North America

“Online platforms are benefiting from counterfeits”: Exclusive interview with American National Red Cross’ Allison Leader

As part of our ongoing series of interviews with WTR 300-featured corporate trademark counsel, we spoke to Allison Leader about the challenges she faces at American National Red Cross and what it takes to successfully manage brand rights in the not-for-profit sector.

“Online platforms are benefiting from counterfeits”: Exclusive interview with American National Red Cross’ Allison Leader
11 Nov 2018

Cannabis trademarks rocket, but how long will Canada lead the way? – exclusive data analysis

An analysis of Canadian trademark filings illustrates a sharp rise of applications in the cannabis sector; could that spike be replicated in the US in the future?

9 Nov 2018

Sweden to modernise trademark rules, new USPTO deputy director, and Benelux fee changes: news round-up

In our latest round-up, we look at a study showing the scale of illicit alcohol, a Counterfeit Mini ad being lauded, luxury brands' increasing use of sound design in their products, and much more.

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9 Nov 2018

Why Canada’s unexpected trademark reforms are good news for brand owners

Trademark reforms proposed by the Canadian government are positive for brand owners, with mechanisms to tackle trademark squatting and modernised dispute resolution proceedings. Read more

8 Nov 2018

TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use

The US Trademark Trial and Appeal Board has dismissed petitions for the cancellation of four NEW MAN marks for clothing, even though Newman only put the marks into use six years after acquiring them, and then only on a minimal basis. Read more

8 Nov 2018

Could CSR hold the key to encouraging senior management appreciation of the trademark function?

This week in New Orleans, INTA president Tish Berard suggested that engagement with corporate social responsibility (CSR) activities could hold the key to secure management buy-in into the trademark legal function. Read more

6 Nov 2018

US Navy donates trademark licensing money, Lego prevails, and Pinduoduo attracts brands: news round-up

In our latest round-up, we look at a fashion designer ‘naming and shaming’ buyers of counterfeits, Japan banning trademark registrations for era names, Georgia celebrating its 100,000th trademark application, and much more. Read more

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Anti-counterfeiting

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24 Oct 2018

“Counterfeiters have no compunction about hurting or killing people”: exclusive interview with Gilead’s Gretchen Stroud

WTR spoke to Gilead's Gretchen Stroud about the fight against fake drugs being sold on social media, the trademark challenges that arise when drugs go off-patent, and much more. Read more

4 Oct 2018

Alibaba points to anti-counterfeiting success as USTR prepares new notorious markets list

As the Office of the US Trade Representative looks towards its upcoming notorious markets list, Alibaba releases new statistics detailing brand protection practices and results on its platforms. Read more

3 Oct 2018

“Very good for brand owners” – IP experts react to USMCA; INTA lauds deal as “major enhancement” over NAFTA

Following the announcement of a new major trade agreement between Canada, Mexico and the United States, we reached out to IP experts to explore their views on the IP aspects of the new deal.  Read more

3 Oct 2018

Amazon responds after AAFA demands three of its country platforms be named as notorious markets

The American Apparel & Footwear Association has taken aim at Amazon in its submission to the USTR’s Notorious Markets List. In response, Amazon tells WTR it is investing “tremendous resources” into the fight against fakes. Read more

Brand management

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29 Oct 2018

Amazon TLD moves forward but work remains before ‘.amazon’ becomes a reality

The ICANN board has decided that Amazon’s application for the ‘.amazon’ TLD should be moved from the ‘will not proceed’ designation, paving the way for future delegation of a string that has been in limbo for five years.  Read more

11 Oct 2018

Chief Wahoo has left the stadium but the logo lives on – for legal, not commercial, reasons

The Cleveland Indians’ playoff exit this week also marked the final on-field use of its contentious Chief Wahoo logo. But the team remains under fire over the availability of merchandise bearing the mark. Read more

2 Oct 2018

Attack on the senses: a comparison of non-traditional marks

Practitioners need to be aware of the differences between obtaining protection for smell, taste and texture marks in the European Union and the United States. Read more

1 Oct 2018

Moving and shaking: securing protection for shapes and movement marks

With non-traditional trademark registrations on the rise, a nuanced understanding of the differences between obtaining protection in the European Union and the United States is crucial. Read more

Enforcement and litigation

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5 Nov 2018

What trademark owners can learn from the Federal Circuit’s Converse decision

We look at the key takeaways from the decision by the US Court of Appeals for the Federal Circuit to throw out the 2016 ITC ruling that Converse’s Chuck Taylor trade dress rights are invalid.  Read more

5 Nov 2018

 "Close call" involving recurrent online sales triggers minimum contacts, specific jurisdiction

The US Court of Appeals for the First Circuit has confirmed that a foreign company subjected itself to specific personal jurisdiction in a trademark dispute where that company had sizeable continued online sales to US customers. Read more

29 Oct 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. Read more

29 Oct 2018

Federal Court: official marks not an absolute defence to infringement in Canada

In Quality Program Services Inc v Canada, the Federal Court of Canada has held that official marks do not insulate their holders from claims by third parties.   Read more

Goverment/policy

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4 Nov 2018

A lawsuit is coming? – HBO nails PR response in trademark spat with Trump

After US President Donald Trump caused a stir on Twitter with a Game of Thrones reference, HBO's response was pitch-perfect in terms of avoiding controversy while deftly reminding people not to misuse its trademarks. Read more

16 Oct 2018

How Canada’s new cannabis regime will impact a range of brands and law firms

With Canada set to legalise recreational cannabis, our latest opinion column looks at why trademark counsel should watch this development closely. Read more

10 Oct 2018

USMCA “breaks new ground” in geographical indications policy, contends GI consortium

The Consortium for Common Food Names has praised the new USMCA trade deal, claiming it “marks a sea change” in GI policy. In a strongly-worded statement, it also hits out at the EU for “monopolising common names and terms”. Read more

19 Sep 2018

Creative trademark strategies are essential for brands venturing into newly-legalised US marijuana markets

Both Coca-Cola and musician Jimmy Buffett have been linked with marijuana brand partnerships over the past week. Such deals pose significant trademark difficulties, but there may be workaround strategies available.  Read more

Law firms

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17 Sep 2018

Trademark litigation remains flat in 2018 as Central District of California continues to be ‘go-to’ venue

Lex Machina has reported that 2,745 trademark litigation cases have been filed in the US so far this year. Therefore, the projected total for year-end  indicates that filings will remain flat after a near-decade of decline. Read more

7 Sep 2018

Wine Spectator versus Weed Spectator, Trump slams Nike, and an ode to trademark attorneys: news round-up

In our latest round-up, we look at trade associations calling for more clarify over rules of origin, CEO of a US cheese company slamming the EU’s GI regime, how Nike’s new ad campaign may have damaged the brand, and much more. Read more

20 Aug 2018

Call for USPTO to “pound its fist more loudly” in efforts to tackle trademark solicitation scams

The USPTO has been urged to form an inter-organisational task force to foster greater cooperation in tackling the problem of trademark solicitation scams – an issue that has been a scourge on the industry for years. Read more

17 Aug 2018

$500 million counterfeit bust, David Beckham leaked logo typo, and another creative cease and desist: news round-up

In our latest round-up, we look at rising trademark applications in Cambodia, how thousands are boycotting brands on Twitter, and much more. Read more

IP offices

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9 Oct 2018

Victory for Chanel, Samoa moves closer to Madrid, and how Google+ shutdown could affect brand owners: news round-up

In our latest round-up, we look at the EUIPO celebrating design rights, MaxxOil hitting back against “baseless” media reports, the Saudi IP office pledging more international cooperation, and much more. Read more

25 Sep 2018

USPTO director talks trademark clutter, Uber declares itself a verb, and beware sketchy Chinese licences: news round-up

In our latest round-up, we look at Ecuador joining TMClass, ICANN postponing its data privacy webinar, IP Australia undergoing a “technology upgrade”, and much more. Read more

18 Sep 2018

Most relevant brands in China, OAPI hosts IP celebration, and Trademark Licensing Protection Act in the spotlight: news round-up

In our latest round-up, we look at the IP office of Chile extending deadlines for Japanese applicants, the WHOIS reform group at loggerheads, Indonesia stepping up anti-piracy efforts, and much more. Read more

12 Sep 2018

Trademark procedures and strategies: Canada

Unregistered trademarks do not have statutory protection in Canada. The owner of an unregistered mark may enforce its rights, but this necessitates the establishment of a reputation through extensive use of the mark in Canada. Read more

Online

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31 Oct 2018

Settlement privilege and domain name arbitrations: the case of ‘potterybarnbaby.ca’

A recent decision under Canada’s Domain Name Dispute Resolution Policy shows that deeming correspondence “without prejudice” may impact a complainant’s ability to prove the registrant’s bad faith and could ultimately decide the outcome of the dispute. Read more

23 Oct 2018

Events focused on online brand protection and cost-effective portfolio management set for Chicago

WTR is pleased to announce the new events Brand Protection Online: Strategies for Ethical Enforcement and Managing Trademark Assets USA will take place in Chicago in March 2019.  Read more

18 Oct 2018

Can anonymous internet comments be used as evidence in trademark litigation?

While the role of anonymous confusion is still somewhat muddied by inconsistent approaches, parties should be prepared to handle concerns as to relevance, hearsay and authentication. Read more

5 Oct 2018

Seven "dirty words" now acceptable in ‘.us’

The registry operator of the ‘.us’ domain name and the National Telecommunications and Information Administration have lifted a prohibition on the so-called "seven dirty words" in '.us' domain name registrations. Read more

Portfolio management

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1 Nov 2018

DETROIT ATHLETIC CO.: not even a sporting chance for registration

The US Court of Appeals for the Federal Circuit has affirmed a TTAB decision sustaining the refusal to register the mark DETROIT ATHLETIC CO. based on a likelihood of confusion with the earlier mark DETROIT ATHLETIC CLUB. Read more

12 Oct 2018

No Yin and Yang here: only one may experience TAI CHI for tea

In Tai Chi Green Tea Inc v Diamond Hong, the US Federal Circuit has affirmed a TTAB decision to cancel a registration after the TTAB refused to consider the registrant’s reply brief and the evidence included in the main brief.    Read more

11 Oct 2018

Chief Wahoo has left the stadium but the logo lives on – for legal, not commercial, reasons

The Cleveland Indians’ playoff exit this week also marked the final on-field use of its contentious Chief Wahoo logo. But the team remains under fire over the availability of merchandise bearing the mark. Read more

2 Oct 2018

Attack on the senses: a comparison of non-traditional marks

Practitioners need to be aware of the differences between obtaining protection for smell, taste and texture marks in the European Union and the United States. Read more

Trademark law

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5 Nov 2018

What trademark owners can learn from the Federal Circuit’s Converse decision

We look at the key takeaways from the decision by the US Court of Appeals for the Federal Circuit to throw out the 2016 ITC ruling that Converse’s Chuck Taylor trade dress rights are invalid.  Read more

29 Oct 2018

Our privilege to serve – thoughts on Canada’s law of privilege

Privilege protects certain information and communication from disclosure. In-house counsel – as legal and business advisers to a company – must understand the limitations of privilege and how best to create and maintain it. Read more

29 Oct 2018

Choose your weapon: litigating trademarks US-style

While there is an arsenal of tools with which a rights holder can address infringement, each requires careful consideration. The initial choice of remedy is a good place to start. Read more

23 Oct 2018

GI face-off – debating current geographical indication protections

We bring together two organisations with different perspectives on geographical indications to discuss the best route forward for this unique form of protection. Read more