Brenner helps clients in creative industries protect and monetise the rights to their valuable creations. Our firm’s platform, extending from California to New York, and New Orleans to Nashville, also presents a unique opportunity for her kind of practice.” McDonald will focus on counselling clients on publicity and endorsement rights, trademarks, copyrights, domain names, and other areas of intellectual property law. (BD)

McDaniels Law opens new office in North West UK – Boutique IP firm McDaniels Law has expanded from its Newcastle base to open a new office in Carlisle, reports BDaily. The Carlisle office will be led by managing associate solicitor Adam Turley. McDaniels Law founder Niall Head-Rapson commented: “When Adam came on board with his knowledge of the vibrancy of the Cumbrian economy it was an absolute no-brainer to bring our expertise to the market. With North West businesses producing so many exciting products and brands there is a real need in the region for specialist intellectual property advice, including advice on patents, which we can now provide without having to travel outside of the region.” (JW)

And finally...

WTR Connect returns this month with five days of strategic content – The second WTR Connect series of digital events will take place the week commencing 15 March 2021. The event will offer more than 20 interactive digital sessions, each designed to facilitate discussion, benchmarking and the sharing of best practice around key topic areas and challenges facing trademark and brand leaders. The theme for the event is ‘exchanging cost-effective and resource-efficient best practices’ and each day will start with a keynote address from a major industry figure, which is followed by live breakout discussions lasting for a maximum of 60 minutes. Registration is free for WTR subscribers and participants can register for as many sessions as they like across the week, building their own schedule. For event timings, and to sign up to attend, please click here.

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