North America

INTA files amicus brief on product feature protection, warns of threat to array of registered marks

INTA has filed an amicus brief before the US Supreme Court in a case concerning the protection of product features as trademarks and the extent to which such protection is available based on the concept of functionality.

INTA files amicus brief on product feature protection, warns of threat to array of registered marks
“It’s ok to change your mind”: five features of an authentic brand
3 Aug 2021

“It’s ok to change your mind”: five features of an authentic brand

Eric Yaverbaum, CEO of Ericho Communications, explains how brands can stay true to themselves, even when their core values change.

Canada publishes harmful online content proposals as government looks to oversight of online environment
2 Aug 2021

Canada publishes harmful online content proposals as government looks to oversight of online environment

While not focused on IP infringement, this development is one to watch as it represents the latest in a series of moves by the government towards expanding oversight of the online world and intermediaries.

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2 Aug 2021

Ninth Circuit still signals shift in arbitration landscape for non-signatories

In a decision substantively the same as a now-withdrawn opinion entered in early 2021, the US Court of Appeals for the Ninth Circuit once again affirmed denial of a non-signatory’s motion to compel arbitration. Read more

30 Jul 2021

Success for Lindt & Sprüngli; USPTO celebrates Lanham Act anniversary; Philippines joins TMclass – news digest

In our latest round-up, we look at Scamadviser announcing a new member, Ebro Foods looking to offload more brands, the UK government setting out its innovation strategy, and much more. Read more

28 Jul 2021

Cannabis brand parodies, a new bad-faith standard and more: Legal Updates from the Americas you may have missed

WTR’s Legal Updates are written by a select panel of over 160 leading experts who analyse the latest trademark-related developments and decisions in more than 60 jurisdictions. Read more

27 Jul 2021

Facebook and Microsoft take IP diversity pledge; USPTO publishes new TMEP; Sony sells Crackle trademark – news digest

In our latest round-up, we look at counterfeit face masks being seized in Malaysia, Lorna Jane responding to a fine for covid-19-related advertising claims, and much more. Read more

Anti-Counterfeiting

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23 Jul 2021

Puma settles ‘Roar’ logo dispute; UKIPO warns about priority filings; ECTA creates SME task force – news digest

In our latest round-up, we look at Philadelphia customs officials seizing counterfeit auto parts, a US Senator introducing a resolution commemorating increased anti-counterfeiting efforts, and much more. Read more

20 Jul 2021

Tiffany & Co settles infringement dispute with Costco, ending eight-year battle

A court filing lodged yesterday confirms that the case has been voluntarily dismissed with prejudice. Read more

19 Jul 2021

Get insight into the future of trademark management and brand protection: new WTR events announced for Europe and the United States

WTR is pleased to announce that it will be hosting a series of one-day events in London, San Francisco, Chicago and New York this December. Read more

16 Jul 2021

Gmail offers authenticated brand logos; UKIPO launches bulk renewal service; L’Occitane wins in China – news digest

In our latest round-up, we look at INTA opening registrations for its Annual Meeting, Clarivate integrating its trademark solutions, Honduras joining TMclass, and much more. Read more

Brand management

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22 Jul 2021

Why design patents are such a potent weapon for US enforcement

The Long Read: Applications for US design patents have increased by 50% over the past decade. Debevoise & Plimpton’s Megan Bannigan, Justin Ferrone and Anna Rennich analyse why so many brand owners are taking this route to bypass trade dress obstacles. Read more

21 Jul 2021

The case for consumers: call for legal reform to provide standing to trademark stakeholders

A new study has found that the current Lanham Act “may not be a perfect fit to all sectors of the market”, especially in situations when a consumer’s reliance on a trademark may cause them reputational or financial harm. Read more

20 Jul 2021

Lil Nas X spoofs trademark dispute trial; ICANN72 goes virtual; Joe Exotic brand-building venture – news digest

In our latest round-up, we look at Cincinnati Customs seizing fake Apple AirPods, warnings over counterfeit cannabis, Ermenegildo Zegna Group going public, and much more. Read more

16 Jul 2021

Everything you need to know about Authentic Brands Group before its US listing

The company’s filings offer important insight into how it runs its lucrative licensing business. Read more

Enforcement and Litigation

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19 Jul 2021

Emoji Company tops 2021 US trademark litigation plaintiff list as small filings rebound predicted

Trademark litigation filings at US federal district court level remain set to exceed 2020’s number this year, according to the latest data from Lex Machina. Read more

16 Jul 2021

Budding cannabis entrepreneur learns the hard way that parody doesn’t play

The Federal Court of Canada has granted the Subway restaurant trademark owner a permanent injunction enjoining a cannabis dispensary from using the parody trademark BUDWAY. Read more

14 Jul 2021

Artificial intelligence could revolutionise understanding of trademark genericism, groundbreaking study claims

A new study has identified an artificial intelligence approach to establish whether a trademark is generic or distinctive, with the academic behind the research telling WTR why it could lead to invaluable business intelligence. Read more

13 Jul 2021

Cointreau sues cannabis company; Amazon TLDs go live; Malta joins IP Register in Blockchain – news digest

In our latest round-up, we look at Australia reflecting on a decade of plain packaging, Shamrock eyeing an entertainment IP move, Amul’s first foreign ruling leading to Canadian registration, and much more. Read more

Government/Policy

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23 Jul 2021

Scammed out of $150,000: allegations of fraud, threats and USPTO impersonation

A family in the US has revealed to WTR the trauma of losing $150,000 to a company based in Pakistan, with allegations of threats that have the couple fearing for their safety. Read more

9 Jul 2021

North Korea counterfeit crackdown; Banksy trademarks criticised; MARQUES annual meeting update – news digest

In our latest round-up, we look at a court ordering Lotus Health Group to sell trademarks, the Georgian IP office establishing a GI commission, Invest Europe and EUIPO teaming up to support SMEs, and much more. Read more

6 Jul 2021

“The potential impact is huge” – USPTO continues crackdown on fraudulent filings from China

Latest move is part of a crackdown on fraud at the agency, with one expert suggesting it could lead to US trademark applications from Chinese entities “falling significantly”. Read more

6 Jul 2021

Tokyo police step up Olympic counterfeit enforcement; Chinese fraud on the USPTO register; Ralph & Russo sold – news digest

In our latest round-up, we look at Verizon selling the Yahoo! brand in Japan, the IP Office of the Philippines calling on better policies to tackle counterfeiting, a counterfeit haul destroyed in Jamaica, and much more. Read more

Law Firms

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16 Jul 2021

Neuroscience and IP law: could data from fMRI scans revolutionise trademark litigation?

A groundbreaking study has combined advanced neuroscience tools with common trademark law questions and could reshape disputes invoking the reasonable person. Read more

14 Jul 2021

Three ways to create and maintain an effective D&I strategy, from Kirkland & Ellis

IP practice group partner and Diversity and Inclusion Committee co-chair Ellisen Shelton Turner reveals how Kirkland & Ellis ensures the professional development of all its employees, before offering his top tips for an effective diversity and inclusion strategy. Read more

7 Jul 2021

Diversity and inclusion: moving the needle together

Facebook's Mike Yaghmai and Dennis Wilson of Kilpatrick Townsend & Stockton, explain why and how the two organisations have partnered up to facilitate faster change towards diversity and inclusion in the legal sector. Read more

2 Jul 2021

Coca-Cola wins TTAB claim; adidas and Thom Browne clash; EUIPO breaks trademark application record – news digest

In our latest round-up, we look at the USPTO eliminating the handwritten signature requirement, the Finnish IP office revamping its trademark web pages, and much more. Read more

IP Offices

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8 Jul 2021

XYZ Registry shares brand protection insights following takedown of fake USPTO website

In an exclusive interview with WTR, the vice president of operations at XYZ, Jocelyn Hanc, shares information on how the registry is evolving its brand protection and anti-fraud operations. Read more

2 Jul 2021

Outreach to SMEs is translating into trademark filings, but there is still work to do

IP offices have prioritised small business engagement in recent years. While more SMEs are seeking trademark protection, data reveals that there are still a lot of new companies that are not benefitting from these rights. Read more

1 Jul 2021

“An unwanted milestone” – alarm as USPTO backlog approaches 1 million trademarks

The backlog of pending trademark applications at the USPTO has surpassed 900,000 for the first time, highlighting the monumental challenge facing the registry. Read more

30 Jun 2021

“A long time coming” – experts praise Canadian government’s creation of independent regulator for IP agents

The government of Canada launches the ‘College of Patent Agents and Trademark Agents’, with local experts calling it a "welcome development" - although there are concerns that it could “add to the cost of practising”. Read more

Online

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29 Jun 2021

One in five consumers would boycott brand after mistaken counterfeit purchase, report finds

A new report on counterfeiting in the beauty and personal care industry reveals some worrying statistics on consumer awareness of fake goods online, highlighting the dangers to both customer safety and brand reputation. Read more

17 Jun 2021

“Volume of activity does not equate to success”: IPSecure CEO expands on mission to redefine approach to online brand protection

This month, IPSecure, a pure software-as-a-service brand protection platform for brands, law firms and e-commerce managers, landed a multimillion-dollar initial funding round. Read more

11 Jun 2021

Crocs calls out Skechers; LegalZoom gears up for initial public offering; SurveyMonkey rebrands as Momentive – news digest

In our latest round-up, we look at INTA updating its anti-counterfeiting best practices, the American Apparel & Footwear Association joining a campaign against illegal trade, Amazon and HanesBrands teaming up, and much more. Read more

10 Jun 2021

Concern voiced as low-cost filer Trademark Terminal launches new platforms

Recently-launched low-cost trademark filing offerings ‘Trademark Kingdom’ and ‘Trademark Nations’ appear to be linked to controversial platform Trademark Terminal, WTR can reveal. Read more

Portfolio Management

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7 Jul 2021

Latest WTR report identifies top portfolio builders and presents thought leadership from in-house leaders

Titled “Inside in-house operations: how to build world-class trademark functions and portfolios”, the report takes a deep dive into portfolio, brand and in-house team management. Read more

7 Jul 2021

The US Trademark 50

The owners of the 50 largest US trademark portfolios collectively held 58,811 active assets in 2020. Together these entities filed 5,557 applications over the course of the year, down 4% from the previous year. Read more

25 Jun 2021

Globalisation is the goal for Chinese phone brands, but trademark data shows the US is still a fantasy

Huawei, Oppo and Xiaomi, just to name a few, have spent years investing in international expansion with their portfolios growing to match their scale. Read more

15 Jun 2021

“The lawful use requirement must go” – academic calls for USPTO to abolish policy

A groundbreaking new paper claims that the USPTO has “no mandate” to cancel or refuse trademark protection through its lawful use requirement, with the author calling for INTA to take up the cause. Read more

Trademark law

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5 Jul 2021

Why the US Trademark Modernisation Act is a game changer for IP protection

WTR’s Global Leaders discuss the myriad changes introduced by the US Trademark Modernisation Act and offer top tips for brand owners in the United States and elsewhere in the world. Read more

8 Jun 2021

Call for reform as trademark survey formats criticised for suppressing crucial information

A new study criticises widely-used methodology used on trademark survey evidence, claiming it is prone to showing only “weakly-held mistaken beliefs”, and suggests changes to “reveal the true extent of consumer uncertainty”. Read more

21 May 2021

Chilean Senate approves Madrid Protocol; UKIPO publishes new corporate plan; Anaqua acquires Actio IP – news digest

In our latest round-up, we look at Alt Legal partnering with Clarivate, a brand incubator landing $70 million in funding, the USPTO announcing new covid-19 pilots, and much more. Read more

18 May 2021

USPTO announces proposed new rules; Clubhouse trademark infringement suit; Atari sues Pixels – news digest

In our latest round-up, we look at Ralph Lauren agreeing to sell the Club Monaco brand, General Mills picking up the Tyson Foods pet food business, the ICANN board signing off on its finances and much more. Read more

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