United States of America

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.

USPTO ends specimen protest email; New York Times drops Time lawsuit; UK debut for Amazon Fresh – news digest
"We troll counterfeiters": team behind Unified Patents goes on offensive against online infringers
3 Mar 2021

"We troll counterfeiters": team behind Unified Patents goes on offensive against online infringers

Unified Patents has launched a new subsidiary, Unified Brands, which aims to combat counterfeiters on behalf of SMEs on a ‘no cost’ basis.

The future-facing approach to diversity and inclusion at Finnegan
3 Mar 2021

The future-facing approach to diversity and inclusion at Finnegan

Chief recruitment and professional development officer, Tim Henderson, provides in-depth insight into the firm’s approach to DE&I.

Latest

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5 Mar 2021

There’s no sugarcoating it: Pocky’s cookie design trade dress is functional

The US Court of Appeals for the Third Circuit has held for the second time that the product configuration of the Pocky – a chocolate-dipped, stick-shaped cookie – was functional and thus not subject to trade dress protection. Read more

3 Mar 2021

How Venable has utilised technology to develop a new branded naming service

Venable has launched a new tech-driven naming service that quickly provides ‘already cleared’ naming options to marketers and brand development professionals. Read more

1 Mar 2021

USPTO urged to set up task force to address scams following massive Pakistan fraud case

A week after WTR revealed a massive fraud and money laundering case in Pakistan involving the targeting of USPTO users, experts are calling for urgent action to identify those potentially impacted. Read more

26 Feb 2021

Major Leagues rely on new-age media to boost engagement and strengthen brand equity

The top sports leagues in the US are social media savvy, and their trademark portfolios reflect their unique branding circumstances. Read more

Anti-Counterfeiting

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23 Feb 2021

Reaction to Peloton genericism lawsuit; counterfeits seized in Louisville; Daimler trademark issue – news digest

In our latest round-up, we look at ACG lobbying for increased UK consumers protection against counterfeits, Dr. Martens teaming up with the owner of Hello Kitty again, and much more. Read more

16 Feb 2021

WallStreetBets subreddit trademark anger; Corona licensing fight; Planters brand sold – news digest

In our latest round-up, we look at the Queens District Attorney’s Office seizing 1.7 million fake 3M masks, Mondelez launching CoLab, the EUIPO executive director meeting with the Portuguese IP office president, and much more. Read more

10 Feb 2021

“There is no way one single government or company can address this issue on its own”: inside PMI’s illicit trade prevention strategy

Hernan Albamonte, PMI's head of illicit trade prevention for the United States, explains how the company is tackling IP infringement and illicit trade in all of its guises. Read more

26 Jan 2021

New ARIPO director ‘vision for future’; AAFA counterfeit liability call; Boohoo buys Debenhams – news digest

In our latest round-up, we look at Nike taking a kick at counterfeit footwear manufacturers, USPTO reopening a comment period on state sovereign immunity, ICANN inviting leadership applications, and much more. Read more

Brand management

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26 Feb 2021

United States tumbles down Brand Finance Soft Power Index due to covid-19 response

In a star-studded launch event, Brand Finance held a virtual conference with speakers including Hilary Rodham Clinton, Carl Bildt and David Miliband. Read more

20 Feb 2021

Consolidation continues in IP services sector but further tech innovation expected (not least from law firms)

In our Saturday opinion piece, we consider recent activity in the non-legal IP services market. Read more

18 Feb 2021

NovumIP launches into US market as next step in plan to become “one of the top three IP service providers worldwide”

Speaking to WTR, NovumIP chair Reinhard Ottway expands on the company’s plans, with expansion into Asia in its sights. Read more

13 Feb 2021

Coca-Cola voices frustration over lack of diversity in legal field, expect more companies to follow suit

Coca-Cola has become the latest company to publicly detail the diversity, inclusion and belonging commitments that it expects of law firms in its external network. Read more

Enforcement and Litigation

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22 Feb 2021

No more bites at the Apple: intervening junior user can force you to get your head out of the cloud(s)

In a longstanding dispute between by RXD Media LLC and Apple Inc over rights to use the IPAD mark, the US Court of Appeals for the Fourth Circuit has considered how the success of a mark’s intervening junior user - here, Apple - can affect a senior user. 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

12 Feb 2021

Amazon counterfeit lawsuit blitz; Apple and Prepear settle dispute; Bumble valued at $8.2 billion – news digest

In our latest round-up, we look at PepsiCo deciding on the Aunt Jemima rebrand, Washington Football Team selecting its rebrand agency partner, a USPTO public roundtable being announced, and much more. Read more

9 Feb 2021

Clubhouse spat as $1 billion social network labelled a “bully” over app takedowns

The owner of the registered trademark CLUBHOUSE has accused the rapidly-growing social network app Clubhouse – which has garnered fans including Elon Musk – of spuriously seeking the removal of his app from marketplaces. Read more

Government/Policy

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26 Feb 2021

Trademark implications of the Consolidated Appropriations Act 2021

Late last year the US Congress signed the Consolidated Appropriations Act 2021 into law. This act incorporates the Trademark Modernisation Act 2020, which includes many notable revisions to the Lanham Act. Read more

23 Feb 2021

USPTO users targeted in massive fraud and money laundering case in Pakistan

US trademark applicants appear to be victims of what has been described as “the biggest money laundering case in the history of Pakistan”, involving low-cost trademark filing platforms that allegedly sent fake USPTO certificates to clients. Read more

23 Feb 2021

Concern grows over low-cost trademark agencies in wake of USPTO fraud case

New evidence suggests that other low-cost trademark platforms could be linked to an allegedly fraudulent organisation, which in total have filed thousands of trademark applications at the USPTO over the past 12 months. Read more

15 Feb 2021

PROUD BOYS trademark owner surrenders registration weeks after Capitol riot

In an exclusive interview with WTR, the owner of the PROUD BOYS US trademark registration (and former member of the far-right organisation) reveals why he has surrendered the mark. Read more

Law Firms

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22 Feb 2021

“It is simply disingenuous”: attorneys hit out at USPTO trademark application burden estimates

Submissions to a recently closed USPTO public comment window have hit out at the office’s requirement of applicant domicile details and attorney bar numbers. Read more

9 Feb 2021

An inside look at Reed Smith’s diversity and inclusion strategy

DE&I Global Chair, John Iino, and partner chair of PRISM, Alan York, provide insight into the firm’s approach to diversity, equity & inclusion policies. Read more

4 Feb 2021

The policies behind WTR 1000 firms listed as ‘Best Place to Work for LGBTQ Equality’

Members of some of the firms detail why they believe their approaches to diversity and inclusion earned them the ranking in HRC's annual Corporate Equality Index. Read more

1 Feb 2021

Trademark Terminal: concern grows over mysterious low-cost trademark filing entities

Concern has been voiced about the activity of low-cost trademark filing agency Trademark Terminal, as well as similar entities including Trademark Axis, Trademark Falcon, Trademark Funnel and Trademark Regal. Read more

IP Offices

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29 Jan 2021

Brands attracting attention of WallStreetBets; Beyond Meat and PepsiCo tie-up; CNIPA trademark growth – news digest

In our latest round-up, we look at Huawei in early-stage talks to sell its premium smartphone brands, the IP Office of the Philippines (IPOPHL) experiencing its first ever drop in IP demand, and much more. Read more

29 Jan 2021

USPTO fee increase has not dampened demand as early year filings jump 40%

The new prices are enough to generate some much-needed revenue without risking putting off prospective filers. Read more

27 Jan 2021

Rise of covid trademarks: study reveals “tsunami of applications” related to pandemic

A major new study has revealed the “unprecedented” number of US trademark applications related to covid-19 filed between the onset of the pandemic and the end of 2020. Read more

20 Jan 2021

The Biden era begins: trademark industry weighs in on hopes for the future

With today’s inauguration ceremony in Washington DC marking the beginning of the Biden administration, WTR reached out to experts in the trademark field to ask what the president’s priorities should be over the next four years. Read more

Online

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20 Jan 2021

As Trump administration ends, trademark experts reflect on the highs and lows

Today officially marks the end of the presidency of Donald J Trump. After an unprecedented four years, WTR looks back at the brand-related positives and negatives of his time in office. Read more

14 Jan 2021

USPTO highlights role of government subsidies and mandates in growing tide of trademarks from China

USPTO publishes scathing report into the influx of trademark applications from China, claiming that many “lack value and clutter the trademark register”. Read more

12 Jan 2021

Elon Musk brand confusion; Burger King rebrand; Subway to expand licensing footprint – news digest

In our latest round-up, we look at Unilever offloading the Bertolli business, thousands of counterfeit designer masks seized in Kentucky, South Korea adopting a Vegan certification mark, and much more. Read more

11 Jan 2021

Brand associations provide a blueprint for educating consumers on counterfeits and piracy

A number of brand associations have highlighted the need for social media companies and online platforms to step up anti-counterfeiting messaging in efforts to educate US consumers. Read more

Portfolio Management

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4 Feb 2021

INTA urged to push US Congress to bar trademark registration for obscene language and imagery

A new academic paper has called on the US Congress to pass legislation that will deny trademark registration for specific categories of vulgar, profane and obscene language and imagery. Read more

28 Jan 2021

What’s cookin’? Federal Circuit finds no likelihood of confusion between two KITCHEN marks

In this dispute between rival operators of combination gas stations/convenience stores, the US Court of Appeals for the Federal Circuit has addressed the assessment and application of the DuPont ‘likelihood of confusion’ factors. Read more

19 Jan 2021

This mash-up is not a place you’ll go: Seuss copyright will ‘live long and prosper’

In a case involving a Dr Seuss and Star Trek mash-up, the US Court of Appeals for the Ninth Circuit considered claims of both copyright and trademark infringement. Read more

15 Jan 2021

Analysis of the top representatives of Chinese applicants at USPTO reveals strange ebb and flow in workloads

Trademark data shows peculiarities in the mega filers’ activity, particularly within Jonathan Morton’s portfolio. Read more

Trademark law

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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

15 Jan 2021

How lawyers tackled infringing Michael Jordan Chinese translation marks that were too old to invalidate

GEN Law Firm partner Steve Zhao and associate Pei Lyu reveal the intricacies of the arguments that made them successful in the Shanghai court. Read more

13 Jan 2021

US Supreme Court denies certiorari to parody case, leaving Ninth Circuit open to forum shopping, expert says

Trademark experts say that the move has left the Ninth Circuit as the “go-to circuit for declaratory actions for non-infringement”. Read more

8 Jan 2021

Proud Boys™ – far-right group's trademark could face cancellation, legal experts claim

Talking to WTR, the owner of the Proud Boys registered trademark (and former member of the group) reveals how the rights have been used to protect the organisation and stop unauthorised merchandise. Read more

Find an expert

Ben Natter
Partner
New York NY, United States
Haug Partners LLP