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18 May 2018

Rapper Dr Dre's opposition to DR. DRAI for health-related services dismissed

The US Trademark Trial and Appeal Board has dismissed rapper Dr. Dre's opposition to the registration of the word mark DR. DRAI and the figurative mark DOCTOR DRAI for goods and services in the field of women's and men's health.

17 May 2018

The future’s green: cannabis brands on the rise in Canada

With the legalisation of recreational cannabis impending in Canada, new business models and opportunities are emerging for a surprising variety of brand owners.

09 May 2018

Is the trademark litigation slump over? 2018 trends and predictions

Analysis of the latest data from Lex Machina suggests that US trademark litigation filing numbers will be flat in 2018 – potentially ending a four-year decline. We also take a look at the most popular venues for litigation and the go- to law firms so far in 2018.

01 May 2018

Coexistence of trademarks: Federal Court's decision reaffirms limited scope of consent agreements

The Federal Court of Canada has upheld the refusal to register EDMOND DE ROTHSCHILD because it was confusing with the registered mark ROTHSCHILD - despite the fact that the applicant submitted a consent agreement with the owner of the cited mark.

01 May 2018

Reducing the phantom menace: strategies for protecting and using adaptable marks

Although phantom trademarks have clear advantages for their registrants, the US Patent and Trademark Office has been somewhat unpredictable in its response to applications for such marks over the years. Various strategies may help to enhance the likelihood of successful registration and use.

30 April 2018

US government ranks Canada’s border enforcement on same level as China; Special 301 adds Saudi Arabia and UAE

The USTR has published the 2018 Special 301 Report, and Canada has been added to the Priority Watch List due to “a failure to resolve key longstanding deficiencies in protection and enforcement of IP”.

26 April 2018

In-house perspectives on diversity in the trademark industry: “All of us in this field need to do more”

The theme of today’s World IP Day is ‘Powering change: Women in innovation and creativity’. In the first of a two-part piece, corporate trademark professionals reflect on the topic of the day.

19 April 2018

Despite court's non-infringement ruling, TTAB affirms Section 2(d) refusal of MOAB for automobiles and parts

The US Trademark Trial and Appeal Board has affirmed a Section 2(d) refusal to register the mark MOAB for motor vehicles, finding it likely to cause confusion with MOAB INDUSTRIES for automotive conversion services.

12 April 2018

Trademark trolls in Canada? Data reveals rise in “suspicious” applications are nearly all related to millionaire Gleissner

After recent reports of a steep rise in so-called “trademark trolls” in Canada, research suggests most are related to notorious trademark filer Michael Gleissner – leading to calls for the Canadian IP Office to “take action”.

11 April 2018

Despite podcast's popularity, SERIAL trademark registration denied as generic

The US Trademark Trial and Appeal Board has ruled that 'serial' is generic for a multi-instalment audio programme and cannot be registered as a trademark.

07 April 2018

Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners

​​​​​​​Research from World Trademark Review reveals the political issues that counsel say could significantly impact enforcement efforts, both now and in the future.

03 April 2018

TTAB: REMEMBER THIS NAME fails to function as trademark for legal services

The US Trademark Trial and Appeal Board has upheld an opposition to the registration of the slogan “remember this name” as a trademark for legal services on the ground that the phrase does not function as a service mark.

28 March 2018

EATRIGHT decision: Ninth Circuit dishes out food for thought on summary judgment

In a case involving the use of EATRIGHT AMERICA on food products, the US Court of Appeals for the Ninth Circuit has vacated a district court’s grant of summary judgment.

23 March 2018

Warning: discovery misconduct can cost more than just your case

In Klipsch v ePRO the US Court of Appeals for the Second Circuit has adopted a standard that “discovery sanctions should be commensurate with the costs unnecessarily created by the sanctionable behaviour”.

23 March 2018

“Trial of the century” or “tinfoil hat conspiracy”? War of words erupts over online filing models

LegalForce founder Raj Abhyanker has filed an amended complaint in his litigation battle with LegalZoom. In turn, LegalZoom has defended its practices but, with the USPTO also in Abhyanker’s sights, the case is one that trademark counsel should follow closely.