Tips for developing an efficient worldwide trademark application filing strategy

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So you’re launching a new product line worldwide. Or maybe you’re rebranding a division of your global business. Or perhaps you’ve recently conducted an audit of your trademark portfolio and noticed several gaps in coverage.

Regardless, you’re ready to file new trademark applications around the world ‒ and we’re sure you want to make these filings as efficient and cost-effective as possible.

One way to keep costs down is to take advantage of trademark application filing systems that cover multiple jurisdictions. These systems allow you to register a trademark in more than one country by filing only a single application.

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The Impact on Brands when Trademarks are Used in Military Strategy

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Western companies with trademark rights in Russia are feeling the ripple effects of the Ukrainian conflict.  In response to the economic sanctions and boycotts imposed by the U.S. and other Western countries, Russia has threatened to suspend the intellectual property rights of companies that have ceased operations in Russia.  Additionally, there has recently been an increase in bad faith trademark filings for various brands across a wide range of industries from Chanel to Audi.  Moreover, it appears that Russian courts may allow the infringement and misappropriation of trademarks owned by Western companies in light of a recent decision involving the character Peppa Pig, where the court cited sanctions as a basis for refusing to recognize the Western-based company’s intellectual property rights in the popular cartoon character.

Even those businesses with longstanding ties within Russia don’t appear to be safe.  Certain companies closing locations in the country in response to the conflict in Ukraine are finding that third parties are filing trademark applications for blatant replicas of their brands.  Even more disturbing is that should the Russian government decide to remove trademark protections for Western companies altogether, then a third party could step in and offer goods and services under identical marks.  Depending upon how things play out in Russia, Western brand owners are in serious danger of losing their intellectual property investments in the country.  Exacerbating the problem for these brands is that finding local counsel willing to assist them may be extremely difficult.  Fear for personal safety and the threat of retribution may encourage many trademark attorneys in Russia to steer clear of matters involving companies from “unfriendly” countries.

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NFTs: The Harbinger of Property Rights in the Metaverse?

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Non-fungible tokens (“NFTs”) continue to dominate the crypto-zeitgeist. It is beyond dispute that they are currently a major economic and cultural force. In 2021, sales surged to approximately $25 billion. They have been featured in high profile television commercials during the Olympics and the Super Bowl. And Nike recently purchased the NFT developer RTFKT Studios, signaling its intention to be a dominant provider of digital fashion in the metaverse.

Despite all this, it remains unclear what legal rights are conveyed with the purchase of an NFT. The academic consensus is that, absent a “smart contract” that expressly includes intellectual property (“IP”) rights, purchasing an NFT does not convey any copyrights or trademark rights. Yet, the creation of an NFT (called “minting”) is almost certainly limited by recognized IP and other legal principles. These issues have begun to percolate up through the courts.

This article explores lingering, undefined NFT questions through the lens of several pending lawsuits. While many articles just describe the facts of each case, this article focuses on the most interesting legal arguments that each makes. It also identifies how decisions by these courts may form the basis of property rights within the metaverse. And ultimately, it questions whether the emergence of such lawsuits undermines blockchain as a decentralized institution.

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Help! Our Intellectual Property is Being Infringed – An Investigatory Checklist

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I don’t love surprises. Well, if you want to send me a surprise red velvet birthday cake, please feel free. Otherwise, I like being prepared – and infringement of intellectual property is one type of surprise that you can prepare yourself to handle. To assist in that effort, here’s a non-exhaustive list of questions you can ask yourself and your team members, to help determine next steps if you suspect infringement of your trademarks or copyrights. These questions may also come in handy if you find yourself on the receiving end of an allegation of infringement.

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Beyond whack-a-mole1: Maximizing the impact of your internet monitoring program

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E-commerce was already booming when the pandemic struck, and now it feels ubiquitous. Consumers spent $861.12 billion online with U.S. retailers in 2020, up 44.0% from $598.02 billion in 2019, representing 21.3% of total retail sales last year compared with 15.8% the year prior.2 The statistics only underscore what we’re all witnessing — technology stocks appreciating rapidly, a steady drumbeat of brick-and-mortar retailer bankruptcies, shopping mall closings, conversion of massive properties to logistics centers, catch-up efforts by traditional retailers to offer online sales and curbside pickup, and our own increasingly online shopping habits. Even when the sale of goods and services are not executed online, brick-and-mortar sellers are nonetheless utilizing the internet like never before to reach potential customers, educate them about their products, and coax them into stores. Whatever the world looks like after the pandemic ends, these e-commerce gains are likely here to stay.

It has never been more important therefore for brand owners to monitor and protect their brands online. E-commerce is a counterfeiter’s paradise, as explained succinctly by the OECD, “E-commerce platforms represent ideal storefronts for counterfeits and provide powerful platform[s] for counterfeiters and pirates to engage large numbers of potential consumers.”3 Why is this? E-commerce enables counterfeiters to send cheap knockoffs, which garner high margins, to unwary purchasers across the globe with little risk of legal repercussions.4 The first obstacle to legal enforcement is the anonymity afforded by both the internet generally and e-commerce platforms specifically. ICANN’s interpretation of Europe’s GDPR privacy legislation has generated a blackout of Whois information, making it more difficult to identify the perpetrators behind many illicit webshops.5 Moreover, e-commerce platforms do not operate by the same “know your seller” obligations burdening brick-and-mortar retailers. Whereas a brick-and-mortar retailer could be found liable for selling a counterfeit product in its store, and therefore presumably conducts diligence on and obtains contractual protections from each of its sellers, e-commerce platforms are considered mere intermediaries connecting sellers with buyers, ignorant of and without liability for the nature or quality of the products transacted. As summarized by the U.S. Department of Homeland Security, “While the U.S. brick-and-mortar retail store economy has a well-developed regime for licensing, monitoring, and otherwise ensuring the protections of intellectual property rights (IPR), a comparable regime is largely non-existent for international e-commerce sellers.”6

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Rebranding Roadmap – A Checklist for Changing Brand Names and Company Names

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So you’re thinking about changing your company name, brand, or both.  We usually like to allow at least a few months to identify the new name and initiate protection.  To help you plan, here’s a high-level overview of significant steps in the process.  Happy rebranding!

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Will New FTC Endorsement Guidelines Make A #Hashtag of Influencer Advertising?

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In a world where social media influencers can wield more power over consumers than network media buys, the Federal Trade Commission’s (FTC) Endorsement Guides felt increasingly like a relic from an earlier era. While not wholly ineffective, the FTC’s formal guidance to businesses on the use of endorsements and testimonials in advertising was still a policy with roots in the limited media environment of the 1970s, the decade when the Guides originated. There were no Instagram influencers, no sponsored posts, and no hashtags in 1980, when the Guides were finally enacted, and even cable television was in its infancy. And despite important and well-intentioned 2009 amendments crafted during the early days of social media, so much has happened in the intervening years that the Guides never seemed fully engaged with the radical implications of a marketing environment where blurring the lines between advertising and reality is more often a feature rather than a bug.

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Tips for Using Data Privacy Compliance to Enhance Your Brand

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Companies in 2020 must comply with more data privacy laws than ever before. Effective on January 1, the California Consumer Privacy Act (CCPA) contains the most complex data privacy compliance requirements in U.S. history. Some other states have their own requirements, and more states are following suit; many are considering data protection laws while their legislatures are in session.

Compliance with the CCPA and other relevant privacy laws and industry standards involves much more than a brief privacy law update and presents multiple opportunities for customer engagement. Consider using those opportunities to enhance your relationship with your customers. How companies handle consumer data has already become one way in which consumers evaluate whether to do or continue doing business with a particular company. Poorly handled data privacy issues quickly create negative customer experiences, online reviews, and bad press. Differentiate your company by handling customer data — and customer relationships — with intentionality and care.

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Restricted Access to WHOIS Data Jeopardizes Brand Owners Online

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As many brand owners know, WHOIS data is the publicly available information on who has registered a particular internet domain name. In layman’s terms, WHOIS records are akin to land title or property tax records: a record of who owns the internet property of domain names available in .com, .net and other generic top-level domain (gTLD) spaces. Each WHOIS record contains basic contact information for the domain name registrant: name, address, phone number, email address and certain other technical attributes. Since the dawn of the internet, gTLD registrars and registries – those companies who sell domain names – have collected contact information from all registrants at the time of registration.

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Introducing TCAMToday – a Faegre Drinker℠ blog on T®ademark, ©opyright, Advertising & Media

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Faegre Drinker Biddle & Reath LLP (Faegre Drinker) launched global operations on February 1, 2020. Faegre Drinker is the combination of Faegre Baker Daniels, an international law firm with deep roots in the Midwest, and Drinker Biddle & Reath LLP, a full-service national law firm with storied East Coast origins.

With more than 1,300 attorneys, consultants and professionals in 22 locations across the U.S., U.K. and China, Faegre Drinker is one of the nation’s 50 largest law firms based on size and projected gross revenue.

We are very excited to introduce TCAMToday, Faegre Drinker’s successor to the DB®anding Blog.  Our newly expanded team of over 30 T-CAM professionals will continue to provide fresh commentary on Trademark, Copyright, Advertising and Media topics ranging from anticounterfeiting to sweepstakes and promotions.  Watch this space!