United States of America

Michael Gleissner: massive scope of trademark and domain portfolio revealed in exclusive data

A major new investigation from WTR has identified over 6,800 trademarks and 6,900 domain names that appear to be related to multi-millionaire and serial trademark filer Michael Gleissner.

Michael Gleissner: massive scope of trademark and domain portfolio revealed in exclusive data
USPTO seeks anti-counterfeiting comments; Diageo hunts for premium brands; Smashburger dispute – news digest
24 Nov 2020

USPTO seeks anti-counterfeiting comments; Diageo hunts for premium brands; Smashburger dispute – news digest

In our latest round-up, we look at MarkMonitor becoming a licensed domain name registrar in China, INTA announcing the recipients of its President’s Awards, and much more.

Brands and covid-19: trademark filing data reveals how businesses are cashing in on pandemic
20 Nov 2020

Brands and covid-19: trademark filing data reveals how businesses are cashing in on pandemic

Trademark applications relating to disinfectants, gloves and masks are on the increase, with Class 5 and Class 10 showing significant annual growth.

Latest

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23 Nov 2020

Sticky situation? Circumstantial evidence can support intent to confuse in trade dress claims

This decision of the US Court of Appeals for the 11th Circuit shows that a party seeking to protect its trade dress should try to show not just intentional copying, but intentional copying with the intent to confuse consumers about a product’s origins. Read more

19 Nov 2020

Inside the growing complexity of counterfeit networks, and how to uproot them

Rooting out these networks requires a canny appreciation of how bad actors work with business models akin to their legitimate counterparts. Read more

17 Nov 2020

Embracing change; global blockchain trademark register; approaching brand valuation – INTA 2020 update

Over 3,000 IP professionals from across the globe are this week attending this year’s virtual INTA Annual Meeting, and WTR presents some highlights from the opening few days of the event. Read more

17 Nov 2020

USPTO confirms trademark fee increases in final rule, anticipates $76 million revenue jump

The USPTO has confirmed that it is adjusting trademark and TTAB fees following publication of its final Trademark Fee Adjustment Rule, effective as of 2 January 2021. Read more

Anti-Counterfeiting

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13 Nov 2020

EUIPO ditches fax; Century 21 brand for sale; impersonation on the rise – news digest

In our latest round-up, we look at US Customs and Brand Protection intercepting a large shipment of counterfeits, Fieldfisher launching a Brexit docketing tool, the USPTO appointing a new counsel, and much more. Read more

13 Nov 2020

Amazon sues influencers over fakes, renews call for social media companies to step up

Amazon has filed a lawsuit against 13 individuals and businesses for promoting and facilitating the sale of counterfeit luxury goods in its store. Read more

12 Nov 2020

Artificial intelligence “insufficient” to prevent counterfeits on online marketplaces, study claims

A new study has looked at how automated systems are being used to detect and prosecute IP infringement online, with the academic behind the research telling WTR that the claim that such tools can detect counterfeits “is simply marketing hype”. Read more

11 Nov 2020

Trump’s final IP strategic plan may be non-partisan enough for Biden to keep

Legal experts argue that, in terms of IP strategy, it could be a case of ‘policy business as usual’ once Biden is ensconced in the Oval Office. Read more

Brand management

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17 Nov 2020

Trump trademark blow; Iancu speaks at ARIPO event; protecting clown faces – news digest

In our latest round-up, we look at Ascena Retail Group finding a buyer for the Justice brand, INTA presenting this year’s Tomorrow’s Leader award, and much more. Read more

11 Nov 2020

Parler on the rise: major brands ignore ‘free speech’ social network despite rapid growth

Research from WTR reveals nearly all usernames related to major brands are registered on the social media platform Parler– with copycat and parody accounts identified as a risk for rights holders. Read more

10 Nov 2020

Supreme brand sold; Oatly trademark rejected; Panasonic launches anti-counterfeiting campaign – news digest

In our latest round-up, we look at Saturday Night Live riffing on the retirement of brand mascots, the American Retirement Association prevailing in an acronym dispute, and much more. Read more

9 Nov 2020

Four Seasons Total Landscaping: trademark lessons from a bizarre political event

When US President Donald Trump announced a press conference at Four Seasons Total Landscaping in Philadelphia, it sparked a bemused reaction around the globe and offers some important takeaways for brand owners. Read more

Enforcement and Litigation

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16 Nov 2020

SPROUTS v SPROUT: trademark cancellation is appropriate sanction for misconduct

The US Court of Appeals for the Federal Circuit has affirmed the TTAB’s express authority to impose the cancellation of a trademark by default judgment as a sanction in a TTAB proceeding. Read more

10 Nov 2020

Amazon and Facebook in crosshairs as USTR submissions highlight US platforms

A number of submissions to the Office of the US Trade Representative have identified US platforms for possible inclusion in the next Notorious Markets List. Read more

9 Nov 2020

With US filings breaking records and litigation levels falling, the outlook for 2021 is uncertain

While the latest data suggests that US litigation levels will hit a 12-year low this year, filings continue their upward trajectory. Read more

6 Nov 2020

Gap criticised for election tweet; INTA Annual Meeting looms; EUIPO cooperation success – news digest

In our latest round-up, we look at Volkswagen being the most tattooed car brand, INTA collaborating with Nigeria for IP training, Cambodia destroying counterfeit medicines, and much more. Read more

Government/Policy

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6 Nov 2020

“I’ll be known as the covid president”: interview with new AIPLA president Joseph Re

WTR spoke to Re about AIPLA’s priorities for the next year, how it has weathered tough financial conditions and how it continues to support its membership. Read more

5 Nov 2020

Four new states legalise recreational cannabis: what it means for brands

US election changes to cannabis and hard drug laws alter the legal landscape, but questions remain as to how they open up the trademark market. Read more

5 Nov 2020

Concerns raised over USPTO proposal to mask attorney emails on trademark applications

The USPTO appears to be planning to mask the email addresses of attorneys on trademark applications, with IP experts urging the agency to get feedback from stakeholders before making a final decision. Read more

3 Nov 2020

What a Biden or Trump election win could mean for US brand owners

WTR speaks to IP industry experts about how the US election result could impact the trademark landscape over the next four years. Read more

Law Firms

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27 Oct 2020

Coca-Cola to discontinue 200 brands; hoax Woolworths causes stir; adidas mulls Reebok sale – news digest

In our latest round-up, we look at the boss of Kenya’s Anti-Counterfeit Authority departing following a fake number plate scandal, IP Australia launching a new quality approach, and much more. Read more

23 Oct 2020

Messi granted trademark in Colombia; Amazon counterfeit lawsuit; brands no longer fear Trump – news digest

In our latest round-up, we look at the NCPC and IPR Center teaming up to fight fake vapour products, the Brazilian IPO granting the first geographical indications to indigenous people, and much more. Read more

16 Oct 2020

Korean IP Office counterfeit crackdown; Trump fakes memo; Trinidad and Tobago joins Madrid System – news digest

In our latest round-up, we look at Nestle beginning a water brands sale, the Pakistan IP Office publishing a list of prospective geographical indications, and much more. Read more

16 Oct 2020

Fighting counterfeits during a pandemic, monetising brands and picking external counsel – takeaways from the second week of WTR Connect

The highlights from the second week of WTR Connect include insight into the record-breaking filing levels in key Asia-Pacific jurisdictions, how Microsoft’s tech philosophy spurs the trademark department and strategies to bring down enforcement costs. Read more

IP Offices

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3 Nov 2020

Four years of trademarks under Trump: political appointments, conflict and policy

While trademark policy is not a subject that will necessarily sway voting decisions in the US election, the past four years under President Trump have been notable for the way that brands have been catapulted onto the front pages and into the public consciousness. Read more

30 Oct 2020

USPTO responds to concerns over ‘Trump leadership’ social media posts

The US Patent and Trademark Office faced an online backlash following social media messages, posted less than a week before the US election, praising President Donald Trump. Read more

30 Oct 2020

Sony resolves PS5 trademark fight; Tiffany and LVMH end legal dispute; TPAC new member – news digest

In our latest round-up, we look at a ‘Why Brands Matter’ campaign launching, research revealing the brand risk of data breaches, Authentic Vision planning an expansion, and much more. Read more

20 Oct 2020

Microsoft phishing problem; USPTO unveils acting chief policy officer; Danone brand review – news digest

In our latest round-up, we look at the co-founders of Sortify.tm naming and shaming a trademark squatter, the cloud gaming industry on the cusp of IP growth, and much more. Read more

Online

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14 Oct 2020

eBay expands authenticity service to combat fakes: experts call for Amazon to follow

Brand protection experts praise eBay's new authentication service, but it should be expanded into other product sectors and additionally implemented on other major online retail platforms. Read more

13 Oct 2020

Coca-Cola brand purge continues; TikTok star in Nintendo trademark spat; EUIPO scam alert – news digest

In our latest round-up, we look at the US Department of Homeland Security investing in an anti-counterfeit blockchain start-up, a next-generation trademark status tool launching, and much more. Read more

8 Oct 2020

Presidential candidate domain traffic at risk of phishing scams, highlighting need for brands to review vulnerabilities

Over 90% of domains associated with the US presidential election candidates are at risk of potential redirection, disinformation and data theft. Read more

7 Oct 2020

“Exposure to scams is significant” – USPTO trademark commissioner expands on anti-fraud efforts

Over the next couple of weeks, we are hosting the inaugural WTR Connect virtual conference, and the opening keynote was presented yesterday by USPTO trademark commissioner David Gooder. Read more

Portfolio Management

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5 Nov 2020

Cookie trade dress infringement case crumbles in face of functionality challenge

The US Court of Appeals for the Third Circuit has found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie because the product configuration was useful. Read more

26 Oct 2020

Eye Don’t: no counterfeiting without likelihood of confusion

The US Court of Appeals for the Ninth Circuit has, for the first time, confirmed that the Lanham Act requires a likelihood of confusion in order for the trademark holder to prevail on a counterfeiting claim. Read more

19 Oct 2020

Corsearch to acquire Marketly, integrates anti-piracy tools into brand protection offerings

Corsearch will officially announce the acquisition tomorrow, in what is another step by the service provider to broaden its offerings beyond the trademark sphere. Read more

15 Oct 2020

USPTO commissioner reflects on a “rollercoaster” year in trademarks and plans for the future

David Gooder provides the inside track on the office's "rollercoaster" year for trademark filings, efforts to ensure the integrity of the register, planned fee increases and future financial planning. Read more

Trademark law

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22 Oct 2020

US Supreme Court urged to rule on treatment of parody after Jack Daniel’s petition

If the court grants certiorari, it will once again be weighing in on a case that reconsiders how free speech interplays with commercial trademark rights. Read more

23 Sep 2020

Federal Circuit reveals a more colourful future for trademarks (for now)

A recent decision has created a new rule that colour marks used on product packaging can be inherently distinctive, although the bar is likely to be high. Read more

23 Sep 2020

How to determine the best form of protection for a product’s appearance

Trade dress may be the go-to choice for protecting a product’s appearance or configuration, but other IP rights have plenty to offer. Read more

16 Sep 2020

CBP seizure of ‘counterfeit’ AirPods shows the value of configuration marks

Despite OnePlus’s products being ostensibly genuine products, CBP would not release them, showing the potential value of registering configuration marks. Read more

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Colleen Flynn Goss
Partner
Cleveland OH, United States
Fay Sharpe LLP