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Elder Scrolls dispute resolved, new UGGs litigation launched, and Hogan Lovells tie-up: news digest

In our latest edition, we look at a strategic partnership between Hogan Lovells and Anaqua, Elder Scrolls settling its video game trademark dispute, Siegel+Gale announce their new head of strategy, and much more.

Elder Scrolls dispute resolved, new UGGs litigation launched, and Hogan Lovells tie-up: news digest
22 May 2019

“It’s going to make my life much better” – industry experts welcome SCOTUS licensing decision

The Supreme Court of the United States (SCOTUS) has ruled 8-1 in Mission Product Holdings v Tempnology LLC, with one legal expert telling WTR that the ruling helps to create a more stable trademark licensing market.

22 May 2019

“Consolidation is powerful” – no slowdown in takeovers expected in IP service providers sector

The non-legal trademark services industry has been the focus of increased investment and M&A activity in recent years. WTR spoke to a number of major players to ask whether they expected consolidation or collaboration to be the norm in future.

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21 May 2019

INTA 2021 speculation, blockchain TLDs, ‘.sucks' new approach, and brand protection the Amazon way: INTA 2019 day three report

We’re over the halfway mark of the INTA Annual Meeting and the WTR editorial team have been running between sessions, meetings and receptions to bring you the latest stories and insights. Read more

20 May 2019

INTA president lays down the gauntlet, puppy love, baffled by Brexit, and avoiding spoilers: INTA 2019 day two report

The Monday of the INTA Annual Meeting is often the busiest of the event. Trying to keep up with the rapid pace of activities, the WTR editorial team presents highlights from another jam-packed day. Read more

20 May 2019

Brand protection on TikTok: what rights holders need to know about the fast-growing social media platform

Chinese social network TikTok is growing rapidly, with over 1 billion downloads in the past 12 months. For rights holders, it is a platform that needs to be on the radar, with research from WTR finding issues that brand owners should be aware of. Read more

20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

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Anti-counterfeiting

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16 May 2019

Alibaba issues IP protection report; expands on future plans in exclusive interview

Alibaba has released its IP Protection Annual Report, revealing that it provided 1,624 IP-related leads to law enforcement in 2018. Speaking to WTR, Alibaba Group's Matthew Bassiur reveals some of the company's ambitious future brand protection plans. Read more

14 May 2019

Free-to-view global anti-counterfeiting guide now available

The 2019 edition of Anti-counterfeiting – A Global Guide, which provides trademark and brand protection professionals with critical guidance on anti-counterfeiting laws, procedures and strategies, is now available to view online. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United States

Grey market goods do not qualify as counterfeit; therefore, distributors and sellers of grey market goods are not subject to criminal penalties. However, rights holders may have other claims against such distributors and sellers based on other intellectual property or contract laws. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: Canada

Between 1 January 2015 and 31 December 2018 the Canada Border Services Agency (Customs) accepted 248 requests for assistance from rights holders, including 86 copyrights and 3,204 trademarks. Customs encountered 73 shipments and contacted 60 rights holders with filed requests for assistance.  Read more

Brand management

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18 May 2019

Meet the WTR team and pick up some freebies

The WTR team has arrived in Boston for this year’s Annual Meeting. If you are in town, then visit us in the exhibition hall at stands 918/920 to meet the crew and pick up some of our latest publications. Read more

17 May 2019

P&G’s new start-up mindset will reinforce its position in the market  

Direct-to-consumer brands have proved to be a problem for the American consumer goods behemoth Procter & Gamble, but a new customer-centric strategy combined with data resources could help the company regain lost ground. Read more

16 May 2019

It’s time for the INTA 2019 Annual Meeting: WTR's unofficial guide to Boston

The INTA Annual Meeting is about to kick off, and for delegates that are able to squeeze in some R&R time, we reached out to a cohort of Bostonian trademark experts to get their recommendations for what to do while in the city on a hill. Read more

16 May 2019

From Apple to Zwilling: the world’s leading corporate trademark professionals revealed

Released today, the third edition of the WTR 300: The World’s Leading Corporate Trademark Professionals identifies the individuals deemed to be the leading lights of the corporate trademark world.  Read more

Enforcement and litigation

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21 May 2019

INTA 2021 speculation, blockchain TLDs, ‘.sucks' new approach, and brand protection the Amazon way: INTA 2019 day three report

We’re over the halfway mark of the INTA Annual Meeting and the WTR editorial team have been running between sessions, meetings and receptions to bring you the latest stories and insights. Read more

20 May 2019

Brand protection on TikTok: what rights holders need to know about the fast-growing social media platform

Chinese social network TikTok is growing rapidly, with over 1 billion downloads in the past 12 months. For rights holders, it is a platform that needs to be on the radar, with research from WTR finding issues that brand owners should be aware of. Read more

20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

19 May 2019

What brands need to know about the trademark activity of Michael Gleissner

WTR has reported extensively on the massive trademark filing operation of multimillionaire businessman Michael Gleissner. For those not fully aware of this activity, we have put together an infographic that illustrates the potential impact for brands. Read more

Goverment/policy

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13 May 2019

“Time for our political leaders to get involved” – war of words escalates after UGG decision in favour of Deckers

A jury in the US has found that Australian Leather wilfully infringed a trademark registered to Deckers Outdoor Corporation. The defendant has vowed to appeal, with one member of its legal team calling on the Australian government to intervene. Read more

3 May 2019

“29 and counting” – Canada sets plain packaging date as dominoes continue to fall

The government of Canada has confirmed when new regulations for plain packaging on tobacco products will come into force, as the spread of plain packaging continues at an increasingly rapid pace. Read more

1 May 2019

Your partner in the field: maximising results from US Customs and Border Protection

From recordal to training, there are a number of steps that rights holders can take to enlist the help of US Customs and Border Protection in their anti-counterfeiting endeavours. Read more

19 Apr 2019

Trump riffs on Game of Thrones (again), INTA gives back, and rise of heritage brands: news digest

In our latest round-up, we look at how a slew of fake Amazon reviews are boosting brands, the Martha Stewart brand selling, KIPO assisting in IP crime enforcement, EU judges getting darknet training, and much more. Read more

Law firms

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1 May 2019

Welcome to your new-look WTR magazine

The latest issue of WTR magazine has gone live online today, and subscribers will note a major number of changes to the magazine and new types of content, all designed to maximise the value of their subscription. Read more

16 Apr 2019

Trump rebrand advice, INTA to offer free trademark legal services, and P&G sells two brands: news digest

In our latest round-up, we look at the USPTO unveiling details of its World IP Day event, the IP Office of the Philippines seeking to amend the country’s IP code, a ranking of most relevant brands, and much more. Read more

16 Apr 2019

US trademark litigation levels predicted to be stable through 2019

Data reveals that 863 trademark litigation actions were filed in the United States in the first quarter of 2019, up significantly year on year. However, that upward trajectory is not expected to continue. Read more

10 Apr 2019

Exclusive: new details emerge of proposed Trademarkia and LegalForce sale, as founder eyes exit

Trademarkia founder Raj Abhyanker has written to the shareholders of Trademarkia and LegalForce Inc to confirm his intention to exit from the entities and provide more detail on the prospective sale. Read more

IP offices

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10 May 2019

USPTO trials software to tackle fake specimens; downgrades growth expectations

USPTO director Andrei Iancu has expanded on efforts to tackle fake specimens of use on the US trademark register and the unauthorised practice of law, and provided an update on anticipated filings growth. Read more

8 May 2019

“Unprecedented” – USPTO suspends API access but pledges to work with IP service providers to mitigate impact

Earlier this week, the USPTO suspended its TSDR API following a spike in data scraping that has impeded the work of internal employees. However, IP technology vendors have confirmed it will impact some of their services. Read more

26 Apr 2019

World IP Day celebrated around the globe, Special 301 released, and IP Australia annual report: news digest

In our latest round-up, we look at planned IP improvements in Kuwait, research which finds consumers are quick to “dump brands”, LL Cool J prevailing in a trademark dispute, and much more. Read more

25 Apr 2019

Many trademark offices are still trying to grasp service brands: exclusive interview with American Airlines’ Donald Broadfield

Donald Broadfield, chief IP and data counsel at American Airlines, explains how he seeks to overcome the challenges of protecting the company’s service brands, and emphasises the importance of crafting contracts that prevent IP disputes with commercial partners. Read more

Online

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7 May 2019

‘.club’ TLD launches new trademark protection offering – with some major caveats

The registry operator of the ‘.club’ TLD has launched a service designed to offer qualified brands and trademark owners “comprehensive” protection in the namespace. However, there are significant caveats and restrictions. Read more

26 Apr 2019

Nike ticking all the right boxes, as activewear industry sees growth in new-age brands

The sportswear industry has expanded to include a growing consumer base of casual gym-goers, which has presented an opportunity for budding businesses as well as big name brands. Read more

24 Apr 2019

How to effectively measure return on investment in online brand protection – upcoming webinar

On Thursday 2 May, WTR will be hosting a free-to-access webinar focused on measuring the return on investment of online brand protection. Crucially, the exploration will highlight why traditional approaches may not resonate with the C-suite. Read more

19 Apr 2019

‘.inc’ TLD prepares for general availability with high price point, as details emerge of brand registrations

The ‘.inc’ new gTLD is currently in sunrise with a $2,499 annual retail price, a price point that may deter cybersquatters, but a number of large brands – including Apple, BMW, Google and Marriott – have moved to protect brand-related terms. Read more

Portfolio management

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17 May 2019

P&G’s new start-up mindset will reinforce its position in the market  

Direct-to-consumer brands have proved to be a problem for the American consumer goods behemoth Procter & Gamble, but a new customer-centric strategy combined with data resources could help the company regain lost ground. Read more

16 May 2019

Vested rights clause restores trademark to original applicant

In Sköld v Galderma Laboratories LP, the US Court of Appeals for the Third Circuit has addressed the issue of trademark ownership under since-terminated development and commercialisation agreements. Read more

1 May 2019

Considerations for smart soft IP due diligence from a litigator’s perspective

Many companies have learned the hard way that unidentified IP issues can cause serious trouble, whether immediately or even years after closing a transaction. A strategic approach to IP portfolio due diligence is thus critical to avoid future problems. Read more

26 Apr 2019

Nike ticking all the right boxes, as activewear industry sees growth in new-age brands

The sportswear industry has expanded to include a growing consumer base of casual gym-goers, which has presented an opportunity for budding businesses as well as big name brands. Read more

Trademark law

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17 May 2019

INTA Annual Meeting is a record-breaker, Brexit energy drink denied, and Florida Man trademark spat: news digest

In our latest round-up, we look at a new study that finds 25% of online purchases are for fakes, the EU General Court ruling on a NEYMAR mark, counterfeit containers seized in Malta, tips on making a brand matter, and much more. Read more

14 May 2019

Brexit Party versus Change UK, Hells Angels victory, and INTA Annual Meeting on the up: news digest

In our latest edition, we look at Guns ‘N’ Roses moving to protect a trademark, Indian farmers prevailing over PepsiCo in a potato legal battle, top Indian brands backing underdogs in Cricket World Cup, and much more. Read more

3 May 2019

“Just be respectful” – why brands must wise up to indigenous IP rights

WTR analyses how indigenous cultures are protecting their intellectual property and speaks with an expert on how trademark practitioners must be more aware of this burgeoning field of rights. Read more

1 May 2019

Can you trademark sounds, smells, colours, motions and flavours?

Trademarks are much more than a logo used to identify a brand. Non-traditional trademarks using sounds, colours and shapes have exploded onto the scene, bringing notoriety to many a business and brand. Read more

trending

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What brands need to know about the trademark activity of Michael Gleissner

2

Elder Scrolls dispute resolved, new UGGs litigation launched, and Hogan Lovells tie-up: news digest

3

Brand protection on TikTok: what rights holders need to know about the fast-growing social media platform

4

INTA president lays down the gauntlet, puppy love, baffled by Brexit, and avoiding spoilers: INTA 2019 day two report

5

Procedures and strategies for anti-counterfeiting: United States

latest

1

INTA 2021 speculation, blockchain TLDs, ‘.sucks' new approach, and brand protection the Amazon way: INTA 2019 day three report

2

INTA president lays down the gauntlet, puppy love, baffled by Brexit, and avoiding spoilers: INTA 2019 day two report

3

Brand protection on TikTok: what rights holders need to know about the fast-growing social media platform

4

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

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Nathalie Dreyfus
Managing Partner
Paris, France
Dreyfus & associés
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