North America

Adultblocks, benchmarking, and second round of gTLDs: brand protection learnings from Foresight 2020

Last week, a seminar was hosted at INTA’s headquarters in New York titled Foresight 2020: State of the Union in the Domain Name Industry. We present takeaways from the event in this exclusive guest post.

Adultblocks, benchmarking, and second round of gTLDs: brand protection learnings from Foresight 2020
13 Sep 2019

Extinction Rebellion trademark, Egypt fee rise, and Crocs Gloves in art gallery: news digest

In our latest edition, we look at Māori uproar over a New Zealand trademark application, WIPO in Hungary, MARQUES addressing long goods and services lists at the EUIPO, and much more.

12 Sep 2019

Small but mighty: how Zippo prioritises its trademark enforcement efforts 

WTR sat down with Beth Seals, general counsel at Zippo, to get the inside track on how her team ensures that the company’s products have real-world legal protections – and how these are brandished to fend off infringers.

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18 Sep 2019

Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications

The USPTO has refused New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25, finding that the mark was “uniquely and unmistakably” associated with former New York Mets pitcher Tom Seaver. Read more

17 Sep 2019

Strategies and pitfalls with fees under Canada’s new trademark regime

On 17 June 2019 significant amendments were introduced to the Trademarks Act with a view to bringing Canada’s trademark regime into line with the Nice Agreement, among others. This update provides some fee-based strategies to use under the amended act. Read more

12 Sep 2019

WTR Industry Awards 2020 nomination window now open

WTR is now seeking nominations for the WTR Industry Awards 2020 and next edition of WTR 300: The World’s Leading Corporate Trademark Professionals. Nominate now to recognise the leading in-house professionals. Read more

11 Sep 2019

Rethinking law firm operations: Stephen Coates on why he left Amazon to build an IP boutique 

With almost a decade of experience in-house, Stephen Coates has left Amazon to start his own boutique IP practice. He spoke to WTR on how to pull off such a move and how he is seeking to rewrite the law firm rulebook. Read more

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Anti-counterfeiting

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3 Sep 2019

Earthbound Beer cease and desist response goes viral, LeBron taco mark, and IP litigation spending: news digest 

In our latest round-up, we look at the Cayman Islands IP Office working with the US government, a UN ambassador calling for an IP law review in Nigeria, a Hong Kong counterfeit ring bust, and much more. Read more

30 Aug 2019

Liverpool mayor trademark opposition, USPTO fee change proposal, and Telltale revival criticised: news digest

In our latest round-up, we look at Beyoncé being accused of fraud linked to a trademark dispute, Bangladesh likely to join the Madrid Protocol, a Chinese IP law firm considering a sale, and much more. Read more

29 Aug 2019

Enforcing in style: top tips for protecting your brand at New York Fashion Week 

The world’s most iconic fashion designers and models will be flocking to New York Fashion Week next week. However, with the products more present on social media than ever, counterfeiters will also be keeping a close an eye on the hottest trends. Read more

27 Aug 2019

Kardashian replaces Kimono with Skims, Vietnam adopts IP strategy, and influencer fraud: news digest

In our latest round-up, we look at the rise in counterfeit vaping products, the US Department of Defence launching an IP protection team, WIPO announcing a new portal, and much more. Read more

Brand management

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28 Aug 2019

How media fallout might play a part in Disney’s future Spider-Man licensing negotiations

Disney has walked away from negotiations with Sony over the IP rights to the Spider-Man franchise. Does this mark a divergence in the big studio IP acquisition model or will Disney utilise fan kickback as leverage in future negotiations? Read more

16 Aug 2019

Just Eat and Takeaway.com tie-up to take on Uber Eats as brands seek market dominance

The online food delivery services industry is heating up. Major players are snapping up smaller brands and merging to solidify market presence and expand into new regions, as our exclusive data analysis reveals. Read more

16 Aug 2019

Wrestling with a heavyweight portfolio: exclusive interview with WWE’s IP counsel 

At the helm of WWE’s IP department reign two central figures: Lauren Dienes-Middlen and Matthew Winterroth. WTR asked them to reveal the secrets of their success.  Read more

8 Aug 2019

Branding lessons from Barbie: interview with professor of law Dan Hunter 

Mattel has wielded intellectual property to protect Barbie since her creation in 1959, building one of the most identifiable brands of the 20th century. Professor Dan Hunter notes that there are practical lessons to be learned from Mattel’s innovative enforcement strategies. Read more

Enforcement and litigation

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18 Sep 2019

Roughing the applicant: USPTO refuses Tom Brady’s TOM TERRIFIC trademark applications

The USPTO has refused New England Patriots quarterback Tom Brady’s applications for TOM TERRIFIC in Classes 16 and 25, finding that the mark was “uniquely and unmistakably” associated with former New York Mets pitcher Tom Seaver. Read more

5 Sep 2019

Rhyme as the reason: Seventh Circuit’s decision in SportFuel Inc v PepsiCo Inc

In SportFuel Inc v PepsiCo Inc, the US Court of Appeals for the Seventh Circuit has upheld a summary judgment decision for the defendants based on fair use of a descriptive expression, despite the plaintiff’s trademark registrations of the same expression. Read more

2 Sep 2019

“Dig deep” – branding expert reveals challenges of finding new brand names in a crowded trademark market

The chief executive of branding firm Eat My Words, Alexandra Watkins, talks to WTR about the challenges that companies face when identifying new brand names in a world where millions of new trademark applications are filed annually. Read more

30 Aug 2019

Crimson wave – how Harvard outstrips other universities in terms of registered trademarks

Ivy League schools rely on their reputation to attract top-notch talent, so policing these brands is a critical undertaking. Read more

Goverment/policy

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9 Sep 2019

No safe bets – what the potential Philip Morris-Altria merger tells us about the tobacco industry

Major players are pulling out all the stops to diversify their portfolios, expanding geographically as well as investing in and buying up other businesses. However, no matter how you look at it, there are significant challenges ahead. Read more

20 Aug 2019

Tackling a $1.4 billion counterfeit problem: inside the CBP’s seizure numbers

As the value of counterfeit good seizures by the US authorities rises, a new call is made for private industry to work with domestic and international partner agencies in a bid to tackle demand as well as supply. Read more

2 Aug 2019

Chinese law firm seeks to buy US trademarks: inside the market for ‘idle’ registrations

Over the past week, law firms across the US have been contacted by an IP agency based in China asking if they have registered trademarks to sell. Talking exclusively to WTR, a representative for this agency explains the inner workings of this market for marks. Read more

1 Aug 2019

“Never seen anything like this” – USPTO experiences massive surge in trademark applications from China

The USPTO experienced a huge rise in trademark applications last week, with a large proportion coming from applicants in China. WTR talks with IP experts and the USPTO about how this unprecedented activity could affect all applicants. Read more

Law firms

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15 Aug 2019

Six ways to evolve your practice to meet client demands: insights from the law firm elite

We explore how changing client demands are shaping the modern law firm practice – and present insight into how to future-proof operations. Read more

1 Aug 2019

Mind the gap – why law firms must bridge the gender divide

The legal sector is traditionally a male-dominated industry and although that is changing, more work needs to be done to combat inequality. Read more

1 Aug 2019

Best practice in litigation strategies: global perspectives

Trademark experts from around the world offer practical guidance on how to maximise the chances of litigation success in their jurisdiction. Read more

30 Jul 2019

Why the legal profession should encourage diversity and inclusion

Embracing diversity and nurturing inclusion is not only the right thing to do, it is good business. Yet the legal profession has been slow to change and capture the opportunity. Read more

IP offices

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20 Aug 2019

North Korea establishes IP institute, Amazon intangibles tax win, and Brazil fee request: news digest

In our latest round-up, we look at retail companies leading a ‘brand health’ survey, the Belarus IP office correcting a mistake, the New York Times delving into the world of counterfeit books, and much more. Read more

9 Aug 2019

USPTO warns of ‘bad actors’ as filing levels return to normal

Filing levels at the USPTO have returned to ‘normal’ following weeks of unprecedented activity. However, challenges remain, with a new warning sent to users over so-called ‘bad actors’ targeting the US trademark system. Read more

8 Aug 2019

“Great news for the IP community” – US government authorises trademark protection in Venezuela

A General Licence has been issued by the US government that explicitly authorises the protection of all intellectual property in Venezuela. The move follows significant challenges for US companies seeking to protect their brands in the country. Read more

6 Aug 2019

USPTO seeks commissioner for trademarks, Bud Light launches fashion line, and Suzuki victory: news digest

In our latest round-up, we look at an anti-counterfeiting ‘tongue’ tool to identify fake whisky, the IP Office of the Philippines calls for speedier IP case resolutions, a US pastor arrested for counterfeits in church, and much more. Read more

Online

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19 Aug 2019

The Trademark Company is back: founder questions law firm filing model as hiatus ends

The Trademark Company has relaunched as a legal services provider. In an exclusive interview, founder Matthew H Swyers explains the new business model and why traditional law firms shouldn't be concerned. Read more

7 Aug 2019

Despite backlash, Ferrari may benefit from its spat with designer Philipp Plein

This week, a dispute between Philipp Plein and Ferrari went public after the German fashion designer posted a cease and desist letter on social media. While online criticism has ensued, this could be to the advantage of the Italian company. Read more

1 Aug 2019

How FaceApp’s terms of use could open risk of infringement that you can’t fight

A media storm has circled around Russian-owned FaceApp over fears that personal data is being sold for potentially nefarious purposes. We speak with an expert about the legal issues that rights holders should be aware of. Read more

29 Jul 2019

Practical strategies for managing luxury brands

A group of senior trademark and brand professionals recently convened in New York to discuss strategies for protecting, enforcing and monetising fashion and luxury brands. This special report details some of the key points and presents essential takeaways. Read more

Portfolio management

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28 Aug 2019

How media fallout might play a part in Disney’s future Spider-Man licensing negotiations

Disney has walked away from negotiations with Sony over the IP rights to the Spider-Man franchise. Does this mark a divergence in the big studio IP acquisition model or will Disney utilise fan kickback as leverage in future negotiations? Read more

19 Aug 2019

The Trademark Company is back: founder questions law firm filing model as hiatus ends

The Trademark Company has relaunched as a legal services provider. In an exclusive interview, founder Matthew H Swyers explains the new business model and why traditional law firms shouldn't be concerned. Read more

16 Aug 2019

Fifty years later, Woodstock festival gains right to sell WOODSTOCK-branded marijuana 

Woodstock Ventures, the owner of the Woodstock music festival, has won the right to use the mark WOODSTOCK to sell cannabis products in commemoration of the 50th anniversary of the famous music festival. Read more

16 Aug 2019

Wrestling with a heavyweight portfolio: exclusive interview with WWE’s IP counsel 

At the helm of WWE’s IP department reign two central figures: Lauren Dienes-Middlen and Matthew Winterroth. WTR asked them to reveal the secrets of their success.  Read more

Trademark law

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6 Sep 2019

Exclusive: USPTO releases revised examination guide following backlash

The USPTO has released a heavily revised examination guide that clarifies the registry’s new US attorney rule. The revision follows backlash due to examination instructions that required some applicants to submit proof of legal residence in the United States. Read more

28 Aug 2019

“Shaky legal ground” – the unintended consequences of USPTO requests for proof of legal residence

A new investigation has found that the USPTO is "facing a backlash" due to new instructions that require examining attorneys to ask some trademark applicants for “proof of legal residence in the United States”. Read more

23 Aug 2019

World’s largest trademark application, IPOS launches app, and Notorious Markets List comments open: news digest

In our latest round-up, we look at the art of avoiding brand hate, Hasbro acquiring Peppa Pig owner, the INTA holding its first roundtable event in Israel, and much more. Read more

2 Aug 2019

Brexit warning for trademark lawyers, Yeezy Busta interview, and UK IP minister uncertainty: news digest

In our latest round-up, we look at a win for adidas, the TTAB stubbing out federal marijuana trademarks again, a YouTube star attempting to sell fake goods as genuine, and much more. Read more

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