United States of America

Meet the WTR team and pick up some freebies

The WTR team has arrived in Boston for this year’s Annual Meeting. If you are in town, then visit us in the exhibition hall at stands 918/920 to meet the crew and pick up some of our latest publications.

Meet the <em>WTR</em> team and pick up some freebies
17 May 2019

INTA Annual Meeting is a record-breaker, Brexit energy drink denied, and Florida Man trademark spat: news digest

In our latest round-up, we look at a new study that finds 25% of online purchases are for fakes, the EU General Court ruling on a NEYMAR mark, counterfeit containers seized in Malta, tips on making a brand matter, and much more.

17 May 2019

P&G’s new start-up mindset will reinforce its position in the market  

Direct-to-consumer brands have proved to be a problem for the American consumer goods behemoth Procter & Gamble, but a new customer-centric strategy combined with data resources could help the company regain lost ground.

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20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

16 May 2019

Alibaba issues IP protection report; expands on future plans in exclusive interview

Alibaba has released its IP Protection Annual Report, revealing that it provided 1,624 IP-related leads to law enforcement in 2018. Speaking to WTR, Alibaba Group's Matthew Bassiur reveals some of the company's ambitious future brand protection plans. Read more

16 May 2019

It’s time for the INTA 2019 Annual Meeting: WTR's unofficial guide to Boston

The INTA Annual Meeting is about to kick off, and for delegates that are able to squeeze in some R&R time, we reached out to a cohort of Bostonian trademark experts to get their recommendations for what to do while in the city on a hill. Read more

16 May 2019

Vested rights clause restores trademark to original applicant

In Sköld v Galderma Laboratories LP, the US Court of Appeals for the Third Circuit has addressed the issue of trademark ownership under since-terminated development and commercialisation agreements. Read more

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Anti-counterfeiting

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13 May 2019

“Time for our political leaders to get involved” – war of words escalates after UGG decision in favour of Deckers

A jury in the US has found that Australian Leather wilfully infringed a trademark registered to Deckers Outdoor Corporation. The defendant has vowed to appeal, with one member of its legal team calling on the Australian government to intervene. Read more

26 Apr 2019

Blow for Alibaba, good news for Amazon: USTR releases latest notorious markets list

The Office of the United States Trade Representative (USTR) has released its latest notorious markets list, with Alibaba’s Taobao platform included for the third consecutive year.  Read more

19 Apr 2019

Trump riffs on Game of Thrones (again), INTA gives back, and rise of heritage brands: news digest

In our latest round-up, we look at how a slew of fake Amazon reviews are boosting brands, the Martha Stewart brand selling, KIPO assisting in IP crime enforcement, EU judges getting darknet training, and much more. Read more

16 Apr 2019

Trump rebrand advice, INTA to offer free trademark legal services, and P&G sells two brands: news digest

In our latest round-up, we look at the USPTO unveiling details of its World IP Day event, the IP Office of the Philippines seeking to amend the country’s IP code, a ranking of most relevant brands, and much more. Read more

Brand management

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7 May 2019

‘.club’ TLD launches new trademark protection offering – with some major caveats

The registry operator of the ‘.club’ TLD has launched a service designed to offer qualified brands and trademark owners “comprehensive” protection in the namespace. However, there are significant caveats and restrictions. Read more

1 May 2019

Trademark industry luminary among 2019 IP Hall of Fame inductees

Jeffrey Samuels, emeritus professor of law at the University of Akron and previously head of the USPTO’s trademark operations, has been announced as an inductee into the IP Hall of Fame.  Read more

20 Apr 2019

Luxury companies are edging into the travel industry, but a high-end reputation is not everything

LVMH’s purchase of Belmond reflects an ongoing trend in the luxury market towards the travel industry. However, brands must be wise in this transition as there are endless opportunities for reputational damage. Read more

18 Apr 2019

Notre Dame misinformation highlights brand protection challenge for media organisations

There have been numerous reports of fake media accounts spreading conspiracy theories around the Notre Dame Cathedral fire. Such activity around major events is a reminder of the significant challenge that IP practitioners face.  Read more

Enforcement and litigation

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20 May 2019

Federal Circuit: trademark decisions rendered by International Trade Commission do not have preclusive effect

In Swagway LLC v International Trade Commission, the US Court of Appeals for the Federal Circuit has held that trademark decisions of the International Trade Commission, like its patent decisions, do not have preclusive effect. Read more

16 May 2019

Vested rights clause restores trademark to original applicant

In Sköld v Galderma Laboratories LP, the US Court of Appeals for the Third Circuit has addressed the issue of trademark ownership under since-terminated development and commercialisation agreements. Read more

14 May 2019

Brexit Party versus Change UK, Hells Angels victory, and INTA Annual Meeting on the up: news digest

In our latest edition, we look at Guns ‘N’ Roses moving to protect a trademark, Indian farmers prevailing over PepsiCo in a potato legal battle, top Indian brands backing underdogs in Cricket World Cup, and much more. Read more

14 May 2019

Procedures and strategies for anti-counterfeiting: United States

Grey market goods do not qualify as counterfeit; therefore, distributors and sellers of grey market goods are not subject to criminal penalties. However, rights holders may have other claims against such distributors and sellers based on other intellectual property or contract laws. Read more

Goverment/policy

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5 Apr 2019

Your partner in the field: maximising results from US Customs and Border Protection

From recordal to training, there are a number of steps that rights holders can take to enlist the help of US Customs and Border Protection in their anti-counterfeiting endeavours. Read more

5 Apr 2019

China data to TMview this year, Brazil moves closer to Madrid, and Beckham versus Inter Milan: news digest

In our latest round-up, we look at luxury brands focused on Chinese e-commerce platforms, IP Australia opening a public consultation on fees, Red Points receiving funding injection, and much more. Read more

4 Apr 2019

Trump administration has e-commerce platforms in its sights as report into counterfeiting commissioned

US President Donald Trump has issued a ‘Memorandum on Combating Trafficking in Counterfeit and Pirated Goods’, which has been characterised as a “shot across the bow” of online marketplaces.  Read more

26 Mar 2019

LegalForce founder declares war on solicitation schemes, takes swipe at USPTO

Raj Abhyanker, founder of LegalForce RAPC, has initiated legal action against a number of entities it alleges are “shadow scammers using publicly available trademark filer information to send targeted ‘solicitations’ to applicants”. Read more

Law firms

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16 Apr 2019

US trademark litigation levels predicted to be stable through 2019

Data reveals that 863 trademark litigation actions were filed in the United States in the first quarter of 2019, up significantly year on year. However, that upward trajectory is not expected to continue. Read more

10 Apr 2019

Exclusive: new details emerge of proposed Trademarkia and LegalForce sale, as founder eyes exit

Trademarkia founder Raj Abhyanker has written to the shareholders of Trademarkia and LegalForce Inc to confirm his intention to exit from the entities and provide more detail on the prospective sale. Read more

9 Apr 2019

Compumark launches all-in-one protection service 'Trademark.com' as news emerges of prospective sale of Trademarkia (updated)

Compumark has launched a trademark protection tool with the promise to make “safeguarding brands easy and affordable”, with the move representing another entrant into the competitive online trademark filings market. Read more

4 Apr 2019

Managing a merger: exclusive interview with Marriott’s Elizabeth Regan

Marriott International’s vice president and assistant general counsel for global intellectual property reveals her approach to managing trademarks for the company’s 30 hospitality brands and how her team handled the company’s acquisition of Starwood Hotels and Resorts. Read more

IP offices

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10 May 2019

USPTO trials software to tackle fake specimens; downgrades growth expectations

USPTO director Andrei Iancu has expanded on efforts to tackle fake specimens of use on the US trademark register and the unauthorised practice of law, and provided an update on anticipated filings growth. Read more

8 May 2019

“Unprecedented” – USPTO suspends API access but pledges to work with IP service providers to mitigate impact

Earlier this week, the USPTO suspended its TSDR API following a spike in data scraping that has impeded the work of internal employees. However, IP technology vendors have confirmed it will impact some of their services. Read more

8 Apr 2019

Speculation mounts over USPTO special cannabis unit as practitioners vent anger over examination delays (updated)

A number of US law firm practitioners have contacted WTR in recent days to highlight the apparent existence of, in the words of one attorney, “a ‘specialised’ group of examiners assigned to handle cannabidiol and cannabis-related trademark filings”. Read more

5 Apr 2019

How South Africa’s predicted economic upswing will create opportunities for brands and their advisors

The country is seeing increased interest from international entities - particularly from the US; this will likely grow in scale as not only the South African economy develops, but as other emerging markets on the African continent grow.  Read more

Online

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15 Apr 2019

“You need to be willing to stay the course”: brand management insights from Coty Inc’s Joseph Conklin

In an exclusive interview with WTR, Joseph Conklin, senior vice president and global deputy general counsel for beauty company Coty Inc, has revealed how he approaches brand rights enforcement and ensures cross-company collaboration. Read more

3 Apr 2019

“Enough is enough” – content creators vow to work with USPTO to fight back against trademark bullies

In an exclusive interview, the founder of a rapidly-growing group of content creators speaks about challenging “trademark bullies” and “frivolous applications” through evidence-gathering, protest letters and cancellation actions.  Read more

28 Mar 2019

Lessons in brand evolution: what will set the winners apart from the losers

This week Apple announced its foray into the credit card market, illustrating how iconic brands can pivot to expand into new offerings. This guest post explores the history of brand evolutions and predicts what the future of branding will look like. Read more

22 Mar 2019

As the 2020 US presidential race kicks off, few candidates are seeking trademark protection

Research from WTR finds that few candidates for the 2020 US presidential election are seeking registered trademark protection for their campaign branding so far – although some are already being targeted by infringement. Read more

Portfolio management

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20 Apr 2019

Luxury companies are edging into the travel industry, but a high-end reputation is not everything

LVMH’s purchase of Belmond reflects an ongoing trend in the luxury market towards the travel industry. However, brands must be wise in this transition as there are endless opportunities for reputational damage. Read more

11 Apr 2019

Video game industry may face digital overhaul, but Nintendo can always call upon Mario

Big Tech has dipped its toes into the industry, posing a risk to traditional manufacturers. We take a deep dive into one of the market’s biggest players, Nintendo, to understand how its brands have helped the company sustain its success. Read more

10 Apr 2019

BOOKING.COM is not generic: Fourth Circuit addresses protection for ‘.com’ trademarks

In Booking.com BV v USPTO, the US Court of Appeals for the Fourth Circuit has weighed in on the somewhat controversial issue of the genericness of a mark that contains a TLD such as ‘.com’. Read more

10 Apr 2019

Exclusive: new details emerge of proposed Trademarkia and LegalForce sale, as founder eyes exit

Trademarkia founder Raj Abhyanker has written to the shareholders of Trademarkia and LegalForce Inc to confirm his intention to exit from the entities and provide more detail on the prospective sale. Read more

Trademark law

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14 May 2019

Brexit Party versus Change UK, Hells Angels victory, and INTA Annual Meeting on the up: news digest

In our latest edition, we look at Guns ‘N’ Roses moving to protect a trademark, Indian farmers prevailing over PepsiCo in a potato legal battle, top Indian brands backing underdogs in Cricket World Cup, and much more. Read more

3 May 2019

“Just be respectful” – why brands must wise up to indigenous IP rights

WTR analyses how indigenous cultures are protecting their intellectual property and speaks with an expert on how trademark practitioners must be more aware of this burgeoning field of rights. Read more

25 Apr 2019

Many trademark offices are still trying to grasp service brands: exclusive interview with American Airlines’ Donald Broadfield

Donald Broadfield, chief IP and data counsel at American Airlines, explains how he seeks to overcome the challenges of protecting the company’s service brands, and emphasises the importance of crafting contracts that prevent IP disputes with commercial partners. Read more

23 Apr 2019

Can you trademark sounds, smells, colours, motions and flavours?

Trademarks are much more than a logo used to identify a brand. Non-traditional trademarks using sounds, colours and shapes have exploded onto the scene, bringing notoriety to many a business and brand. Read more

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