USPTO reveals ID verification details; Peloton sues Lululemon; Guinness packaging blunder – 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 Uber resolving a dispute with a New York ad agency, amendments to the Hague System Common Regulations, Converse launching a new Pokémon collection, and much more. Coverage this time from Victoria Arnold (VA), Bridget Diakun (BD), Tim Lince (TJL) and Trevor Little (TL).

Brand radar:

WildBrain CPLG announces Strawberry Shortcake licensing and partnership programmes – Strawberry Shortcake’s new Netflix series Berry in the Big City has led to new product and partnership deals for WildBrain CPLG and its licensing agency, reports License Global. The company already has an established partnership programme with gaming, music, toys, apparel and food products due to launch alongside the animated series. Now, WildBrain CPLG has built on the programme by signing new partners from “across the vintage and contemporary side” of the brand. “Strawberry Shortcake has always had enduring popularity, and the relaunch has seen the excitement around this property ramp up,” says Jasen Wright, vice president, North America at WildBrain CPLG. “We’ve seen strong interest from licensees in WildBrain’s new version of the brand, and that halo is fueling a simultaneous renaissance around the classic brand from the 1980s, all of which is testament to the strength of Strawberry Shortcake’s appeal across generations.” New consumer product and promotional campaign partners for Berry in the Big City include I’m the Chef Too and Bahama Buck’s ice cream. Other existing licensees include Moose Toys and Penguin Random House, while Dippin’ Dots and Sunkit Growers and Envy Apples are among the promotional partners. (BD)

Converse launches new Pokémon collection – Converse is celebrating Pokémon’s 25-year history with a new collaboration with the card and video game brand. The line will feature a variety of apparel, footwear and accessories. The collection will also introduce Pokémon to the customisable Converse By You range, which enables customers to tailor their sneakers. (BD)  

Legal radar:

Peleton pushes back against apparel design claims with Lululemon lawsuit – Peloton is suing Lululemon Athletica in an ongoing dispute over the exercise company’s new apparel collection. Lululemon, whose five-year co-branding deal with Peloton came to an end earlier this year, claims that Peloton’s new line of leggings and women’s bras infringes six of its design patents. On 11 November it sent Peloton a letter claiming that it would sue the company for patent infringement if it did not cease the sale of the disputed products. However, Peloton has filed suit in the US District Court for the Southern District of New York, seeking declaration that Lululemon's infringement claims are invalid. Peloton argues that it is easy to distinguish between Lululemon’s and its own items. “On top of the numerous clear and obvious differences in design, Peloton and Lululemon's brands and logos are also distinctive and well-recognized, making confusion between products a virtual impossibility,” the filing adds. Lululemon has responded that it will be defending its proprietary rights “to protect the integrity of our brand, and to safeguard our intellectual property”. The apparel line is part of Peloton’s efforts to rely less on home equipment products, after sales growth slowed following the lifting of lockdown restrictions. (VA)

Uber resolves dispute with New York ad agency – Uber Technologies and New York marketing agency Uber Inc have resolved their trademark dispute over the rideshare company’s planned expansion into advertising, according to a Manhattan federal court filing. Uber Inc sued Uber Technologies and its advertising partner Adomni in 2020, claiming that the companies’ plans to display ads on Uber drivers’ cars was likely to create consumer confusion with the marketing agency, which has worked with brands including BMW and Macy's and has been using the Uber name since 1999. Uber Inc claimed that it has dealt with “constant business interruptions” from customer complaints, product shipments, legal correspondence and other communications meant for Uber Technologies. However, it previously rejected Uber Technologies’ offer of $120,000 to change its name. The US District Court for the Southern District Of New York rejected Uber Technologies' motion to dismiss the complaint in February, ruling that Uber Inc had made out plausible trademark infringement and dilution claims. Uber Inc has now agreed to dismiss its trademark infringement claims with prejudice. The terms of the settlement are undisclosed. (VA)

Office radar:

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

USPTO reveals more ID verification information – The USPTO has confirmed that TEAS and TEASi account holders can apply for one-time ID verification from 8 January 2022. From 9 April 2022 any trademark owner not represented by an attorney, any US-licensed attorney (including in-house counsel) and all Canadian attorneys and agents will require such ID verification to use the TEAS and TEASi platforms. The USPTO states that the ID verification “helps to deter bad actors who make fraudulent trademark filings and scam our customers” and is part of an “ongoing initiative to strengthen the security of our trademark filing process and protect the integrity of the US trademark register”. WTR revealed the plans for ID verification in March 2021, with broad support for the anti-fraud measures, but some concerns over the administrative hurdles that it could create. (TJL)

IPOPHL and Pharmaceutical Security Institute team up to tackle counterfeits – The Intellectual Property Office of the Philippines (IPOPHL) has signed a memorandum of understanding (MOU) with the Pharmaceutical Security Institute (PSI) aimed at combatting counterfeit medicines and pharmaceutical products in the market. The MOU provides a framework for capacity building and spreading awareness of information relevant to curbing the sale, supply and consumption of counterfeit medicines and pharmaceutical products. The partnership was sealed to address the challenge of delivering safe medicines and ensuring integrity across the pharmaceutical supply chain. “This synergy with PSI will help us better protect the value of IP that is meant for our country’s economic gain and, of course, protect our consumers, especially where fake products involved can harm health and cost a life,” said IPOPHL director general Rowel S Barba. (TL)

Amendments to Hague System Common Regulations – WIPO has announced that the Assembly of the Hague Union has adopted a number of amendments to its Common Regulations. Specifically, changes to Rule 5 introduce a general provision that can excuse a delay in meeting a time limit to perform a required action with WIPO due to a force majeure (eg, the covid-19 pandemic). Rule 17 will see an extension of the standard publication of an international registration from six months from the date of registration to 12. A change to Rule 21 will make it easier for new owners to request the recording of a change in ownership. The amendments will come into force on 1 January 2022. (TL)

INPI unveils awards winners – The French National Institute of Industrial Property (INPI) has announced the winners for this year’s INPI Awards. Launched in 1991, the scheme recognises and rewards companies that embody French innovation at its best and put intellectual property at the heart of their development. This year, winners were selected in five new categories: export (won by playground creator Proludic), industry (awarded to animal welfare innovator Bioret Agri), responsible innovation (awarded to low-carbon cement maker Hoffmann Green), research partnership (awarded to bioplastics firm Lactips) and start-up (awarded to wireless charging specialist Energysquare). INPI CEO Pascal Faure stated: “We’re delighted to give centre stage today to innovative companies that have made industrial property a key component of their growth, so that they can serve as a source of inspiration for a whole new generation of entrepreneurs. Providing day-to-day support to innovative companies is central to INPI’s purpose, and seeing them grow and become more competitive gives us immense satisfaction. These companies and the people behind them are the beating heart of the country’s economy. For 30 years, the INPI Awards have been showcasing standout start-ups, SMEs and mid-market companies that embody French innovation at its best. The 2021 winners list once again illustrates the wealth of talent and creativity that exists in our regions and our country.” (TL)

Media Watch:

Guinness packaging blunder goes viral –  A Reddit thread with hundreds of comments on the “awful design of packaging” by alcohol brand Guinness has gone viral this week. The original post came from a Reddit user whose partner is a recovering alcoholic and had purchased a pack of what he believed to be ‘alcohol-free’ Guinness in the alcohol-free section at his local supermarket. After discovering that the pack actually contained standard Guinness, the user stated that their partner was “scared about relapse”. The user posted an image of the Guinness packaging in question, which displayed the phrase “New Alcohol Free 0.0%” in highlighted text, although it also notes that it contains 10 standard cans and two free alcohol-free cans in the box. The packaging was therefore unclear, according to a vast majority of the hundreds of Reddit comments. “This is some of the worst product design I’ve ever seen,” said one. “I can only imagine the reason [the supermarket worker] put it in the alcohol-free section was because the staff made the same mistake as the partner,” said another. The primary issue, it appears, is that the designers of the packaging “do not understand anything about alcoholism”, users state, adding: “There shouldn't be any room for confusion with beers, especially when it comes to alcohol-free.” The situation is a reminder on the responsibility that brands have when designing their packaging and the fact that trademark professionals are in a strong position to review the brand implications of new items – not just from a legal position, but also a moral one, because forsaking that responsibility has potentially significant PR and brand value impacts. (TJL)

Law firm radar:

Former USPTO patent examiner joins McNees – McNees Wallace & Nurick has announced the appointment of IP attorney and former USPTO patent examiner David J Cho. Cho is an expert in drafting and prosecuting patents across a variety of technologies, including medical devices and semiconductors. (BD)  

Perkins Coie adds partner in Washington DC Alec Farr has joined Perkins Coie’s litigation practice as a partner in the firm’s Washington DC office. Farr focuses his practice on complex commercial and IP matters, in particular non-compete, trade secret, copyright and trademark infringement matters. He regularly counsels clients in a variety of industries, including financial services, major non-profits, telecommunications, sustainable energy, pharmaceuticals, entertainment and healthcare. “Alec is a high caliber and successful trial lawyer with significant experience before state and federal trial and appellate courts and international arbitration panels,” said Jessica Everett-Garcia, firmwide chair of Perkins Coie’s litigation practice. “We are truly excited to welcome Alec to our Litigation practice and know that his deep experience across a variety of industries will also be highly valuable to our clients.” (TL)

Oslo Patentkontor joins AWA – Oslo Patentkontor, one of Norway’s oldest IP firms, will join the AWA Group on 1 March 2022. The firm will continue to support clients with its patent, trademark, design and legal services, but will be bolstered by AWA’s on-the-ground offering across Europe and Asia, as well as access to AWA’s domain name services. The press release states: “On a path to becoming Europe’s next innovation hub, AWA first entered the Norwegian market when our Oslo office launched in August 2020. Oslo Patentkontor joining AWA underpins our commitment to this critical market and places us in the best position to support our international clients and partners with national intellectual property rights, as Norway is not an EU member state.” Carsten Lous will continue to lead AWA’s Norwegian business after Oslo Patentkontor joins. (BD)

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.


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