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02 May 2014

Competition Bureau releases draft update of IP Enforcement Guidelines

The Competition Bureau has released a draft update of its IP Enforcement Guidelines, which sets out the bureau's views concerning the manner in which the Competition Act will be applied to conduct involving IP rights. In addition, the bureau and the Canadian Intellectual Property Office have announced the signature of a memorandum of understanding calling for closer cooperation between the two agencies.

16 October 2013

What a USPTO shutdown would mean for trademark counsel

With the first US government shutdown in 17 years entering its third week, attempts to find a remedy before tomorrow’s deadline for raising the debt limit continue apace. At present, the USPTO has continued operations relatively unaffected but, should a solution not be found by the end of next week (or should a short-term solution lead to later shutdowns), the prospect of the office closing its doors will become a reality. So how big an impact would it have on trademark counsel?

23 July 2013

The statistics showing that social media is taking centre stage for trademark counsel at big brands

A recent study highlights how social media has rapidly increased in importance to the United States’ biggest brand owners in recent years. That can only mean one thing for trademark counsel...

21 June 2013

New US study into the economic impact of IP due in December

The Executive Office of the President of the United States released its 2013 strategic plan for IP enforcement yesterday. Following the release last year of the US Department of Commerce study into the impact of IP-intensive industries, the White House promises a regular, annual report into the economic benefits of IP and calls for enhanced public engagement on the issues of counterfeiting and piracy.

30 January 2013

Are specimens of use assessments fit for purpose?

In its efforts to acquire – and resurrect – expired trademarks, a California-based company is calling for reform of the USPTO’s handling of specimens of use. Is the system really broken or do current processes strike the right balance between trust and suspicion?

04 December 2012

USPTO sets out the trademark challenges facing Kappos’ successor

Last week, WTR reported on the news that David Kappos, Director of the USPTO, is to step down from his post next month. While no official announcement has yet been issued, this week saw the release of the agency’s performance and accountability report for fiscal year 2012, which identified some of the challenges awaiting his successor.

27 November 2012

Kappos to exit USPTO, agency looks to the future

David Kappos, under secretary of commerce for intellectual property and director of the USPTO, is to leave the office by the end of January 2013. The reasons for his decision, which came to light last night, are sketchy at present – Kappos informed staff by email of his decision to leave the office but, at the time of writing, no official statement has been released by the agency. All eyes will now be on possible replacements – and the impact he or she may have for trademark practitioners.

09 October 2012

It’s not easy being green as USPTO takes tougher line on eco-friendly claims

The US Federal Trade Commission (FTC) has revised its guidelines on marketing environmentally friendly products and services. While the FTC rulebook will help the United States Patent & Trademark Office (USPTO) to combat applicants attempting to mislead consumers, brand owners with genuine green claims will also have to be mindful of the shift in examination practice.

17 September 2012

Trademark or patent practitioners - which are made of the stronger moral stuff?

Data revealed at last week’s Intellectual Property Owners Association (IPO) annual conference in San Antonio, Texas, gave some interesting food for thought regarding the moral fibre of a minority of IP professionals – and trademark practitioners in particular.

10 July 2012

Politics and trademarks – the continuing story

It seems like the worlds of politics and intellectual property have clashed on an almost weekly basis in 2012 and this week the trend continued – taking time out from his own trademark battle, President Obama signed into law an act that strengthens the penalties for trafficking in counterfeit drugs. Meanwhile, over the road from the White House, the House Foreign Affairs Committee launched an investigation into allegations that WIPO supplied computers and other sensitive technology to Iran and North Korea.

12 April 2012

US study identifies economic importance of trademarks

The US Department of Commerce has issued a lengthy report identifying the sectors that generate the most intellectual property and the impact of those sectors on the US economy. At a time when the debate over IP rights rages on, the study sheds important light on the contribution of IP to economic performance – with trademarks playing a central role.

30 March 2012

Canadian decision on sound marks paves way for future changes

The Canadian Intellectual Property Office (CIPO) has announced that it will accept applications for the registration of trademarks consisting of sounds, with immediate effect. With a consultation period on the country’s trademark regulations currently open, future changes to the treatment of non-traditional marks could soon follow.

25 October 2011

Paving the way for a trademark bullying clearinghouse

The USPTO’s study into trademark litigation tactics failed to shed any new light on the issue of bullying, but a public meeting has been set to discuss the potential role industry associations can play in providing legal education programs on trademark policing. At the same time, a new initiative aims to establish a trademark bullying clearinghouse. The first challenge will be defining when enforcement becomes bullying.

29 June 2011

USPTO’s new commissioner of trademarks sets out clear objectives

When Lynne Beresford retired from her post as US commissioner of trademarks at the end of last year, she left behind a well-oiled trademark office that was the envy of the patent profession. So how does Debbie Cohn, the new commissioner, feel about filling Beresford’s shoes? “I’m very lucky,” she told WTR recently. “Our customers seem to be very happy with our work, both in timeliness and quality. So in terms of operations, our job is to keep on going.”

09 May 2011

USPTO silent as attorneys pour scorn on trademark bullies study

While many trademark attorneys and academics across the United States continue to brand the study into trademark litigation tactics as “worthless”, the USPTO has said it “will not comment” on the criticism.