Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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USA

29 SEPTEMBER 2022

Intent to sell does not equate to intent to use

The TTAB has issued a strong ruling against a trademark owner who failed to provide convincing evidence of use over the past nine years. The result is an affirmation of the Trademark Act and the fight against trademark trafficking.

22 SEPTEMBER 2022

Failure to record trademark assignment supports dismissal

A written trademark assignment agreement presented as evidence of intent has been deemed insufficient to demonstrate ownership, leading to the dismissal of a coffee company’s infringement claim.

15 SEPTEMBER 2022

Superior common law rights in South Carolina defeat infringement claims

A district court has held that one sale made two years before applying for federal trademark protection ― with no targeted marketing or promotion in South Carolina during that period ― is insufficient to establish superior common law trademark rights.

01 SEPTEMBER 2022

Does the first-sale doctrine apply to NFTs?

NFT transactions are recorded on the blockchain, therefore, one could argue that they act more like physical, tangible works of art, as opposed to copyrighted material. This raises the question of whether the first-sale doctrine applies to NFTs, an issue that US courts should be prepared to resolve.

25 AUGUST 2022

Lowering the bar for genercide from “clear evidence” to “reasonable basis”

In light of a lower bar to genericness of brand names, we can expect an increase in genericide refusals and affirmed TTAB proceedings, and, potentially, an uptick in litigation disputes.

14 JULY 2022

The Ohio State University wins trademark protection for THE

OSU’s years-long battle with the USPTO and Marc Jacobs has ended with the university overcoming arguments that the mark is merely ornamental, prompting the question of how the brand will use this to grow its already substantial licensing and trademark programme.

07 JULY 2022

Lessons from the first six months of the Trademark Modernisation Act

With more options for combating trademark registration for non-use comes greater potential for error. Fortunately we have some more guidance from the USPTO on best practices for success.

30 JUNE 2022

What the data says about the first six months of the Trademark Modernisation Act

Back in December 2021 the USPTO enacted the Trademark Modernisation Act. A deep dive into the numbers so far offer a fascinating insight into how this relatively new act is affecting the US trademark landscape.

23 JUNE 2022

District court rejects laches defence in infringement case on remand from appellate court

A court has ruled that a statute of limitations for infringement has expired after a trademark owner waited 12 years to bring legal action. Therefore, the burden of disproving delay has shifted from the alleged infringer to the trademark owner.

16 JUNE 2022

Purchase of search engine ads for word marks is sufficient to constitute infringement

A US court has found a defendant to be “purposely and intentionally deceptive and misleading” after buying advertisement space under a trademarked term, even though the goods advertised were not infringing. Such rulings are inconsistent across the United States; however, there is enough precedent for brands to take note.

09 JUNE 2022

Taking off our attorney hats in support of World Anti-Counterfeiting Day

A look at, and clarification of, the US consumer guidelines on how to detect and defend against counterfeit goods in support of World Anti-Counterfeiting Day, which took place on 8 June.

26 MAY 2022

Arizona State spat over covid-19 Instagram posts hits a wall

The Ninth Circuit has declined Arizona State’s appeal of its trademark infringement suit and upheld a district court decision that there was no likelihood of confusion between the plaintiff’s trademarks and the alleged infringer’s social media posts.

19 MAY 2022

Nike sues retail platform over NFTs in potentially precedent-setting case

An in-depth look at Nike v StockX  and how the nominative fair-use defence has been made (and may fare) where unaffiliated branded goods are depicted in NFTs.

12 MAY 2022

NFTs, trademarks and sneakers: a Nike story

What are NFTs and how do they fit into trademark law, if at all? Analysis of US legislation and a deep dive into nominative fair use as a legal defence of NFTs allegedly infringing Nike marks, sheds light on this emerging asset class.

05 MAY 2022

Lodestar v Bacardi has implications for protection of US marks under Madrid Protocol

A new ruling provides invaluable guidance on who holds enforceable priority when a mark is registered prior to use in commerce yet use did not begin until after the allegedly infringing use began.

21 APRIL 2022

Court grants motion to exclude expert witness testimony due to lack of relevant expertise

A damages expert’s testimony was excluded to the extent that it contained opinions related to subject matters outside of his expertise, including likelihood of consumer confusion.

14 APRIL 2022

Lights, camera, legal action: Quentin Tarantino in litigation with Miramax over NFT rights

A dispute over IP rights to Pulp Fiction-related NFTs demonstrates why practitioners need to enhance their clients’ portfolio registrations with fresh applications to cover this new asset.

07 APRIL 2022

Russia: the new wild west for US trademarks and enforcement

Government sanctions and brand boycotts following the invasion of Ukraine have prompted various different responses from Russia, making it unclear whether US brands will be enforced going forward.

31 MARCH 2022

The rise of the metaverse and what brands need to do now

The USPTO has seen a sharp increase in trademark applications for marks relating to virtual goods and services, signalling that brands are already paying keen attention to the burgeoning metaverse.

24 MARCH 2022

Court grants motion for judgment for failure to sufficiently plead secondary meaning in product design trade dress

Although secondary meaning in product trade dress can be evidenced mostly through conclusory statements, a plaintiff must still allege specific facts that lend credence to claims of acquired distinctiveness

10 MARCH 2022

What the numbers reveal about the Trademark Modernisation Act so far

A new era of proceedings at the USPTO began on 27 December 2021 thanks to the Trademark Modernisation Act. Two months in and a deep dive into USPTO data reveals how have individuals and business have been using the act

24 FEBRUARY 2022

Identical product ruled as not infringing due to lack of evidence of confusion

An IP clash between two former room-mates over eyelash-growth serum provides a valuable lesson on the importance of memorialisation of evidence and formal non-disclosure agreements

10 FEBRUARY 2022

A tale of two committees: board of directors splits in two then battles for IP rights

A trial lawyer training programme has divided into two factions, one side suing for dissolution of the programme and control of the board, the other for trademark infringement under the Lanham Act, arguing that that courts should presume irreparable injury whenever a plaintiff establishes infringement

03 FEBRUARY 2022

Transfer action raises questions around jurisdiction in trademark infringement cases

The Second Circuit Court of Appeals has transferred a request for preliminary injunction, ruling that if the operative complaint arose in part under patent law, the Federal Circuit has exclusive jurisdiction over the appeal, even when this does not involve patent claims

13 JANUARY 2022

Nike and Converse reach settlement with former employee in custom-shoe case

An ex-Nike employee has reached a settlement with the shoe giant over his practice of customising genuine branded shoes to produce trademark-melding creations. Intriguingly, the proposed judgment indicates that the defendant may continue his customisation services – although only pursuant to the terms of the agreement.

16 DECEMBER 2021

Federal Circuit reverses TTAB decision on MONEY MART cancellation

The US Court of Appeals for the Federal Circuit has held that a registrant does not have priority to a specific service that it was second to offer, simply because it was the first to offer a different specific service that is a species of a genus that covers both specific services.

09 DECEMBER 2021

Novel cryptocurrency ‘JRR Token’ ruled to be infringing

An attempted fantasy parody defence of a domain name associated with a cryptocurrency coin clearly derivative of The Lord of the Rings series showcases why defences based on parody are exceedingly weak in this commercial context and why would-be users of others’ marks should seek licensing arrangements rather than simply use and hope for the best.

02 DECEMBER 2021

USPTO finally implements the Trademark Modernisation Act

This long-awaited legislation will provide a more efficient, less expensive system for clearing out fraudulent registrations within the trademark database, promoting transparency and opportunity for legitimate businesses looking to protect their brand.

11 NOVEMBER 2021

Established US engineering firm loses out in bizarre cybersquatting case

A venerable Minnesota company has been left without remedy after a finding upheld the rights of a Chinese resident to operate a pornography website under its company name. The case emphasises why changes to the UDRP cannot come soon enough.

04 NOVEMBER 2021

TTAB ponder trademarks that reference fictional places

The TTAB has reversed the USPTO’s refusal to register the word mark REPUBLIC OF LONDON, finding that it was not “primarily geographically deceptively misdescriptive” of the identified items – ‘the Republic of London’ not being an actual location.

21 OCTOBER 2021

Brand issues set to take centre stage at ICANN 72 meeting

ICANN’s 2021 Annual Meeting is due to take place completely online and will cover topics from the intersection between domain names and brands, and how should ICANN hold future gatherings.

14 OCTOBER 2021

New decision analyses GDPR obligations in TTAB discovery proceedings

A recent decision from the Trademark Trial and Appeal Board on standard protective order modification demonstrates the fine line between data disclosure and data confidentiality, as well as how far the privacy provisions of the EU GDPR can apply to US proceedings.

07 OCTOBER 2021

Anticipation mounts as clock ticks down to release of Trademark Modernisation Act rules

With just a month to go before the final rules for the Trademark Modernisation Act are published, there is much industry focus on the new regime – including a panel discussion featuring big names from the USPTO.

30 SEPTEMBER 2021

Third Circuit vacates $10.6 million trademark infringement award

A recent opinion from the Third Circuit Court of Appeals shines a welcome spotlight on several standards to be applied by trial courts, including disgorgement of profits and laches defences in trademark infringement cases.

23 SEPTEMBER 2021

Texas social media bill may speed resolution of trademark complaints

A bill due to take effect in December could have a big impact on online trademark enforcement by introducing a 48-hour response time for complaints relating to content posted by users who reside in, do business in, or share or receive content on a social media platform in the state of Texas.

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