United States of America

“A step in the right direction” – USPTO to begin testing ID verification, with experts voicing praise and concerns

USPTO to begin a pilot programme for a proposed new verification system on its online trademark platform, WTR learns, with experts warning of hurdles that need to be overcome.

“A step in the right direction” – USPTO to begin testing ID verification, with experts voicing praise and concerns
THE BIG LIE trademark; Gap sells Intermix brand; scammers preferred TLDs – news digest
11 May 2021

THE BIG LIE trademark; Gap sells Intermix brand; scammers preferred TLDs – news digest

In our latest round-up, we look at disgust over reports of counterfeit covid medicine in India, Verizon divesting its media division, ICANN unveiling new courses, and much more.

“We want to be the GoDaddy for trademarks”: Heirlume expands on filing platform’s future plans
11 May 2021

“We want to be the GoDaddy for trademarks”: Heirlume expands on filing platform’s future plans

Julie MacDonell, CEO of Heirlume, expands on the platform’s mission and plans to offer SMEs a service that will make the trademark application process as simple as buying a domain name.

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Today

Federal Circuit decision crushes Australian boot maker in long-running politically fraught UGG dispute

The US Court of Appeals for the Federal Circuit has dealt a blow to a small Australian footwear company in the latest in an ongoing political and legal saga over the genericism of the UGG mark. Read more

Today

A practical guide to anti-counterfeiting resources in the United States

Knock-off and counterfeit goods have long plagued legitimate business – a problem that continues today. A report from the Department of Homeland Security in January 2020, indicated a 154% increase in counterfeit trade internationally, a jump from approximately $200 billion in 2005 to $509 billion in 2016. Read more

Today

Procedures and strategies for anti-counterfeiting: United States

The Lanham Act provides civil remedies for trademark infringement and counterfeiting, while the Trademark Counterfeiting Act criminalises certain violations of the Lanham Act’s anti-counterfeiting provisions, making these offences federal crimes. Read more

10 May 2021

Amazon reveals the numbers behind its anti-counterfeiting efforts in first-ever Brand Protection Report

Amazon has published its first-ever report outlining its brand protection efforts, revealing that last year it seized more than 2 million counterfeit products before they were sent to customers. Read more

Anti-Counterfeiting

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6 May 2021

AAFA calls for action to counter rise of ‘dupe influencers’ promoting counterfeit goods

The AAFA has released a new report highlighting the role that a fast-growing group of social media influencers are playing in the promotion of counterfeit products, as well as the tactics that they are adopting. Read more

4 May 2021

Wrigley takes on THC-infused Skittles; Diablo trademark dispute; EUIPO launches SME support fund – news digest

In our latest round-up, we look at a court valuing the name and likeness of Michael Jackson, Anaqua acquiring SeeUnity, ICANN publishing its ‘proposed for adoption’ financial and budget plans, and much more. Read more

30 Apr 2021

Walmart takes on Kanye West; EUIPO extends presence in Africa; Crayola teams up with Build-A-Bear – news digest

In our latest round-up, we look at the USPTO seeking innovation medal nominations, the McCarthy Institute heading to Arizona, delivery apps changing the branding game, and much more. Read more

29 Apr 2021

“We see it; we learn of it; we pursue it” – brand enforcement and licensing tips from Nestlé USA

WTR sits down with Christa Cole, head of legal brand development, enforcement and licensing at Nestlé USA Inc, to hear how a three-person team handles the company’s highest-grossing portfolio. Read more

Brand management

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6 May 2021

Functionality in the European Union and the United States: converging worlds or diverging approaches?

The Long Read: The two key markets show no sign of reaching a consensus when it comes to assessing this vital aspect of trademark protection. Thankfully, Baker McKenzie’s Vlotina Liakatou, Dyan House and Karen Hays have set out a focused checklist for brand owners looking to protect their intangibles in both regions. Read more

5 May 2021

European Commission launches non-agricultural GIs consultation as United States voices concern over extending protection

The European Commission is running a public consultation on creating a system for the EU-wide protection of geographical indications for non-agricultural products. Read more

30 Apr 2021

Cannabis retailers have their work cut out for them in terms of trademark and brand strategy

Legal uncertainty is keeping brand owners on their toes, requiring businesses to be flexible and forward-thinking with their approach to IP. Read more

28 Apr 2021

LMCA and Warburg Pincus launch brand acquisition firm, eyeing targets with licensing potential

Warburg Pincus and  LMCA have launched a new brand acquisition firm, Full Sail IP Partners. LMCA’s president tells WTR that the new entity is already rolling on identifying potential brands to approach. Read more

Enforcement and Litigation

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5 May 2021

Zero hero: disclaiming disputed term renders dispute moot

The USPTO’s Trademark Trial and Appeal Board has redesignated as precedential a decision dismissing a beverage company’s opposition to several ‘zero’-formative marks filed by Coca-Cola for zero-calorie drinks. Read more

4 May 2021

Covid, GIs, China, Philippines, UAE – five big takeaways from USTR’s 2021 Special 301

The Office of the US Trade Representative has published its 2021 Special 301 Report, the first to be released under the Biden administration. Read more

30 Apr 2021

From Apple to Nike: key recent decisions and developments from the Americas analysed

For our next instalment presenting recent Legal Updates that you may have missed we turn our attention to the Americas. Read more

30 Apr 2021

Bribery, impersonation, abuse: shocking details revealed in Pakistan fraud case that targeted USPTO users

In newly-obtained documents, it is revealed that “the biggest money laundering case in the history of Pakistan” features claims of impersonating the USPTO, disturbing abuse of employees, and use of paid ads to lure in victims seeking trademark services. Read more

Government/Policy

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26 Apr 2021

Growing backlog, falling morale: former USPTO examining attorney reveals impact of Chinese trademark applications

In an exclusive interview with WTR, a former examining attorney at the USPTO explains how the influx of trademark filings from China is impacting the registry, and reveals how “demoralisation has become a big issue for USPTO examiners”. Read more

24 Apr 2021

There’s no day like World IP Day to prove US innovation is a priority: op-ed

In our latest Saturday opinion column, ahead of World IP Day, Christina Mitropoulos calls on the Biden administration to seize the moment and send a clear message that it will prioritise and protect US creativity and innovation. Read more

21 Apr 2021

Buy Safe America Coalition backs Big Tech Accountability Platform memo, seeks to shore up support for INFORM Act

This week the Buy Safe America Coalition has sent a letter of support to Republican Congresswoman Cathy McMorris Rodgers in response to a recent memo on her Big Tech Accountability Platform. Read more

21 Apr 2021

USPTO struggles with backlog as number of Chinese trademark applications rises rapidly

The USPTO continues to be flooded with trademark applications from China, with users telling WTR about the changing strategies being adopted by Chinese filers and concerns that the registry has limited options to address the situation. Read more

Law Firms

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4 May 2021

EIP and Stobbs team up in response to increasing need for specialism in the IP space

IP law firm EIP and UK-based intangible asset management company Stobbs have joined forces to further expand their specialist trademark services across Europe. WTR speaks to EIP CEO Magnus Hallin on how this unusual collaboration came about and the possibility of new services in the future. Read more

27 Apr 2021

Abrdn rebrand raises eyebrows; counterfeit Colin the Caterpillar goes viral; JD.com anti-counterfeiting upgrade – news digest

In our latest round-up, we look at Nestlé’s discussions to acquire Bountiful Co, L Brands resuming talks to sell Victoria’s Secret, ICANN asking for a deletion freeze as it awaits the Net 4 India decision, and much more. Read more

20 Apr 2021

European Super League may cost clubs €2.5 billion brand value; Cuthbert the Caterpillar returns; Barbie and Zara partner – news digest

In our latest round-up, we look at academics and a university duking it out over trademark bullying accusations, Lids partnering with Designer Brands, and much more. Read more

16 Apr 2021

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. Read more

IP Offices

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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. ” 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

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

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

Online

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27 Apr 2021

Facebook and Gucci team up as social media giant steps up anti-counterfeiting efforts

Facebook and Gucci have announced that they have filed a joint lawsuit against the head of an alleged international counterfeiting operation. Read more

20 Apr 2021

Pardon my French: France wins ‘france.com’ trademark dispute using sovereign immunity

The US Court of Appeals for the Fourth Circuit has found that France was immune from a trademark infringement claim in the United States brought by the former owner of the domain name ‘france.com’. Read more

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

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

Portfolio Management

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26 Apr 2021

Waiver in USPTO trademark appeals applies “per decision, not per case”

In the latest instalment of the long-running PRETZEL CRISPS dispute, the US Court of Appeals for the Fourth Circuit has considered a narrow question of statutory interpretation. Read more

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

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

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

Trademark law

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19 Apr 2021

Where to appeal a TTAB decision? The choice is complicated

In this guest piece, Martin Schwimmer and John L Welch unpick the recent US Court of Appeals for the Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when deciding where to appeal an adverse TTAB decision. Read more

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

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

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