North America

Actions are more important than words: brands receive mixed marks over #BlackLivesMatter messaging

In our latest opinion column, we look at the brand backlash suffered by companies perceived to be exploiting the #BlackLivesMatter cause.

Actions are more important than words: brands receive mixed marks over #BlackLivesMatter messaging
How Trump’s executive order on social media platforms could provide clarification for brand owners
2 Jun 2020

How Trump’s executive order on social media platforms could provide clarification for brand owners

The executive order intends to make social media platforms liable as publishers. Could these efforts change how brand owners bring bad actors to justice?

John Oliver UFC trademark brawl; Brighton FC criticised over filing; Nestlé's 'awesome' rebrand – news digest
2 Jun 2020

John Oliver UFC trademark brawl; Brighton FC criticised over filing; Nestlé's 'awesome' rebrand – news digest

In our latest edition, we look at Amazon's latest pharmaceutical trademark bid in Australia, the USPTO and the JPO issuing a joint statement, and much more.

Latest

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29 May 2020

USPTO warns of fraudulent solicitations as attorneys voice concern over Liberty Legal Firm marketing campaign

The USPTO today warned users about “new kinds of solicitations” involving communications via email and text message, with one recent example involving texts falsely claiming to be a ‘USPTO Trademark Alert’. Read more

29 May 2020

Stuck in lockdown – it might be time to swipe right? Dating app filing patterns analysed

How popular dating apps have been able to capitalise on lockdowns, strengthening consumer connections and taking the opportunity to reinvent the online dating landscape Read more

29 May 2020

Robert De Niro’s USPTO petition granted; Verizon prevails in UDRP; Facebook scam exposed – news digest

In our latest round-up, we look at the UFC filing trademark applications for UFSEA following a Last Week Tonight with John Oliver segment,  Trademark Engine’s covid-19 donation, WIPO taking its AI discussion virtual, and much more. Read more

28 May 2020

Going to the dogs: the Ninth Circuit’s erosion of trademark rights – exclusive guest post

In this guest post, it is argued that the VIP Products LLC v Jack Daniel’s Properties Inc ruling, as it presently stands, is alarming and opens the floodgates to widespread theft of goodwill under the guise of the First Amendment. Read more

Anti-Counterfeiting

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20 May 2020

How do private investigators assist in brand protection cases?

WTR readers have a last chance to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with PIs. Read more

19 May 2020

Hermès victory; IACC postpones all 2020 events; counterfeit Pokémon figurines seized – news digest

In our latest edition, we look at a Chinese manufacturer denying that it sent counterfeit N95 masks to the United States, a draw called in a soccer dispute, the University of Tennessee suing over POWER T trademark, and much more. Read more

13 May 2020

Fighting fake coronavirus treatments: exclusive interview with Gilead’s Gretchen Stroud

Stroud explains to WTR how Gilead protected its brands assets when remdesivir drug hit the headlines as a potential treatment for covid-19. Read more

12 May 2020

A new normal: trademark community on life during and after the coronavirus pandemic – exclusive survey results

New research from WTR reveals the brand protection challenges being faced by trademark professionals during the covid-19 crisis, finding practitioners facing significant salary cuts, increased infringement and the spectre of budgets being slashed. Read more

Brand management

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28 May 2020

Final chance to share your insights on private investigators and brand protection

There’s just a couple of days left for WTR readers to share their perspective on how private investigators are assisting their brand protection work, and the challenges currently being faced when working with third-party investigators. Read more

20 May 2020

“The safest option” – INTA Annual Meeting 2020 goes virtual amid coronavirus concerns

The INTA has announced that it will be conducting its 2020 Annual Meeting and Leadership Meeting as an all-virtual event, a move the association describes as "coming with a heavy heart”. Read more

19 May 2020

“A veiled threat” – UK government releases draft EU free trade agreement with geographical indications omitted

The UK government has published an outline of a free trade agreement with the European Union which omits geographical indications (GIs) – a move that suggests GIs will remain a contentious issue as negotiations continue. Read more

18 May 2020

What to consider before bidding in a trademark auction

With a recession looming over global markets, trademark auctions may become more prevalent. WTR speaks to experts on what due diligence these auctions require. Read more

Enforcement and Litigation

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22 May 2020

Belt fastener trade dress conveyed as invalid for being functional

The US Court of Appeals for the Seventh Circuit has confirmed that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Read more

18 May 2020

Hair of the dog? Ninth Circuit finds that squeaker toy is expressive work

In VIP Products LLC v Jack Daniel’s Properties Inc, the US Court of Appeals for the Ninth Circuit has held that a dog toy meant to humorously evoke a bottle of whiskey was a protectable expressive work. Read more

15 May 2020

“Lucky finally gets lucky” as Supreme Court issues defence preclusion decision

The US Supreme Court issues decision in Lucky Brand Dungarees v Marcel Fashion Group, the dispute centring on the issue of whether res judicata in the form of claim preclusion can also apply to defences. Read more

11 May 2020

US Supreme Court: wilfulness is not a requirement to recover an infringer’s profits

In Romag Fasteners Inc v Fossil Inc, the US Supreme Court has settled a circuit split and unanimously held that a plaintiff need not prove wilful infringement in order to recover profits from a trademark infringer. Read more

Government/Policy

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18 May 2020

ICANN seeks to draw line under Amazon ‘.brand’ spat with South American governments

Göran Marby, president and chief executive officer of ICANN, has written a communication which seeks to draw a line under an eight-year battle that has raged over Amazon’s application for its ‘.brand’ top-level domain. Read more

8 May 2020

Tom Brady mocked for trademarks; another ‘.brand’ dropped; social purpose questioned – news digest

In our latest edition, we look at further tributes being paid to Q. Todd Dickinson, Sonoma Brands acquiring KRAVE, Acritas launching the latest UK law firm brand index, and much more. Read more

7 May 2020

Confusing CBD: post-legalisation trademark strategies for food and beverage marks

In this guest piece, Andrea Anderson and Lee Gray offer insight into how the USPTO may approach examination of CBD marks once legal prohibitions are lifted. Read more

5 May 2020

Trademarks take centre stage in historic US Supreme Court hearing

The US Supreme Court this week made history on two counts: by conducting its first teleconference hearing and by providing a live audio feed of the session, taking the public inside the proceedings process. Read more

Law Firms

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27 May 2020

Digital receptions: how law firms are approaching networking for INTA’s virtual 2020 Annual Meeting

With the INTA confirming that its 2020 Annual Meeting will be a virtual event, law firms and service providers must now decide whether to host a networking reception in a digital environment. Read more

6 May 2020

Private investigators and brand protection: have your say

WTR is inviting trademark industry professionals to share their perspective on how private investigators (PIs) are assisting with brand protection work, and the challenges currently being faced when finding and working with PIs. Read more

1 May 2020

Star Wars hashtag controversy; Puma and Nike spar over FOOTWARE; EU geographical indications denounced – news digest

In our latest round-up, we look at Amazon verifying sellers using online video, fashion brands taking a community angle, exhausting the covid-19 price gougers, a joint message from the USPTO and EPO, and much more. Read more

30 Apr 2020

“It is good to get away from the haters”: Trademarkia founder looks to future outside trademark law

In an interview with WTR Trademarkia founder Raj Abhyanker has revealed that he is stepping back from the trademark world to develop civil engagement technology solutions. Read more

IP Offices

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27 May 2020

Trademarks rocket while designs level off: UKIPO releases latest annual filings data

The UKIPO has published its annual Facts and Figures Report. We drill down into the data to reveal the most notable findings. Read more

21 May 2020

Trademark filing levels recover but long-term picture remains in doubt

After an initial slump in global trademark filing levels in the wake of the coronavirus outbreak, data reveals that numbers have started to return to normal at several major offices. Read more

8 May 2020

Trademark applications will drop during the coronavirus crisis, but globalisation offers hope of a speedy recovery

A new report from TrademarkNow explores the impact of two major recessions on USPTO filings, giving insight into what is to come. Hint: it’s not all doom and gloom. Read more

5 May 2020

Snapdeal snaps at USTR; Anheuser-Busch prevails; Ghana raises trademark fees – news digest

In our latest edition, we look at the South Africa Supreme Court of Appeals confirming it will hear a Swiss watch trademark suit, Partnerize acquiring BrandVerity, law firms delaying partner promotions due to covid-19, and much more. Read more

Online

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28 Apr 2020

China vows counterfeit crackdown; astronaut trademark lawsuit; Trump issues World IP Day proclamation – news digest

In our latest edition, we look at a cruise line filing a trademark application for sanitary masks, INTA opening up nominations for the Tomorrow’s Leader Award, a covid-19 opportunist’s “genius” plan unravelling, and much more. Read more

21 Apr 2020

Trump campaign cease and desist; INTA event goes virtual; data on covid-19 counterfeiting – news digest

In our latest edition, we look at rapper Pitbull being granted two trademarks for his yell, Victoria Beckham in a trademark dispute, New Balance ending another Chinese lawsuit, and much more. Read more

17 Apr 2020

Zoom adapts to the highs and lows of mainstream success

The video-conferencing app is now a staple of daily communication, and its trademark holdings reflect how unexpected this success was. Read more

17 Apr 2020

Apple most imitated phishing brand; Hugo Boss rebrands to Joe Lycett; new CITMA president – news digest

In our latest edition, we look at Patagonia dropping a trademark suit against OC Media, infringers piling on covid-19 domains, IP issues relating to 3D printing ventilators, and much more. Read more

Portfolio Management

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15 May 2020

What the Virgin Media and O2 deal tells us about the branding struggles of telecom providers

The industry’s major players do a poor job of building consumer loyalty, and there is the constant risk of smaller, more flexible companies disrupting the market. Read more

5 May 2020

Federal Circuit confirms that colour marks of certain “character” can be inherently distinctive for product packaging

In In re Forney Industries Inc, the US Court of Appeals for the Federal Circuit has vacated and remanded the Trademark Trial and Appeal Board’s refusal to register a trademark consisting of a gradient of multiple colours applied to product packaging. Read more

1 May 2020

Spotify has proven itself to be an essential service during the lockdown, but mustn’t lose focus

The Swedish music streaming service has been given greater access to users who are practicing social distancing. While this time is critical for building brand intimacy, the company cannot lose focus on long-term innovation. Read more

28 Apr 2020

Gleissner attorney Jonathan Grant Morton overtakes LegalForce as leading representative at USPTO

New data reveals that Jonathan Grant Morton, the attorney known in trademark circles for assisting Michael Gleissner in his brand portfolio-building efforts, is the leading representative of trademark filings at the USPTO in 2020 to date. Read more

Trademark law

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23 Apr 2020

Romag v Fossil: no intent required in trademark disputes to secure profits awards, US Supreme Court rules

The US Supreme Court has issued a unanimous decision in Romag Fasteners v Fossil, concluding that plaintiffs in trademark lawsuits can secure an award of lost profits without having shown wilful intent. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: Canada

Unsurprisingly, 2019 also saw the increase of shipments detained destined for fulfilment centres associated with e-commerce third-party marketplaces. Read more

23 Apr 2020

Procedures and strategies for anti-counterfeiting: United States

Anti-counterfeiting enforcement in the United States stems largely from two federal statutes: the Lanham Act (codified at 15 USC § 1051) and the Trademark Counterfeiting Act 1984 (codified at 18 USC § 2320). Read more

15 Apr 2020

US trademark litigation levels slump in March amid perfect storm of factors

We delve into data from Lex Machina which reveals a 19% year-on-year drop in trademark litigation filings at the US federal district court level in March. Read more