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14 November 2017

Effective trademark protection leads to significant profit boosts, new research finds

A paper analysing the value of brands has recently been updated to explore in more detail the effect of trademark protection on a company’s profitability and innovation.

08 November 2017

TTAB declines to disqualify itself from proceedings concerning TRUMP marks

The Trademark Trial and Appeal Board has issued a precedential decision clarifying the circumstances in which it will disqualify itself from cancellation proceedings.

06 November 2017

EU/US disagreements highlighted as USPTO rejects inclusion of intellectual property in Hague Convention

The US Patent and Trademark Office has announced its opposition to the inclusion of IP law in the proposed Hague Convention on the Recognition and Enforcement of Foreign Judgments.

31 October 2017

USPTO seeks greater cooperation with the Department of Justice in fight against fraudulent solicitation scammers

USPTO Commissioner Mary Boney Denison has expanded on the office’s proactive efforts to clamp down on fraudulent and misleading trademark solicitation campaigns.

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.