North America

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest

In our latest round-up, we look at Brainbase expanding its customer base, a new report that finds consumers trust tightly spaced logos, the Brazilian trademark office opening a public consultation, and much more.

Colin Caterpillar trademark spat; infamous wine counterfeiter deported; Dole brand expansion – news digest
“A matter of survival”: Trademark Express prevails in long-running dispute with LegalForce
15 Apr 2021

“A matter of survival”: Trademark Express prevails in long-running dispute with LegalForce

A US district court has found in favour of Trademark Express in a long-running and bitter dispute with LegalForce RAPC Worldwide, deciding that the former had not been engaged in the unauthorised practice of law. ”

“What we believed was equal and fair a year ago may not be good enough now”: interview with White & Case global diversity chair
14 Apr 2021

“What we believed was equal and fair a year ago may not be good enough now”: interview with White & Case global diversity chair

WTR sat down with White & Case partner and chair of the global diversity committee Arlene Hahn to hear how the firm tackles the challenges of contextual D&I initiatives through its affinity networks, leadership style and progressive bonus policy.

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15 Apr 2021

Federal Circuit: you can’t camouflage express trademark contract terms

This dispute between the US Army and a brand management company that sold clothing bearing the Army logo addresses a range of trademark licensing issues. Read more

13 Apr 2021

Florida State unveils new student-athlete name, image and likeness programme as uncertainty remains over national regime

The move throws the spotlight on the issue of amateurism and the National Collegiate Athletic Association’s efforts to control the narrative. Read more

13 Apr 2021

Activision strikes back with Warzone lawsuit; France.com fight continues; Leason Ellis brand refresh – news digest

In our latest round-up, we look at the IP Office of New Zealand launching a new hearings initiative, Canopy Growth acquiring a leading marijuana brand, and much more. Read more

13 Apr 2021

A distinctively Canadian approach to distinctiveness

As part of the overhaul of Canadian trademark laws, lack of distinctiveness was introduced as a possible bar to registration. Various strategies are available to overcome non-distinctiveness objections, but a level of uncertainty is likely to remain until the Trademarks Office’s practice falls into place. Read more

Anti-Counterfeiting

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6 Apr 2021

Burger King trolls McDonald’s; INTA weighs in with EUIPO amicus brief; Mondelez and Grenade tie-up – news digest

In our latest round-up, we look at the CCFN welcoming the USTR’s stance on geographical indications, Brand Finance marking its silver anniversary, the Philippines taking over the ASEAN IP cooperation group, and much more. Read more

5 Apr 2021

“Lawmakers shouldn’t be fooled”: war of words breaks out after e-commerce coalition opposes proposed marketplace legislation

A war of words has broken out over the INFORM Consumers Act after a new coalition of online marketplaces came out in opposition of the legislation. Read more

1 Apr 2021

Practice tips for combatting counterfeiters: an action plan for brands, manufacturers and retailers

The long read: Anti-counterfeiting cannot be a spectator sport – it needs players all through the supply chain. Robert Masters, Lisa Martens and Katy Carlyle at Sheppard Mullin have drawn up a clear strategy for both first and second-line defence in the US market. Read more

30 Mar 2021

France victorious in ‘france.com’ dispute; USPTO issues credential warning; EUIPO gets Green Apple award – news digest

In our latest round-up, we look at the UKIPO welcoming its position on the US Chamber 2021 Global IP Index, a CBD trademark spat resolving, the Chilean IP Office updating its trademark renewal system, and much more. Read more

Brand management

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12 Apr 2021

Trademarks after death – study urges IP practitioners to consider posthumous registration issues

A new study has taken a deep-dive into posthumous intellectual property and endorsement rights, and proposes a legal rethink to ensure fairness and accuracy to the departed. Read more

10 Apr 2021

Satan Shoes settlement is a good result for both parties, but some will lament the fact the case was not heard

In our latest Saturday opinion column, we examine how the dispute between Nike and MSCHF’s Satan Shoes played out. Read more

9 Apr 2021

FIFA licensing boon; former USPTO director rejoins law firm; INAPI hosts first gender roundtable – news digest

In our latest round-up, we look at GoDaddy increasing its TLD portfolio, Timberland’s trade dress getting the boot, the Peruvian IP office warning political parties to respect IP, and much more. Read more

8 Apr 2021

New WTR report charts the rise of mass filers and impact on trademark ecosystem

Whether they are specific individuals or particular jurisdictions, the rise to prominence of mass filers over the past few years has had a significant impact on the trademark landscape. Read more

Enforcement and Litigation

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12 Apr 2021

Does the buck(eye) stop here? Sixth Circuit reinstates Ohio state trademark claims

This decision of the US Court of Appeals for Sixth Circuit marks a key development in determining liability of virtual retailers, elaborating on when an online marketplace forgoes immunity from trademark infringement claims. Read more

8 Apr 2021

Attorneys’ fees: the steep price of not being exceptional

In this dispute between two hotel operators, the US Court of Appeals for the Seventh Circuit has considered the appropriate standard for determining what makes a trademark case sufficiently exceptional to warrant an award of attorneys’ fees. Read more

7 Apr 2021

Slight rebound expected for 2021 US trademark litigation levels but future remains unclear

Trademark litigation filings at US federal district court level are predicted to exceed 2020’s number this year. However, the uptick is expected to be modest. Read more

2 Apr 2021

MSCHF teases Nike with trademark lawsuit shirt; VW rebrand backfires; ICANN meeting update – news digest

In our latest round-up, we look at the UKIPO tracking illegal online content consumption, US senators urging President Biden to prioritise intellectual property, the USPTO getting back to basics, and much more. Read more

Government/Policy

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7 Apr 2021

“Offensive trademark owners have an enforcement problem” – study calls for Brunetti rethink

A new study has analysed the impact of the Iancu v Brunetti Supreme Court decision, and argues that the owner of offensive trademarks can be denied enforcement in infringement actions and customs seizures. Read more

5 Apr 2021

Why all eyes should be on the US Supreme Court for NCAA v Alston

Late last week, oral arguments were heard at the US Supreme Court in National Collegiate Athletic Association v Alston. Although not focused on intellectual property, the case could throw the spotlight firmly onto the issue of player image rights and payments, making it one to watch. Read more

27 Mar 2021

While the ‘mandatory versus voluntary’ debate continues, legislation on platform action over fake goods looms ever closer

In our latest Saturday opinion column, we reflect on the reintroduction of the US INFORM Consumers Act. Read more

26 Mar 2021

Taylor Swift settles Evermore dispute; Facebook partners with UKIPO; All Gas No Brakes brand ownership – news digest

In our latest round-up, we look at Burberry partnering with a video game developer, the EUIPO winning an award, the Peruvian IP Office auctioning off property owned by IP infringers, and much more. Read more

Law Firms

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6 Apr 2021

How Armstrong Teasdale is making DEI part of its DNA

Armstrong Teasdale LLP partner Donna Schmitt and chief diversity officer Meshach Rhoades reflect on a number of diversity, equity and inclusion initiatives launched over the past year, earning the firm the title of Best Place to Work for LGBTQ Equality. Read more

26 Mar 2021

"There is always more work to be done": Baker McKenzie’s first-ever D&I chief on global diversity efforts

Baker McKenzie’s first-ever chief inclusion and diversity officer, Anna Brown, reveals how the firm draws on its global resources to support diversity, equity and inclusion through clear policy, cross-functional leadership and community outreach programmes. Read more

25 Mar 2021

“These folks find unwitting attorneys that don’t fully understand the rules”: new solicitation email seeks to rent practitioner licences

New third-party efforts to acquire the details of US attorneys in a bid to file trademarks at the USPTO emerged this week. Read more

17 Mar 2021

USPTO set to introduce ID verification requirement to fight fraud and protect trademark register

WTR understands that all ‘uspto.gov’ account holders will require identity verification by the end of 2021, and with recent reports of fraud, legal experts say that the move is “an important step” to protect the integrity of the register. Read more

IP Offices

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23 Mar 2021

Apple counterfeits takedown blitz; Chile moves closer to Madrid Protocol; fake 3M mask warning – news digest

In our latest round-up, we look at a new anti-counterfeiting label being developed, Everlast inking a deal with SportLife Brands, the Mongolian IP Office joining a gender campaign, and much more. Read more

22 Mar 2021

BBC’s pragmatic domain approach; brand purpose; counterfeiters using live-streams  – takeaways from WTR Connect

Takeaways from the final three days of WTR Connect, including insights from brand professionals at Vodafone, Unilever, Coty, Dyson, Reckitt Benckiser and the International Anticounterfeiting Coalition. Read more

20 Mar 2021

Now the genie is out the bottle, expect IP enforcement to remain high on government agendas

In our latest Saturday opinion column, we reflect on recent collaborations between enforcement authorities, IP offices and rights holders. Read more

19 Mar 2021

Tiger King trademark fight; USPTO AI use; Sakpatenti to launch mediation – news digest

In our latest round-up, we look at ICANN being requested to hit the pause button on WHOIS reforms, adidas and Peloton collaborating, and much more. Read more

Online

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16 Mar 2021

EUIPO approves blockchain platform; NFT trademark mystery; SHOP SAFE Act hearing set – news digest

In our latest round-up, we look at how the pandemic is changing consumer habits, Treasury Wine inking a licensing deal for its US brands, Iran joining the Madrid e-filing community, and much more. Read more

12 Mar 2021

Lyft praised for user ban; ICANN71 goes virtual; Vasectomy Mayhem dispute – news digest

In our latest round-up, we look at a new Harry and Meghan trademark hitting headlines, St Louis law enforcement seizing counterfeits, Lacoste teaming up with Bruno Mars, and much more. Read more

10 Mar 2021

Brand enforcement is “an art, not a science” – exclusive interview with Marriott’s Elisabeth Escobar

In a candid conversation with Elisabeth Escobar, WTR hears how the hotel company has weathered the storm faced by the hotel sector in the pandemic. Read more

5 Mar 2021

USPTO ends specimen protest email; New York Times drops Time lawsuit; UK debut for Amazon Fresh – news digest

In our latest round-up, we look at a groundbreaking report on IP in Mexico, INTA holding events marking International Women’s Day, Apollo acquiring craft retailer Michaels, and much more. Read more

Portfolio Management

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31 Mar 2021

Colourful non-functionality argument misses the (design) mark

In this dispute between competitors in the field of mixing tips used by dentists, the US Court of Appeals for the Second Circuit has addressed the functionality of colours in design marks. Read more

29 Mar 2021

Nestlé scours for attractive brands to keep itself on top of the market

The Swiss multinational has an arsenal of iconic brands and local favourites, which it keeps up to date by adding and dropping businesses in line with evolving consumer tastes. Read more

24 Mar 2021

That’s so metal: Ninth Circuit confirms standard of review for finding unclean hands on summary judgment

In a dispute over the use of the mark METAL, the US Court of Appeals for the Ninth Circuit has considered for the first time the standard of review to be applied when a district court concludes that a party has acted with unclean hands. Read more

18 Mar 2021

Morality refusal grounds are gone from the United States but are alive and well in China

In China, a broad swath of trademarks are likely to be refused based on the grounds that they are ‘unhealthy’. Read more

Trademark law

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30 Mar 2021

"No company wants to be associated with human blood" – Nike’s Satan Shoes lawsuit should come as no surprise

Nike has filed a lawsuit against art collective MSCHF relating to its 'Satan Shoes' collaboration with Lil Nas X, but the fashion brand's attorneys were left with little choice but to take legal action. Read more

11 Mar 2021

A countdown of the biggest trademark lessons from US courts in 2020

The long read: A whistlestop tour of US case law offers brand owners crucial pointers covering everything from generic.com marks to what constitutes useful trade dress. Read more

16 Feb 2021

Duke professors accuse their own university of trademark bullying

A new paper argues Duke University is the biggest trademark bully of all US universities and argues the immorality of an educational establishment taking such a strategy. Read more

11 Feb 2021

Lawmakers should rethink use of ‘derogatory’ consumer label in US trademark law, study finds

A new research paper claims that the use of the term ‘consumer’ in trademark law is causing linguistic bias that could be defining the public in a “patronizing, biased, insulting and indulgent” manner, and urges a rethink. Read more

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