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07 September 2017

USPTO forum on trademark scams

The US Patent and Trademark Office and the Trademark Public Advisory Committee recently hosted a public roundtable entitled “Fraudulent Solicitations to Trademark Owners”. Speakers included both outside counsel and corporate practitioners and representatives of other organisations.

31 July 2017

Fighting the trademark scammers: agencies and victims convene to strategise next steps

Last week the US Patent and Trademark Office and Trademark Public Advisory Committee hosted a roundtable to strategise on how to tackle fraudulent solicitations. The in-depth discussion revealed details on how scammers go about duping consumers, and the inter-agency approach that will be required if this new ‘whac-a-mole’ challenge is going to be overcome.

28 July 2017

New anti-counterfeiting coalition aims "to lead” in lobbying Trump administration to step up fight against fakes

The Precious Metals Association of North America has announced the formation of a national coalition to “protect IP rights against foreign counterfeiting operations”. A representative tells World Trademark Review that the organisation has already begun discussions with influential members of Congress and the Trump administration to strengthen federal efforts to tackle foreign counterfeit operations.

19 June 2017

A violation of the First Amendment: Supreme Court issues long-awaited decision on disparagement clause

The Supreme Court has handed down its long-awaited ruling in Matal v Tam, holding that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment. In a unanimous 8-0 opinion, the court states that “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’”. In response, the USPTO has confirmed to World Trademark Review that it plans to "issue further guidance" on how it will affect the examination of applications.

19 June 2017

"Win the race against trolls": the trademark implications of Trump’s Cuba policy reversal

On Friday, President Trump unveiled his plans to re-adjust the policy of the United States towards Cuba, announced that he was “cancelling the last administration’s completely one-sided deal” with the country. The move has implications for trademark owners, although in many respects overall strategies shouldn’t change – not least when companies are faced with third parties seeking to register their brands.

07 June 2017

After USPTO director's surprise resignation, the trademark credentials of her successor need to be considered

In a surprise move, Michelle Lee, director of the US Patent and Trademark Office, has resigned after four years in the role. The discussion over her replacement will no doubt focus on the patent background of potential candidates. However, it is important that trademarks are not lost in the mix.

18 May 2017

Anti-counterfeiting: the problems, the players and the missing piece of the puzzle

In order to effectively enforce against counterfeiting, INTA navigates the enforcement puzzle by connecting the different players together, one piece at a time.

09 May 2017

Fourth Circuit holds that policy requiring payment of USPTO attorneys’ fees stands

The US Court of Appeals for the Fourth Circuit recently declined to review its decision affirming the district court’s award of attorneys’ fees to the US Patent and Trademark Office (USPTO), approving the new USPTO policy of requesting attorneys’ fees from applicants that appeal to the US district courts.

28 April 2017

Trump Administration's first Special 301 Report slams Canada and Mexico for inadequate border enforcement against counterfeits

The Office of the US Trade Representative (USTR) has published the 2017 Special 301 Report, the first released under the Trump administration. While Pakistan and Spain are complimented for “positive momentum” behind their IP regimes, the report knocks a number of jurisdictions – including neighbours Canada and Mexico – for what it deems to be ineffective border enforcement against fakes.

19 April 2017

Lawsuit challenging President Trump updated to highlight “gratuitous Chinese trademarks”

The landmark emoluments lawsuit initiated by Citizens for Responsibility and Ethics in Washington – seeking to find the president in violation of the emoluments clauses of the Constitution – has been updated to include the receipt of “gratuitous Chinese trademarks”. Specifically, the suit aims to link the granting of registrations to President Trump’s affirmation of the ‘One China’ policy.

11 April 2017

Trademarks under Trump: the new administration’s impact on IP so far

Three months into his presidency, Donald Trump has revealed his nomination for IP enforcement coordinator. However, with the USPTO hit by a hiring freeze and uncertainty over the future leadership of the agency, the question of what impact his administration will ultimately have on trademarks and the IP ecosystem remains unanswered. So what do we know?

30 March 2017

Pernod Ricard and Bacardi’s battle over HAVANA CLUB trademark erupts again after call for renewal U-turn

A bipartisan congressional delegation has called on the Trump Administration to reverse a US Office of Foreign Assets Control decision to grant a licence allowing Cubaexport to renew the HAVANA CLUB trademark registration in the United States. Slamming the licence as “misguided”, the group has catapulted the long-running dispute between Pernod Ricard and Bacardi back into the political arena.

29 March 2017

Supporting innovation and growth for the global trademark community

In 2017, INTA remains focused on several key issues – chief among them anti-counterfeiting, internet governance, plain and highly standardised packaging restrictions and working to build and maintain strong and harmonised IP laws and regulations on a global scale.