North America

Trump’s Patriot Party: prior trademarks could be “significant hurdle” to new political venture

Former US president Donald Trump is reportedly considering a launch of a new political venture called the ‘Patriot Party’. However, trademark registrations at the USPTO could prove to be a stumbling block for Trump’s purported plans.

Trump’s Patriot Party: prior trademarks could be “significant hurdle” to new political venture
IACC urges Biden administration to hit the ground running on intellectual property
20 Jan 2021

IACC urges Biden administration to hit the ground running on intellectual property

The IACC expects the Biden administration to take an ‘evolution’ not ‘revolution’ approach towards IP policy and urges it to build on efforts to fight fakes.

As Trump administration ends, trademark experts reflect on the highs and lows
20 Jan 2021

As Trump administration ends, trademark experts reflect on the highs and lows

Today officially marks the end of the presidency of Donald J Trump. After an unprecedented four years, WTR looks back at the brand-related positives and negatives of his time in office.

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20 Jan 2021

Iancu bids farewell to USPTO; trademark experts provide wishlist for successor

Andrei Iancu, director of the USPTO, has said farewell to the office, confirming that his tenure is coming to an end alongside the Trump administration. Read more

19 Jan 2021

This mash-up is not a place you’ll go: Seuss copyright will ‘live long and prosper’

In a case involving a Dr Seuss and Star Trek mash-up, the US Court of Appeals for the Ninth Circuit considered claims of both copyright and trademark infringement. Read more

15 Jan 2021

How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate

GEN Law Firm partner Steve Zhao and associate Pei Lyu reveal the intricacies of the arguments that made them successful in the Shanghai court. Read more

15 Jan 2021

Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads

Trademark data shows peculiarities in the mega filers’ activity, particularly within Jonathan Morton’s portfolio. Read more

Anti-Counterfeiting

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15 Jan 2021

Hendrix family trademark dispute; ICANN 70 confirmed; Australian company changes ‘racist’ branding – news digest

In our latest round-up, we look at the NCAA pausing a vote on athlete name, image and likeness rules, the US IP Alliance launching with the aim of raising IP awareness, Authentic Vision and ATQ Germany teaming up, and much more. Read more

15 Jan 2021

Notorious Markets List 2020: USTR resists call to include US platforms as Alibaba and Amazon remain

The Office of the US Trade Representative has released the findings of its 2020 Review of Notorious Markets for Counterfeiting and Piracy. Read more

13 Jan 2021

Tracking fakes: revealing the most popular regions for buyers of counterfeit goods

New research from WTR reveals where people searching for counterfeit goods are residing, uncovering a significant difference between brands. Read more

12 Jan 2021

Elon Musk brand confusion; Burger King rebrand; Subway to expand licensing footprint – news digest

In our latest round-up, we look at Unilever offloading the Bertolli business, thousands of counterfeit designer masks seized in Kentucky, South Korea adopting a Vegan certification mark, and much more. Read more

Brand management

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8 Jan 2021

Proud Boys™ – far-right group's trademark could face cancellation, legal experts claim

Talking to WTR, the owner of the Proud Boys registered trademark (and former member of the group) reveals how the rights have been used to protect the organisation and stop unauthorised merchandise. Read more

8 Jan 2021

LVMH completes Tiffany acquisition; AWS blow for Amazon; new USPTO deputy trademarks commissioner – news digest

In our latest round-up, we look at E & J Gallo Winery acquiring over 30 brands from Constellation, Taste Beauty being picked up by Centric Brands,  IPEC's new annual IP report, and much more. Read more

6 Jan 2021

“I used to call myself Cinderella”: INTA’s first African-American officer reflects on her personal journey and diversity in the trademark profession

In November last year, Deborah Hampton made history when she was elected to be the first African-American officer at INTA. She sits down with WTR to discuss her journey and the state of diversity in the industry. Read more

6 Jan 2021

Trademark committee created to help USPTO combat fraudulent applications without burdening domestic filers

A new committee has been formed to come up with new procedures to tackle spurious trademark applications at the USPTO following the implementation of the Trademark Modernisation Act of 2020. Read more

Enforcement and Litigation

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13 Jan 2021

US Supreme Court denies certiorari to parody case, leaving Ninth Circuit open to forum shopping, expert says

Trademark experts say that the move has left the Ninth Circuit as the “go-to circuit for declaratory actions for non-infringement”. Read more

13 Jan 2021

Fifth Circuit: no preliminary injunction in boozy beverage trademark fight

With a booming market for hard seltzers and ready-to-drink cocktails, disputes over brand names have inevitably followed. Here, Future Proof Brands requested a preliminary injunction against Molson Coors’ entry into that market. Read more

7 Jan 2021

US trademark litigation levels slump in 2020: most active law firms revealed

This time last year, we reported that trademark litigation filings in federal district courts had hit a four-year high, outpacing patent cases for the second straight year. However, 2020 was very different. Read more

5 Jan 2021

Suggestion of applying contributory liability for counterfeit sales to e-commerce platforms proves divisive

Submissions to the USPTO on the possible application of contributory and/or vicarious trademark infringement liability to e-commerce platforms have revealed a clear division between the positions of e-commerce companies and rights holders. Read more

Government/Policy

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14 Jan 2021

USPTO highlights role of government subsidies and mandates in growing tide of trademarks from China

USPTO publishes scathing report into the influx of trademark applications from China, claiming that many “lack value and clutter the trademark register”. Read more

11 Jan 2021

Brand associations provide a blueprint for educating consumers on counterfeits and piracy

A number of brand associations have highlighted the need for social media companies and online platforms to step up anti-counterfeiting messaging in efforts to educate US consumers. Read more

9 Jan 2021

Revealed: Andrei Iancu's email to USPTO staff on the day the US Capitol was stormed

“I am heartbroken to see this affront to our constitutional electoral process”, the USPTO director wrote to staff in an email seen by WTR. Read more

4 Jan 2021

New year, same wait for WHOIS data access clarity as governments look to exert pressure

While efforts to develop a global access system for WHOIS data continue, recent developments in the United States and the European Union suggest that governments are willing to require more of registries and registrars. Read more

Law Firms

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4 Jan 2021

Decoding the nuances of ethical trademark practice before the USPTO

A worrying number of trademark attorneys remain unaware of the USPTO’s Office of Enrolment and Discipline, let alone that they are subject to its rules – and could face disciplinary action for violating them. But whether the trademark bar knows it or not, the office is always present. Read more

15 Dec 2020

Trademarks during covid: insights from Christina L Martini at McDermott Will & Emery

WTR presents exclusive insights on how the events of 2020 shaped the trademark practice of Christina L Martini, partner at McDermott Will & Emery. Read more

15 Dec 2020

Trump weighs in on rebrand; Reddit acquires Dubsmash; USPTO director talks designs – news digest

In our latest round-up, we look at the IPR Center recognising Alibaba’s IP efforts, a battle for the Arcadia and Debenhams brands, brand enforcement lessons from a fake Dr Fauci, and much more. Read more

14 Dec 2020

Who are the innovators of the trademark industry? Nominate and have your say

WTR is seeking nominations to recognise the innovators in the trademark industry as part of a new project – and it will only take a couple of minutes to do so. Read more

IP Offices

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5 Jan 2021

Picking up the pace? Covid-19 exceptions to expedite trademark applications in Canada

In response to the covid-19 pandemic, the Canadian Trademarks Office is now accepting requests to expedite examination of trademark applications that cover goods or services relating to the prevention, diagnosis, treatment or cure of covid-19. Read more

4 Jan 2021

The secret lives of trademark examiners: insights into five IP offices

Hard-working representatives from registries in Canada, France, Singapore, the United Kingdom and the United States reveal what makes them tick and how to guarantee a successful trademark application in their jurisdiction. Read more

4 Jan 2021

Data reveals USPTO challenges are more widespread than the issue of digitally altered specimens

The United States has experienced another record-breaking year in terms of trademark filings, in part due to a flurry of applications from Chinese-based businesses. But this is both good and bad news for rights holders. Read more

4 Jan 2021

Weathering the pandemic and protecting the register: 2020 at the USPTO

The past year has been, in the words of trademarks commissioner David Gooder, a “bumpy ride” as the USPTO managed its way through the pandemic. Here, he explains how the office has adapted to change and provides an update on key areas of focus and achievements over the past 12 months. Read more

Online

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12 Dec 2020

Social media and the right of publicity: what advertisers need to know

With no US federal right of publicity and the distinction between celebrities and non-celebrities becoming increasingly arbitrary, companies looking to advertise their products through the likenesses of individuals must be up to date with the latest case law in order to get a clear picture of the risks involved. Read more

11 Dec 2020

Chinese IP agency fined for fraud; USPTO appoints new policy chief; Brainbase CEO lauded – news digest

In our latest round-up, we look at Authentic Brands Group acquiring a stake in an event producer, authorities seizing a shipment of counterfeit 3M surgical masks, brands being urged to ‘inspire’, and much more. Read more

9 Dec 2020

Innovative INTA Girl Scouts campaign demonstrates creativity needed to promote trademarks to young people

INTA has announced an ambitious partnership with the Girl Scouts of Greater Los Angeles to promote the importance and value of trademarks and the dangers of counterfeit goods. Read more

8 Dec 2020

Moncler acquires Stone Island brand; Amazon counterfeits lawsuit; WIPO trademark growth – news digest

In our latest round-up, we look at Fiji’s new trademark law, new TPAC members, Daily Harvest adding more IP infringement accusations to its Revive lawsuit, and much more. Read more

Portfolio Management

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28 Dec 2020

How the Verizon team protects the foundations of its branded house

WTR gets the inside track on how Verizon’s trademark department, named Internet and Telecommunications Team of the Year at the 2020 WTR Industry Awards, approaches brand management in the face of opportunists and a rapidly evolving field. Read more

23 Dec 2020

Business integration is at the heart of Discovery’s IP successes

David Modzeleski, senior vice president, intellectual property and litigation and chief global IP and trademark counsel at Discovery, discusses how WTR’s North America Team of the Year prioritises a seat at the table to justify an aggressive trademark strategy. Read more

14 Dec 2020

‘Icy’ guidance on Polaroid factors: Second Circuit notes lack of direction regarding how much weight to give each factor

Although there is a lack of guidance as to how much weight to accord each of the eight Polaroid factors, this decision of the US Court of Appeals for the Second Circuit demonstrates that two of the factors can be especially persuasive. Read more

9 Dec 2020

Dealing with cut budgets and fighting fakes during a pandemic: interview with Starbucks’ Batur Oktay

WTR sits down with Batur Oktay to explore how he led the Starbucks IP team through the many challenges created by covid-19 this year. Read more

Trademark law

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27 Nov 2020

Fighting fraudulent filings is the USPTO’s priority: an ex-examiner’s perspective

A former USPTO examiner suggests that the examining criteria for specimens has now become too stringent and is potentially harming smaller businesses. Read more

10 Nov 2020

Supreme brand sold; Oatly trademark rejected; Panasonic launches anti-counterfeiting campaign – news digest

In our latest round-up, we look at Saturday Night Live riffing on the retirement of brand mascots, the American Retirement Association prevailing in an acronym dispute, and much more. Read more

5 Nov 2020

Four new states legalise recreational cannabis: what it means for brands

US election changes to cannabis and hard drug laws alter the legal landscape, but questions remain as to how they open up the trademark market. Read more

3 Nov 2020

Four years of trademarks under Trump: political appointments, conflict and policy

While trademark policy is not a subject that will necessarily sway voting decisions in the US election, the past four years under President Trump have been notable for the way that brands have been catapulted onto the front pages and into the public consciousness. Read more

Find an expert

Laura Collada
Managing Partner
Mexico City, Mexico
Dumont