TCAM Today

Restricted Access to WHOIS Data Jeopardizes Brand Owners Online

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.

Continue reading “Restricted Access to WHOIS Data Jeopardizes Brand Owners Online”

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

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!

BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office

As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.

For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back. Mark and Lamar’s well-documented bromance is one for the ages. The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains. The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.

Continue reading “BIG TRUSS: A Playoff Story of Opportunism at the Trademark Office”

Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications

Wondering why you haven’t received any updates on the progress of your client’s Madrid Protocol application designating Canada? After reading that question, are you wondering what on earth a Madrid Protocol application is?

Let’s take a step back. The Madrid system is a mechanism that facilitates the registration of trademarks in multiple jurisdictions around the world. One way to file trademark applications in multiple jurisdictions is to engage local counsel in each jurisdiction of interest and work with counsel to file individual applications. By using the Madrid system, however, a trademark owner can file a single international trademark application with the World Intellectual Property Organization (WIPO), and designate one or more jurisdictions based on just this one application.

Continue reading “Don’t Miss Notices from the Canadian Intellectual Property Office regarding Madrid Protocol Trademark Applications”

It’s Perfect! Or, Perfecting Security Interests in Intellectual Property

In our recent post, we discussed the Seven Secrets of Security Interests relevant for owners or buyers of intellectual property. But after an IP owner grants a security interest in intellectual property, how do you make it official?

Welcome to the mysterious world known as perfection. That’s a fancy word for filing the right documents with the correct organizations so everyone knows that the lender has that security interest in intellectual property – and to make sure that the lender has priority over other parties who might have a future interest in the IP.

Continue reading “It’s Perfect! Or, Perfecting Security Interests in Intellectual Property”

High Court TM Profit Award Standard May Be Coming

On June 28, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc. et al., agreeing to weigh in on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to receive a portion of defendants’ profits.

Whether willfulness is a prerequisite to an award of defendants’ profits in trademark infringement cases is a question that has deeply divided the U.S. circuit courts. Half of the circuits have answered the question in the affirmative.[1] The other half have answered the question in the negative.[2] These latter circuits that do not require a threshold showing of willfulness merely view willfulness as one of many factors considered in fashioning an equitable remedy.

Continue reading “High Court TM Profit Award Standard May Be Coming”

FTC Releases New User-Friendly Disclosure Guidelines for Influencers

The Federal Trade Commission (FTC) is not hitting “like” on your influencer engagement campaign, and is down-voting your disclosures.

Earlier this month, the FTC released important new guidance targeted at social media influencers, in language designed to be read by non-lawyers, framing an often confusing legal issue for the people who need to understand it the most: the influencers themselves. These new guidelines, “Disclosures 101 for Social Media Influencers,” were accompanied by a video “Do you endorse things on social media?”, and are designed to show influencers how and when they must disclose material connections to brands to their followers.

Continue reading “FTC Releases New User-Friendly Disclosure Guidelines for Influencers”

Trademark Security Interests in Canada (Guest Post from Canadian Firm)

We recently shared our Seven Secrets of Security Interests with some tips about security interests in IP registered in the U.S. But often, U.S. IP goes hand-in-hand with trademarks, patents, and copyrights registered in Canada. Should security interests against Canadian IP be treated the same as in the U.S.?

We asked our colleague Silvia de Sousa from Thompson Dorfman Sweatman LLP in Winnipeg, Manitoba to describe the basics of security interests involving Canadian trademarks (as well as patents and copyrights). Silvia’s answers appear below. Enjoy!

Continue reading “Trademark Security Interests in Canada (Guest Post from Canadian Firm)”

Be on the Lookout for Potentially Misleading Trademark Solicitations

If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

Continue reading “Be on the Lookout for Potentially Misleading Trademark Solicitations”