North America

Emma Raducanu trademark misreporting; new INTA resolution; Oreo and Pokémon team up – news digest

In our latest round-up, we look at US Customs unveiling a dedicated centralised inspection facility in Los Angeles, the Kroger Co joining Buy Safe America, and much more.

Emma Raducanu trademark misreporting; new INTA resolution; Oreo and Pokémon team up – news digest
Apple overtakes Amazon as most intimate brand
16 Sep 2021

Apple overtakes Amazon as most intimate brand

Apple has overtaken Amazon at the top of MBLM’s annual Brand Intimacy Study, highlighting the power of smartphone brands to build strong emotional ties with consumers.

Scammer takedown: USPTO solicitation fraudster fined $4.5m and sentenced to prison
16 Sep 2021

Scammer takedown: USPTO solicitation fraudster fined $4.5m and sentenced to prison

The US Department of Justice has announced a significant win in the fight against trademark solicitation scams, with a Latvian national sentenced to more than four years in prison for defrauding thousands of USPTO trademark registrants.

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16 Sep 2021

All eyes on SCOTUS: dispelling confusion on initial interest confusion

A longstanding circuit split could be resolved if the US Supreme Court accepts certiorari in a case that hinges on the initial interest confusion doctrine. Read more

16 Sep 2021

How to weather the coming storm of ex parte cancellations

The Long Read: Winterfeldt IP Group’s Brian Winterfeldt and David Rome prepare for the purge of ex parte cancellations in the United States by offering practical considerations and key strategies for brand owners and practitioners alike. Read more

16 Sep 2021

Lanham Act reaches foreign defendants’ extraterritorial conduct, but worldwide injunction too broad

In this dispute between a US remote control manufacturer and its former distributors, the US Court of Appeals for the 10th Circuit has considered the extraterritorial reach of the Lanham Act. Read more

15 Sep 2021

Inconsistency, fraud, laundering – research decries challenges for cannabis companies at the USPTO

A new study has investigated the so-called ‘trademark laundering trap’ that cannabis companies face if they seek brand protection at the USPTO. Read more

Anti-Counterfeiting

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14 Sep 2021

USPTO trademarks on sale as NFTs; thousands of duplicate filings in China; Australia joins DesignView – news digest

In our latest round-up, we look at Nordstrom trimming its private portfolio to strengthen brands, Firefly becoming the North America licensing agency for Pan Am, and much more. Read more

8 Sep 2021

How Ford is redefining itself – starting with legacy trademarks

Evolving industries and a renewed brand focus require a new way of navigating trademark issues, reveals Ford chief trademark counsel Sharon Sorkin. Read more

7 Sep 2021

Cartier counterfeits seized; Superdry and Asos face-off; EUIPO and SMEunited team up – news digest

In our latest round-up, we look at more than 5,500 rights holders signing up to the Mercado Libre Brand Protection Programme, McDonald’s seeking a ‘McDuck’ Russian slang trademark registration, and much more. Read more

4 Sep 2021

USTR launches notorious market comment period as online counterfeiting remains hot button political issue

Rights holders would be wise to engage with the USTR’s calls for comments ahead of the next notorious markets list, argues our latest Saturday opinion column. Read more

Brand management

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11 Sep 2021

Why Washington Football Team should stick with temporary name

As the 2021 NFL season gets underway, the shortlist of new names for the Washington Football Team has narrowed – but change may not be the best option. Read more

10 Sep 2021

Marvel always possessed the ‘House of Ideas’, but it had to learn how to unleash its IP

A major strategy shift in the early 2000s resulted in increased licensing engagement, and the company has continued to be proactive in brand monetisation since, to great success. Read more

8 Sep 2021

Mysterious Black Lives Matter trademarks cause headaches for applicants and representatives

Two new trademark applications covering terms related to the Black Lives Matter movement have been filed in the United States. Read more

7 Sep 2021

Starting afresh: the new face of Ford trademarks

Chief trademark counsel Sharon Sorkin reveals how she has been realigning legal with Ford’s renewed brand priorities in her first two years on the job. Read more

Enforcement and Litigation

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10 Sep 2021

Texas Hammer nails trademark infringement appeal

This case presented the first opportunity for the US Court of Appeals for the Fifth Circuit to consider initial interest confusion in the context of search engine keyword advertising. Read more

6 Sep 2021

USPTO report fails to answer central questions on state infringement but highlights enforcement challenge for rights holders

While it failed to answer some of the central questions it was posed, the publication illustrates the uphill battle rights holders face when dealing with infringement by states. Read more

6 Sep 2021

Third Circuit orders second look at delays and disgorgement of profits

In a long-running dispute between two charitable organisations over the use of the marks CARS FOR KIDS/KARS 4 KIDS, the US Court of Appeals for the Third Circuit has vacated a disgorgement order totalling about $10.6 million. Read more

3 Sep 2021

Gmerica trademarks stir up GameStop investors; Switzerland joins Geneva Act; Modelo dispute – news digest

In our latest round-up, we look at Alibaba’s auction site launching patent price guidance, a California cookie maker pushing back on Hershey infringement claims, and much more. Read more

Government/Policy

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31 Aug 2021

Mariah Carey trademark dispute; Mars Wrigley signs deal with Brand Central; Nigeria counterfeits update – news digest

In our latest round-up, we look at China seeking comments on a new judgement standard, the Ayla trademark dispute being revived by the Ninth Circuit, the Costa Rica IP office aligning with CP6, and more. Read more

24 Aug 2021

IPOS unveils new IP resources; THE trademark battle paused; Sony goes on PlayStation filing spree – news digest

In our latest round-up, we look at the EUIPO releasing a new design examination tool, a Supreme counterfeiter expanding on their production process, the staggering cost to get information on trademark scams, and much more. Read more

20 Aug 2021

CIPO examination backlog worsens; INTA files amicus brief; UKIPO changes fee process – news digest

In our latest round-up, we look at interim deputy director Coke Stewart departing the USPTO, Namibia joining TMclass, Beyond Meat looking to introduce non-dairy brands, and much more. Read more

18 Aug 2021

USPTO pledges fraud fightback after scathing report into US trademark registration process

Senior staff at the USPTO have released a lengthy statement promising to combat suspicious trademark filings in response to a critical report from the US Department of Commerce’s Office of Inspector General. Read more

Law Firms

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27 Aug 2021

Delta Airlines’ delta variant dilemma; Amazon launches IP Accelerator in Singapore; EUIPO e-sports webinar– news digest

In our latest round-up, we look at Walmart announcing a new initiative to help brand advertising, a Ferrero Rocher counterfeiter being found guilty of infringement despite handling authentic goods, and much more. Read more

20 Aug 2021

Legends of the trademark industry: insights from past WTR Lifetime Achievement winners

Continuing our look back at 15 years of the WTR Industry Awards, today we speak with three past winners of the prestigious Lifetime Achievement Award to garner insights into the evolution of the industry. Read more

17 Aug 2021

Spongebob trademark lawsuit; 50 Cent mocks Rémy Martin infringement claims; Sony buys Crunchyroll – news digest

In our latest round-up, we look at Clubhouse settling a dispute with a sports networking site, how chatbots can “boost brands”, Ford pushing back against General Motors, and much more. Read more

10 Aug 2021

Amazon and GoPro file counterfeit lawsuit; Aldi trolls Marks & Spencer; Manchester United to be renamed – news digest

In our latest round-up, we look at INTA unveiling a student moot court competition in the Andean Community, Canon USA updating its anti-counterfeiting consumer education, and much more. Read more

IP Offices

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26 Aug 2021

Trademark Terminal pauses filing operation, as evidence suggests USPTO cracks down

Various controversial low-cost filing agencies, including Trademark Terminal and Trademark Falcon, have stopped accepting new clients, with one expert saying it is “likely” the USPTO has cracked down on the entities. Read more

16 Aug 2021

USPTO criticised in scathing report from US Department of Commerce; expert warns of ‘troubling Sinophobia’

The US Department of Commerce has published a scathing report into the USPTO trademark registration process, claiming that it is “not effective” in preventing fraudulent or inaccurate registrations. Read more

11 Aug 2021

The failure of failure to function: why an examination overhaul is needed at the USPTO

In an exclusive guest post, the author of a new trademark law study outlines why failure to function has become a “muddled doctrine”, and suggests what the USPTO and brand owners can do to fix it. Read more

6 Aug 2021

PepsiCo sells Tropicana brand; Oatly loses infringement suit; Banjul Protocol effective in The Gambia – news digest

In our latest round-up, we look at OpSec Security launching an analytics tool to neutralise bad actor networks, a Scottish knitwear company winning an EUIPO appeal, and much more. Read more

Online

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30 Aug 2021

Influencer liability ruling opens door for direct infringement claims, but brands must tread carefully

Social media influencers could become bigger targets for trademark infringement suits under a recent ruling by the California District Court. But brand owners must be careful not to turn loyal followers against them. Read more

27 Aug 2021

Consumers actively buying counterfeit goods, despite increase in awareness, study reveals

Anaqua vice president of law firm strategy Jayne Durden outlines what more brand owners can do when consumers continue to actively buy counterfeit goods. Read more

4 Aug 2021

USPTO urged to protect its own brand in fight against fraud and scams

The USPTO is being urged to more effectively protect its own brand to help tackle fraud, with suggestions including obtaining trademark protection for the USPTO name and hiring a brand integrity manager. Read more

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. Read more

Portfolio Management

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20 Aug 2021

Coca-Cola’s brand strategy requires a balance of innovation, nurturing, and knowing when to call it quits

The renowned drinks manufacturer has been on a brand purge since the end of 2020, putting an end to underperformers and reallocating resources to its best and most promising brands Read more

19 Aug 2021

TTAB upholds fraud claim against distributor of massage chairs who registered manufacturer's mark

For only the second time since the Federal Circuit's 2009 decision in In re Bose, the US Trademark Trial and Appeal Board has upheld a claim of fraud. Read more

10 Aug 2021

Ninth Circuit: don’t count your Lamborghinis before your trademark is in use

This dispute between Social Technologies and Apple over the mark MEMOJI highlights that mere adoption of a mark without bona fide use in commerce is insufficient to establish rights in that mark under the Lanham Act. Read more

5 Aug 2021

USPTO seeks federal trademark registration to help tackle “growing problem” of filing scams

The USPTO has tapped the US Department of Commerce to file for federal protection of its trademarks, a move that was deemed necessary “in light of the rapid increase in sophistication” of fraudulent activity targeting its users. Read more

Trademark law

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9 Aug 2021

CCFN keeps an eye on Mexico GI regime after a year of USMCA

Focus remains on Mexico adhering to the terms of the United States-Mexico-Canada Agreement as Consortium for Common Food Names senior director Shawna Morris considers the treaty’s effects on geographical indications over the past 12 months. Read more

3 Aug 2021

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. 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