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20 October 2016

Who is going to pay Alexander Wang $90 million?

The US District Court for the Southern District of New York has entered a default judgment in favour of Alexander Wang Inc and AW Licensing LLC – the entity that owns all of Alexander Wang’s IP rights – against 45 defendants, many of whose identities are unknown, for wilful counterfeiting and cybersquatting, awarding the plaintiffs a total of $90.8 million.

06 October 2016

‘Alt-right’ using brand names as racist code words – and companies are powerless to stop them

Online communities of so-called ‘alt right’ internet users have developed code words to hide bigoted slurs on social media in a bid to avoid perceived censorship. The code uses high-profile brand names, including Google, Yahoo and Skype, to substitute for offensive words to describe ethnic groups including African Americans, Mexicans and Jews. World Trademark Review has spoken to experts about what the affected brand owners can do  – but in terms of legal remedies, the options appear to be limited.

30 September 2016

FTC targets efforts to police keyword advertising

The Federal Trade Commission (FTC) has brought a complaint against 1-800 Contacts Inc under Section 5 of the FTC Act targeting certain agreements restricting 14 competitors from bidding on search keywords comprising 1-800 Contacts’ trademarks. The complaint claimed that these agreements led to unfair competition by negatively affecting consumers, search engine companies and market players.

22 August 2016

Creating a unified front: how counsel are navigating the murky waters of social media in the US

The playing field for US brand owners has been transformed by the explosion of social media over the last decade. For the trademark professionals we spoke to as part of the current WTR 1000 research process, it has also presented a range of challenges – not least in making sure that law firm and corporate counsel are taking a consistent approach to enforcement

21 July 2016

Birkenstock leaves Amazon "to counterfeiters, fake suppliers and unauthorised sellers" as IP concern mounts

German footwear maker Birkenstock has decided to quit the Amazon marketplace in protest at what it perceives to be a lax approach to counterfeiting on the part of the online retailer.

28 April 2016

Amazon’s clear labelling defeats MTM trademark claims

The Supreme Court has denied certiorari for the Ninth Circuit decision in Multi Time Machine Inc v Inc, which held that Amazon did not infringe MTM’s trademark in its presentation of other competing products in a consumer’s search results.

07 April 2016

Google Translate can mean frustrazione for trademark applicants

While Google has generally made research much easier, the company’s Google Translate tool is causing frustration for many applicants seeking to register trademarks in the United States.

29 March 2016

Lord & Taylor agrees to settle FTC charge it "deceived consumers" over social media native advertising

The Federal Trade Commission (FTC) issued an enforcement policy statement in January that clarified its stance on deceptively formatted advertisements. As we noted at the time, what will be important going forward is how the organisation tackles subsequent enforcement actions. This month the FTC shed some light onto its approach, in particular in the social media environment.

17 March 2016

Old economy remedy in new economy litigation

A preliminary injunction has been issued against ride-sharing service Uber Technologies requiring it to revert to technology which is arguably inconsistent with its app-driven business.

17 February 2016

When the cost of default is $1.2 million

A US district court has enjoined Insurance Depot Marketing Corporation from any activity in connection with the INSURANCE DEPOT mark and awarded damages amounting to over $1.2 million to the plaintiff, holding that an award of statutory damages under the Lanham Act and the federal Anti-cybersquatting Consumer Protection Act would discourage it from using the plaintiff’s mark in the future.

04 February 2016

Domain name management strategies: integrating high-end recovery techniques

Brand dilution, missed revenue, diverted online traffic and negative brand awareness are just a few examples of the significant damage that domain name infringement can have on your brand.

04 February 2016

URS versus UDRP proceedings – choosing the right forum

In 2015 the cases that shed particular light on the burden of proof associated with Uniform Rapid Suspension proceedings were Skechers USA’s struggle to freeze the ‘’ domain name and Prudential’s inability to shut down the third-party registration for ‘’ based on its ROCK SOLID trademark.

04 February 2016

The Deep Web, darknets, Bitcoin and brand protection

Abuse in the Deep Web can be broad and hidden, with cybersquatters and fraudsters trying to ply their trade. However, once detected, there are means to identify the perpetrators and to enforce IP rights.

09 December 2015

Ninth Circuit does about-face in Multi Time Machine v

In Multi Time Machine Inc v Inc, the US Court of Appeals for the Ninth Circuit has withdrawn its opinion and issued a superseding opinion and dissent, holding that no rational trier of fact could find that a reasonably prudent consumer accustomed to shopping online would likely be confused by Amazon’s search results.

29 September 2015

GoDaddy victorious in dispute over OSCARS and ACADEMY AWARDS marks

In Academy of Motion Picture Arts and Sciences v, the US District Court for the Central District of California has entered judgment in defendant GoDaddy’s favour, holding that plaintiff Academy of Motion Picture Arts and Sciences had failed to meet its burden of proving that GoDaddy acted with a bad-faith intent to profit from any of the plaintiff’s marks under the federal Anti-cybersquatting Consumer Protection Act.