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10 February 2011

Slap on the back for expert trademark counsel from Sarah Palin

Sarah Palin and her attorneys have given trademark counsel the world over an all-American slap on the back. They appear to yell, “Good job!” This is because, in filing an incomplete application to register SARAH PALIN with the USPTO, Palin and her lawyers have highlighted not only the specialist knowledge required to file but also the simultaneous need for strategic brand-building advice.

20 January 2011

Eighth Circuit: actual confusion is not a prerequisite to monetary relief

In Masters v UHS of Delaware Inc, the US Court of Appeals for the Eighth Circuit has affirmed the district court’s verdict of $2.4 million in favour of plaintiff Mary Masters on her claims of trademark infringement of the mark MASTERS AND JOHNSON. Among other things, the Eighth Circuit found that proof of actual confusion was not necessary to sustain monetary relief.

12 January 2011

Unwanted auction trademarks can fetch $100,000 behind closed doors

Although the first-ever public trademark auction may have failed to spark a bidding frenzy on the day, WTR has discovered that big brand owners have been privately buying up the unsold marks for six-figure sums.

14 December 2010

First public trademark auction raises a measly $150,000

The results of the first-ever public trademark auction are in, with estimates suggesting that the event raised just $150,000 through the sale of fewer than 15% of the trademarks on the block. This level of sales has reinforced lawyers' concern over the auction's reliance on intent-to-use applications only, not full registrations. John Cuticelli, chief executive of auction organiser Racebrook, is quoted as saying on the day that he is not "disheartened" - but he hasn't returned WTR's calls requesting further comment.

09 December 2010

Ninth Circuit addresses standard of proof for determination of naked licensing

In FreecycleSunnyvale v The Freecycle Network, the US Court of Appeals for the Ninth Circuit has affirmed the district court’s decision on summary judgment that FreecycleSunnyvale had not infringed The Freecycle Network's trademark rights. The court addressed, but did not resolve, the standard of proof for a determination of naked licensing. However, it did define a set of facts that unequivocally establish naked licensing.

02 December 2010

20,000 interested parties prepare for the first public trademark auction

The man behind what he believes to be the first public trademark auction has told WTR that he has received around 20,000 inquiries from parties interested in bidding on the 150 marks for sale. The rights are set to go under the hammer in New York on December 8, but IP attorneys remain sceptical that auctions are right for trademarks.

24 November 2010

Trademark register and web usernames to dovetail in new search service

The number one trademark filer in the United States has launched a new service that ties social network username registration to the trademark register. The move will help to drive the debate about the extent to which online locators such domain names and social network usernames will compete with trademarks in terms of importance.

02 November 2010

Drunk on incontestability: the Second Circuit says “not so fast”

In Federal Treasury Enterprise Sojuzplodoimport v Spirits International NV, the US Court of Appeals for the Second Circuit has reversed the district court’s grant of a motion to dismiss trademark claims in a case involving the STOLICHNAYA marks for vodka. Among other things, the district court had erred in concluding that any recorded assignment of an incontestable registration cannot be challenged.

29 October 2010

The frightening morality of trademark disputes

While WTR sparks to life a forthcoming feature on zombie brands, IP attorneys in the United States are considering this terrifying tale of trademark enforcement: a successful Pennsylvanian Hallowe'en experience is suing a not-for-profit competitor in Maryland for trademark infringement. They both use the mark FIELD OF SCREAMS.

20 October 2010

Environmental claims both a liability and a chance to engage with marketing

The Federal Trade Commission has proposed new provisions to the Green Guides, specifically addressing marketers’ use of product certifications and seals of approval, and renewable energy, renewable materials and carbon offset claims. With greenwashing on the rise, trademark counsel need to ensure they are monitoring the marketing spin used alongside trademarks, as well as any suggested claim incorporated into the mark itself.

16 September 2010

Bloodthirsty trademark protection services see dollar signs in social media

Trademark conference exhibition halls have become gladiatorial arenas in which non-legal trademark service providers battle each other with plasma screens and soft furnishings. This situation is the natural result of a pervasive internet, which invites innovative business models around the challenges trademark owners face daily. The new battleground is social network usernames, which could become as burdensome as domain names.

09 September 2010

Ping and Apple strike trademark deal: what other brand owners can learn

Gadget-happy media channels have reported how Apple secured an agreement with golf club maker Ping before launching its new iTunes service, which uses the PING word mark. But the story is not Apple's at all. This is a tale of how an admired brand owner spotted an opportunity to extend its name beyond a finite audience using its famous house mark.

07 September 2010

Ninth Circuit unanimously reverses injunction in dispute over Bratz brand

In Mattel Inc v MGA Entertainment Inc, in the long-running dispute between toy makers Mattel Inc and MGA Entertainment Inc over the Bratz dolls, MGA has won an important legal battle - even though the war is far from over. In a unanimous ruling, the US Court of Appeals for the Ninth Circuit reversed a district court decision in which the latter had placed the BRATZ marks in a constructive trust.

06 September 2010

Licensing agreement held not to be subject to rejection in bankruptcy

In In re Exide Technologies, the US Court of Appeals for the Third Circuit has reversed both the bankruptcy court and the district court, holding that a trademark licensing agreement had been substantially performed and, therefore, was not subject to rejection under §365(a) of the Bankruptcy Code.

29 July 2010

Avoiding Bratz: cross-company understanding of IP necessary

One thing that can be learnt from the dispute between Mattel and MGA Entertainment over the Bratz doll brand is that not every employee of any given company understands IP rights. Knowledge of intellectual property runs through the veins of some companies - WTR recently heard from Siemens about that corporation's IP-aware 400,000 employees (full details will be published this autumn). For others, fostering this sort of understanding is trickier.