United States of America

New trademark law in Cyprus; Burger King trolls McDonald’s; INTA looking for tomorrow’s leaders – news digest

In our latest round-up, we look at Uber looking to bolster its food delivery unit, China approving 33 IP centres, the EUIPO unveiling an SME offering, and much more.

New trademark law in Cyprus; Burger King trolls McDonald’s; INTA looking for tomorrow’s leaders – news digest
Trademark strategy is an early focus of the world’s top disruptors
3 Jul 2020

Trademark strategy is an early focus of the world’s top disruptors

Analysis of this year’s disruptor list reveals that these start-ups defy the typical IP filing process

What we learnt about INTA’s website and Annual Meeting plans from CEO Etienne Sanz de Acedo
3 Jul 2020

What we learnt about INTA’s website and Annual Meeting plans from CEO Etienne Sanz de Acedo

WTR presents insights from INTA on the association’s digital transformation strategy, plans for this year’s combined Annual and Leadership Meeting, and how virtual offerings may play into future association events – including San Diego 2021.

Latest

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2 Jul 2020

Key takeaways for trademark professionals from ICANN’s latest policy forum

In this guest analysis, experts from Winterfeldt IP Group present key takeaways from ICANN 68, including on issues related to rights protection, Domain Name System abuse and WHOIS. Read more

2 Jul 2020

As tobacco brands suffer amid covid-19 pandemic, cannabis brands thrive – despite USPTO restriction

As the tide continues to turn for the cannabis market, we investigate how long federal trademark legislation will lag behind this rapidly growing market. Read more

1 Jul 2020

“A victory for any brand owner that has invested to build a brand”: Booking․com and legal experts react to Supreme Court decision

WTR has compiled some of the immediate responses to the SCOTUS opinion in USPTO v Bookingcom that rejected that a generic word plus ‘.com’ is automatically generic. Read more

30 Jun 2020

Booking.com prevails at US Supreme Court; opens door to ‘generic.com’ trademark registrations

In an 8-1 decision, the US Supreme Court has rejected the USPTO’s ‘sweeping rule’ that the combination of a generic word and ‘.com’ is automatically generic. Read more

Anti-Counterfeiting

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29 Jun 2020

“Encouraging message to brand owners” – why Under Armour’s victory in China is bad news for counterfeiters

Under Armour has prevailed in a long-running dispute with clothing firm Uncle Martian in the Chinese Supreme People’s Court, which “sends an important message” to counterfeiters in China. Read more

23 Jun 2020

Unauthorised branded face masks; Rolex opposition win; Josie Maran targets Amazon seller – news digest

In our latest edition, we look at Dreyer’s Grand Ice Cream renaming Eskimo Pie, the owner of a Chinese pharmacy chain sentenced to jail for the sale of counterfeit masks, and much more. Read more

19 Jun 2020

Amazon seeks to send message in legal collaboration with Maison Valentino

Amazon.com and Maison Valentino have launched a lawsuit against  Kaitlyn Pan Group and Hao Pan, claiming that the defendants had launched a line of shoes that copy the look and design of the Valentino Garavani Rockstud shoes. Read more

18 Jun 2020

Weidian, “the eBay of China”, emerges as popular platform for counterfeiters

WTR investigates how Chinese online marketplace Weidian works, the types of fake products available, and why it should be on the enforcement radar of all brand owners. Read more

Brand management

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26 Jun 2020

Kraft Heinz finally sees a positive quarter, but innovation and licensing key to maintaining momentum

The company has struggled as consumers increasingly opt for healthier products. Now it is seeking new ways to monetise its iconic brands while simultaneously implementing a transformation strategy. Read more

25 Jun 2020

“I feel like I’ve been swindled” – concerns grow over ‘Holly Mariella’ trademark campaign

Business owners have reached out to WTR in recent days over a trademark marketing campaign conducted by a person who appears to have hijacked the details of a California-based attorney. Read more

24 Jun 2020

INTA events go digital: what to expect from this year’s virtual Annual Meeting

In our latest opinion column, we reflect on INTA’s first all-virtual conference and what we learnt about its plans for the combined annual and leadership meetings in November. Read more

23 Jun 2020

How US case law can help well-known faces protect their publicity rights

The successes and failures of previous high-profile cases offer some guidance on how those in the public eye can best protect their personal brand in the absence of explicit federal-level legislation. Read more

Enforcement and Litigation

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30 Jun 2020

Light beer sweetener – not so sticky after all

The US Court of Appeals for the Seventh Circuit has held that Anheuser-Busch’s statements that Molson Coors’ beers were made with corn syrup were not false and misleading under the Lanham Act. Read more

18 Jun 2020

Don’t SULKA: plaintiff must demonstrate intent and ability to use mark

This decision of the US Court of Appeals for the Second Circuit is of particular interest to companies looking to protect and enforce their trademarks in the United States when confronted with a declaratory action for abandonment by a non-US entity. Read more

17 Jun 2020

UK businessman withdraws trademark applications related to Black Lives Matter following backlash

Georgios Demetriou drops efforts to attain registered trademark protection in terms related to the Black Lives Matter movement following claims that his business had been the subject of threats. Read more

16 Jun 2020

UKIPO responds to BLACK LIVES MATTER trademark outrage; INTA cancels TMAP meeting; ICANN69 goes virtual – news digest

In our latest round-up, we look at Nestlé putting a large portion of its bottled water business up for sale, HGF and Nexus teaming up, IPOPHL warning of a rise in fake goods, and much more. Read more

Government/Policy

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19 Jun 2020

USPTO responds to TESS criticism and identity hijacking concerns

The USPTO has responded to criticism of its Trademark Electronic Search System (TESS) and concerns over the hijacking of attorney information on trademark applications. Read more

17 Jun 2020

“We can be allies but that’s not enough”: call for IP community to do more to help black-owned SMEs

The Black Lives Matter movement has led to calls for consumers to support local black-owned businesses. This is an opportunity for the IP community to step up and improve SME access to IP rights. Read more

12 Jun 2020

Liberty Legal Firm returns; Captain Tom trademarks; GEORGE FLOYD application at USPTO – news digest

In our latest edition, we look at the CJEU ruling that a functional shape can be protected as copyright; the EUIPO looking for pro bono help; Red Points opening a new office in Beijing, and much more. Read more

9 Jun 2020

BLACK LIVES MATTER and I CAN'T BREATHE trademarks filed: Manchester businessman plans charitable foundation

Entrepreneur tells WTR of plan to launch non-profit to help disadvantaged children – and, if the BLACK LIVES MATTER and I CAN’T BREATHE marks are granted, will seek a royalty fee from other entities that use the terms in the United Kingdom. Read more

Law Firms

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26 Jun 2020

Too good to be true? How to identify a suspicious trademark marketing campaign

With an apparent rise in suspicious trademark marketing campaigns in the United States, WTR highlights the factors that trademark applicants and registrants should look out for when engaging with potential new representation. Read more

16 Jun 2020

USPTO urged to fix search capability after hijacking of attorney details

The USPTO is being called on to improve its Trademark Electronic Search System (TESS) so attorneys can monitor whether their details are being used for fraudulent purposes follows recent examples of attorney details being hijacked. Read more

5 Jun 2020

INTA calls for racial equality; ‘.amazon’ added to DNS; Deus Ex Machina trademark dispute – news digest

In our latest round-up, we look at a trademark application for an indigenous people’s name being criticised in Japan, Scratch and Skratch coming to blows, a Ford Mustang seized for alleged infringement, and much more. Read more

2 Jun 2020

John Oliver UFC trademark brawl; Brighton FC criticised over filing; Nestlé rebrand – news digest

In our latest edition, we look at Amazon's latest pharmaceutical trademark bid in Australia, the USPTO and the Japan Patent Office issuing a joint statement, and much more. Read more

IP Offices

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17 Jun 2020

Mysterious Chinese entity sits atop USPTO top filers list, alongside Everglades College, Marvel and Walmart

This data deep dive explores US filing strategies by country, revealing that Chinese applicants increasingly favour direct applications while European-based businesses continue to utilise the WIPO route. Read more

16 Jun 2020

USPTO’s prioritised covid-19 trademark examinations a positive move but will benefit a small pool of applicants

The USPTO has announced a prioritised examination programme for certain types of trademark and service applications in light of the ongoing covid-19 pandemic. Read more

12 Jun 2020

Pendency, hiring and IT investment to be hit as USPTO grapples with volatile filing levels

USPTO director Andrei Iancu has warned of a drop in revenues as a consequence of the covid-19 pandemic, revealing that hiring and plans to modernise legacy trademark IT systems are being scaled back due to current economic uncertainty. Read more

11 Jun 2020

Six key moments to file a letter of protest

There are various circumstances in which letters of protest may be an effective means of influencing USPTO decisions, but rights holders must tread carefully. Read more

Online

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10 Jun 2020

The far-right’s favourite social network Gab is on the rise; what brands need to know

“Free speech” social network Gab has reported the biggest surge of growth in its four-year history; WTR investigates brand use on the platform and identifies issues that brand owners must be aware of. Read more

2 Jun 2020

Actions are more important than words: brands receive mixed marks over #BlackLivesMatter messaging

In our latest opinion column, we look at the brand backlash suffered by companies perceived to be exploiting the Black Lives Matter cause. Read more

2 Jun 2020

How Trump’s executive order on social media platforms could provide clarification for brand owners

The executive order intends to make social media platforms liable as publishers. Could these efforts change how brand owners bring bad actors to justice? Read more

29 May 2020

Robert De Niro’s USPTO petition granted; Verizon prevails in UDRP; Facebook scam exposed – news digest

In our latest round-up, we look at the UFC filing trademark applications for UFSEA following a Last Week Tonight with John Oliver segment,  Trademark Engine’s covid-19 donation, WIPO taking its AI discussion virtual, and much more. Read more

Portfolio Management

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12 Jun 2020

Ben & Jerry’s walks the walk – and that’s why people love it

This iconic ice cream brand’s response to the Black Lives Matter movement has been applauded for its authenticity and transparency. The company is well-versed in social activism, which has been the backbone of the business since day one. While brand building is not the purpose of its pursuit of a better society, it is a welcome side benefit. Read more

9 Jun 2020

US Supreme Court permits delay in defence to infringement

The decision of the US Supreme Court in Lucky Brand Dungarees Inc v Marcel Fashions Group Inc will be useful for trademark owners that find themselves tied up in repeated trademark infringement suits with the same adversary. Read more

29 May 2020

Stuck in lockdown – it might be time to swipe right? Dating app filing patterns analysed

How popular dating apps have been able to capitalise on lockdowns, strengthening consumer connections and taking the opportunity to reinvent the online dating landscape Read more

28 May 2020

Going to the dogs: the Ninth Circuit’s erosion of trademark rights – exclusive guest post

In this guest post, it is argued that the VIP Products LLC v Jack Daniel’s Properties Inc ruling, as it presently stands, is alarming and opens the floodgates to widespread theft of goodwill under the guise of the First Amendment. Read more

Trademark law

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8 Jun 2020

“Reprehensible” – GEORGE FLOYD and I CAN’T BREATHE trademark applications filed

WTR has identified trademark applications in the European Union and United Kingdom for GEORGE FLOYD, while numerous applications for I CAN’T BREATHE have been filed at the USPTO. Read more

3 Jun 2020

Study calls for shake-up of geographical indications to forge path towards universal trademark system

In conversation with WTR, the academic behind the research says a shake-up of indications of geographical origin could be the first step towards the “high ideal” of a universal trademark system. Read more

19 May 2020

“A veiled threat” – UK government releases draft EU free trade agreement with geographical indications omitted

The UK government has published an outline of a free trade agreement with the European Union which omits geographical indications (GIs) – a move that suggests GIs will remain a contentious issue as negotiations continue. Read more

15 May 2020

“Lucky finally gets lucky” as Supreme Court issues defence preclusion decision

The US Supreme Court issues decision in Lucky Brand Dungarees v Marcel Fashion Group, the dispute centring on the issue of whether res judicata in the form of claim preclusion can also apply to defences. Read more

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