United States of America

Amending the Lanham Act, protecting Lamborghini in Brazil, and "a factory of ideas": news digest 

In our latest edition, we look at Michael Kors launching a digital store on Alibaba’s Tmall, INTA's call for the Lanham Act to be amended, an illicit trade report from TRACEIT, China’s IP transformation, and much more.

Amending the Lanham Act, protecting Lamborghini in Brazil, and
19 Jul 2019

USPTO to fight back against threat to applications and registered marks

The USPTO’s commissioner for trademarks, Mary Boney Denison, has expanded on the office’s plans to prevent individuals making unauthorised changes to trademark applications and registrations. The plans have been welcomed by one industry expert, who calls for the changes to be implemented as soon as possible.

16 Jul 2019

Yosemite settles, UKIPO needs your help, and Huawei seeks harmony: news digest

In our latest edition, we look at a reminder of the medical risks of counterfeits in Hong Kong, a car air freshener brand taking Ryanair to court, Monaco now using the TMclass list, applications up in Bhutan, and much more.

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18 Jul 2019

Post-verdict motion for increased damages ends on a sour note

In Barrington Music Products Inc v Music & Arts Center, the US Court of Appeals for the Seventh Circuit has held that the mark owner was not entitled to an increased damages award after discovering that two of the defendants were not separate companies. Read more

17 Jul 2019

Branding pharmaceuticals: drug naming and non-traditional trademarks

There are numerous hurdles to branding a new pharmaceutical. In addition to traditional marks, non-traditional marks offer a route to protection where a drug’s appearance has acquired distinctiveness, but obtaining such registrations is not all plain sailing. Read more

13 Jul 2019

Huawei seeks to weather political storm and extend brand success story

The Chinese tech giant has penetrated the global market and withstood international political pressure, so what has made its brand so resilient?   Read more

12 Jul 2019

Women’s World Cup success reveals major opportunity for canny brands

The final of the FIFA Women’s World Cup was held in France on Sunday 7 July, capping off the most popular tournament in the sport’s history. As women’s football goes from strength to strength, how can brands take advantage of this burgeoning marketing potential? Read more

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Anti-counterfeiting

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10 Jul 2019

Amazon expands Transparency scheme as spotlight falls on anti-counterfeiting efforts

Amazon announces expansion of Transparency, its product serialisation service that “prevents counterfeits at scale”. It comes after a US court decision which considered Amazon as the “seller” in a third-party marketplace transaction. Read more

28 Jun 2019

Cannabis counterfeits; the campus consequence of Brunetti; and Anheuser-Busch eyes esports market: news digest 

In our latest news round-up, we look at how Alibaba is seeking increased brand engagement, Anheuser-Busch making a play for the esports industry, a USPTO call for comments, Albania’s accession to the Geneva Act and much more. Read more

27 Jun 2019

Amazon and Nite Ize team up to fight fakes; filing offers glimpse into anti-counterfeiting efforts

Amazon, in collaboration with Denver-based company Nite Ize, has filed a lawsuit against counterfeit product importers and sellers operating in the United States, Canada and China. The lawsuit offers some behind-the-scenes insight into Amazon’s efforts to tackle fake goods on its platforms. Read more

26 Jun 2019

Brands warned of counterfeit apps on Google Play; academic finds trademark protection of little help

A major new study has discovered nearly 50,000 potentially copycat apps on the Google Play store, with 2,000 deemed high-risk. However, the academic behind the study tells WTR that trademark protection is of limited help to combat such a widespread issue. Read more

Brand management

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9 Jul 2019

Trademark group behind Game of Thrones scoops North America Team of the Year

The WTR North America Team of the Year Award was presented to the team handling HBO’s trademark legal needs, including the TV phenomenon Game of Thrones. Trademark head Judy McCool offers insights into protecting brands connected to the biggest show on Earth. Read more

8 Jul 2019

Stranger things: how trademarks helped turn a DVD exchange company into an international brand

Netflix’s human approach on social media extends to its legal team; Ali Buttars and Jeremy Kaufman discuss the difficulties and techniques in running the streaming giant’s trademark section. Read more

7 Jul 2019

Monzo doubles value; fintech companies maturing to further disrupt the market

Digital banking giant Monzo announced last month it will be launching in the United States. While this is a significant move for the fledgling company, its trademark portfolio shows it is still well in the start-up phase. Read more

4 Jul 2019

E-sports open up a whole new frontier for the Caesars Entertainment trademark team

WTR sits down with John Wilson, senior vice president and chief counsel of intellectual property and commercial at Caesars Entertainment, to discuss how the fourth-largest gaming company in the world is broadening its horizons. Read more

Enforcement and litigation

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18 Jul 2019

Post-verdict motion for increased damages ends on a sour note

In Barrington Music Products Inc v Music & Arts Center, the US Court of Appeals for the Seventh Circuit has held that the mark owner was not entitled to an increased damages award after discovering that two of the defendants were not separate companies. Read more

11 Jul 2019

US trademark litigation levels on course to hit four-year high

The latest data from Lex Machina reveals that 2,289 trademark litigation actions were filed in the United States in the first half of 2019, up 12% year-on-year. If current trends continue, it will represent a four-year high. Read more

11 Jul 2019

Strong internal communications, flexibility and diversity make for a winning team at MetLife

Juggling global operations spread out among affiliates can be a daunting task but open communication, company-wide interaction and knowledge sharing allows these trademark professionals to manage an impactful and efficient portfolio.   Read more

5 Jul 2019

New JPO commissioner, USPTO updates scandalous guidelines, and Kardashian copycat lawsuit: news digest

In our latest round-up, we look at IP Australia announcing examination delays, the Portuguese registry updating its fees, the Crips street gang apologising for a trademark dispute, and much more. Read more

Goverment/policy

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10 Jul 2019

Trump criticises left-leaning brand boycotts; how trademark practitioners should prepare

US President Donald Trump took to Twitter yesterday to criticise left-leaning brand boycotts and warned that “two can play that game”. With the threat of brand boycotts on the rise, we look at how trademark counsel should prepare. Read more

25 Jun 2019

Amazon TLD back in limbo as governments rail against e-commerce giant and ICANN

Amazon’s application for the ‘.amazon’ TLD is back on hold after the Colombian government lodged a request for ICANN to reconsider its decision to proceed with the applications.  Read more

24 Jun 2019

Ban on the registration of “immoral or scandalous” trademarks struck down by US Supreme Court

The US Supreme Court has handed down its highly anticipated ruling in Iancu v Brunetti, holding that the Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment. Read more

24 Jun 2019

Brexhaustion: UKIPO report considers future exhaustion of rights regime outside EU

The UK Intellectual Property Office has released a feasibility study of the options for a post-Brexit IP exhaustion regime. We present the key takeaways from the study. Read more

Law firms

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24 Jun 2019

Survey evidence takeaways: inside the VAGISIL versus VAGISAN dispute

In this exclusive guest post, Anna Naydonov and Douglas Rettew, partners at Finnegan, reveal how they approach survey evidence and present takeaways with respect to survey methodology in §1071(b) Appeals. Read more

18 Jun 2019

One week in May: research reveals suspicious specimens still rampant at USPTO

The USPTO has introduced numerous steps over the past two years to combat improper specimens on trademark applications. A new investigation from WTR finds that suspicious specimens remain widespread and applicants are evolving their tactics. Read more

7 Jun 2019

First INTA 2020 reception invite, Tom Brady fumbles trademark application, and Toys “R” Us brand returns: news digest

In our latest round-up, we look at highlights from the USPTO’s anti-counterfeiting conference, Alibaba’s plan to use blockchain technology for its IP protection system, and much more. Read more

7 Jun 2019

From big law to boutique: the risks and opportunities of a career-changing move 

For trademark counsel in private practice, the move from a large law firm to a boutique one is a daunting one. In an exclusive interview, Lauren Emerson from Leason Ellis tells us about why the move, for her, was worth the risk. Read more

IP offices

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1 Jul 2019

Game of Thrones and collegial respect: In-House Leader of the Year Judy McCool reveals what makes her tick

In an exclusive interview, Judy McCool – senior vice president, legal affairs at Home Box Office – reveals why sharing expertise, empowering others and embracing change are the cornerstones of effective leadership. Read more

1 Jul 2019

Game of Thrones and collegial respect: In-House Leader of the Year Judy McCool reveals what makes her tick

In an exclusive interview, Judy McCool – senior vice president, legal affairs at Home Box Office – reveals why sharing expertise, empowering others and embracing change are the cornerstones of effective leadership. Read more

25 Jun 2019

Iancu v Brunetti ruling – trademark community has its say on implications of momentous US Supreme Court decision

WTR reached out to a number of leading trademark experts to explore the possible implications of the Iancu v Brunetti decision for applicants, the USPTO and the trademark ecosystem. Read more

21 Jun 2019

Beto on trademarks, USPTO warned over cyber risk, and 3M puts brakes on opposition: news digest

In our latest edition, we look at Vietnamese IP laws being updated, esports teams seeking out sponsors in Cannes, beauty brands fighting over a make-up mark, an engineer venting over counterfeits, and much more. Read more

Online

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19 Jun 2019

Fraudulent specimens at the USPTO: five takeaways from our investigation – share your experience

Five takeaways from our in-depth investigation into suspicious specimens at the USPTO, and we ask readers to share their experience on the topic and any suggestions to help combat the issue. Read more

13 Jun 2019

Gab, Parler, Thinkspot: brands warned of IP risks on new anti-censorship social networks

New social media platforms pledging to be “censorship-free” are garnering significant audiences who seek an alternative to Twitter and Facebook. Research from WTR finds that these platforms could be uniquely challenging for rights holders. Read more

31 May 2019

Natura attempts to further consolidate Brazilian cosmetic market with a bid for Avon

In this week’s exclusive data analysis, we explore how Natura’s keen understanding of its consumer base, combined with previous acquisitions, has it poised to take on international expansion. Read more

28 May 2019

Why complaints that new gTLD pricing ‘.sucks’ may have been over the top

A recent academic study exploring the need for updated regulation governing domain names in the United States has suggested that, with many brand owners adopting a laid back, wait-and-see approach to registrations, initial complaints surrounding the high costs of the ‘.sucks’ domain name may have been overblown. Read more

Portfolio management

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7 Jul 2019

Monzo doubles value; fintech companies maturing to further disrupt the market

Digital banking giant Monzo announced last month it will be launching in the United States. While this is a significant move for the fledgling company, its trademark portfolio shows it is still well in the start-up phase. Read more

26 Jun 2019

Sage Therapeutics steers a steady course for pharmaceutical marks in Boston

We take a closer look at the inaugural winners of the WTR Industry Award for Local Team of the Year, Cambirdge-based Sage Therapeutics and how it is winning plaudits for innovative marketing and branding work Read more

24 Jun 2019

Website printout: acceptable specimen of use or advertising?

In In re Siny Corp, the US Court of Appeals for the Federal Circuit has upheld a decision denying registration of the mark CASALANA and finding that the website printout submitted by the applicant as a specimen of use was only advertising.   Read more

22 Jun 2019

Beyond Meat takes market by storm; plant-based applications see a boom in the US

The LA-based start-up has had an impressive post-IPO performance, with traditional manufacturers now starting to react. This activity could make meat alternatives the next brand battleground.   Read more

Trademark law

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5 Jul 2019

What Xi Jinping’s IP promises do and don’t say about the US-China trade war

The president of the People’s Republic of China, Xi Jinping, spent a great deal of his keynote speech at the start of last week’s G20 discussing IP matters. We analyse the key messages that brand owners can take away – and what the proposed changes lack. Read more

3 Jul 2019

“A necessary move” – USPTO to require foreign trademark applicants to use US attorneys

The USPTO will soon require foreign-domiciled trademark applicants to be represented by a US licensed attorney. Talking to WTR, experts say this change is needed due to the US trademark register being “flooded with fraudulent applications from foreign nationals”. Read more

2 Jul 2019

Singapore plain packaging date, USPTO vulgar application rush, and MyTaxi rebrand confuses users: news digest

In our latest round-up, we look at the Lazada Group joining Alibaba’s IP protection platform, UKIPO granting its first multimedia mark, new Benelux director general begins, and much more. Read more

1 Jul 2019

US Supreme Court rejects Lanham Act’s bar to registering FUCT mark as “immoral or scandalous”

In Iancu v Brunetti, the US Supreme Court has declared unconstitutional the Lanham Act’s bar to registering marks that are “immoral or scandalous”, allowing the FUCT trademark application to proceed to registration.  Read more

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