We start with some Hip Hop. It seems like a day doesn’t go by without somebody in Hip Hop having a trademark spat with someone else. With a name like Fetty Wap, we imagine it shouldn’t be too hard to say you own the name, although, here at the Cognate blog we feel as though a character out of Spongebob Squarepants might, quite possibly, have the name “Fetty Wap”. Before we get on with the serious business the trademark application does make us wonder how much longer before the Fetty Wap Wrap hits the stores.
Title: Fetty Wap Reportedly Trying To Trademark His Name
Author: Hot New Hip Hop.com
Date: October 2017
Extract: It looks like Fetty Was ain’t trying to have anyone profit off his name. According to TMZ, the New Jersey sensation has filed some legal docs to get his stage name trademarked. If all goes well and it’s granted, Fetty will be the only guy who can use the name for all things music. And you better not think about trying to put his name on any sort of merchandise, because he’ll have every right to sue.
Title: Adidas Drops Three-Stripe Lawsuit Against Juicy Couture
Author: Promo Marketing.com
Date: 11 October 2017
Extract: Adidas filed a motion in Oregon federal court to dismiss the case, in which the company had said that Juicy’s use of the stripes in its apparel was “a callous disregard for Adidas’ trademark rights.” According to Law 360, the court filings did not reveal the terms of the settlement, and an attorney for Adidas declined to comment on the details of the agreement. This was not Adidas’ first attempt to protect its three-stripe design. Before suing Juicy Couture, the company took legal action against Puma, Marc Jacobs, Sears, Skechers and others.
Title: Campinos to EPO?
Author: World Trademark Review
Date: 10 October 2017
Extract: German legal magazine JUVE is reporting that António Campinos, the current head of the EUIPO, is set to be elected president of the European Patent Office (EPO). Claiming to have heard from the EPO’s board of directors, it is understood the search for a new EPO president has “produced few suitable candidates”, with Campinos expected to be selected today and to succeed president Benoît Battistelli from July next year. Our sister title IAM understands that the other candidate for the role is Cuno Tarfusser of Italy, who is a judge at the ICC and has no IP background. “Hard to see anything other than a clear Campinos win,” is the general consensus – and, if true (update: it’s true and here’s our analysis), it will be a hefty loss for the EUIPO, and speculation is already underway about who will fill his shoes in Alicante… (TJL)
Title: Strongest Law Firm Brands Identified
Author: World Trademark Review
Date: 12 October 2017
Extract: In the Acritas Global Elite Law Firm Brand Index 2017, Baker McKenzie has again been declared the strongest firm brand, extending its lead over competitors on the list. While populated by full-service law firms, those in the top-20 ranking also boast a significant level of trademark expertise.
The ranking is presented as a strength index, working down from the number one spot (which boasts a ‘100’ score).
The top 20 law firm brands according to the research are………
Title: Turkish Patent and Trademark Office Updates Proof of Use Guideline
Author: Lexology / Baker & McKenzie
Date: 12 October 2017
Extract: Following the enactment of the Industrial Property Law No. 6769 (“IP Law“) on January 10, 20171, the secondary regulations and guidelines on implementation of the IP Law have been published. One of the new procedures brought with IP Law is requesting proof of use in trademark oppositions. Turkish Patent and Trademark Office (“TPTO“) published its “Guidelines for Proof of Use and Its Examination Principles in Trademark Oppositions” (“Guideline“) on April 28, 2017. The Guideline is updated with respect to legal grounds and merits of the procedure on September 30, 2017. The Guideline can be accessed on the TPTO’s website2 and it is published in only Turkish language.
Title: Trademark rights and protection in Thailand
Author: Lexology / Ananda Intellectual Property
Date: 13 October 2017
Extract: In Thailand, trademark ownership is determined on a first-to-file basis. It is therefore prudent for businesses that conduct (or envision that they will conduct) business in Thailand to file a trademark application, as it is difficult to challenge a prior identical or similar mark and the coexistence of identical or similar marks is prohibited in Thailand. Section 67 of the Trademark Act offers the possibility for any interested party to petition the IP Court to cancel a prior registered trademark within five years of registration by proving that it has better rights to the trademark. However, under existing case law, only marks widely known and used in Thailand can benefit from such protection.
Title: WWD Law Review: Fast Fashion Fights Back, LuLaRoe’s Woes and the Name-Change Game
Date: 21 October 2017
Extract: A new trend is swiftly emerging among fast-fashion retailers. Long known for taking runway looks and translating them into more affordable versions for the masses, and quietly settling any lawsuits that come their way, giants like H&M and Forever 21 are not keeping quiet any longer when faced with a cease-and-desist letter.
Forever 21 made headlines last spring and summer after filing declaratory judgment suits against Adidas and Gucci, asking a California federal court to hold that it is not legally in the wrong for making use of what the Italian design house and German activewear giant respectively claimed were trademark infringing uses of their individual striped trademarks.
Title: California Cannabis Trademark Registration: Yes, It’s Really (Going to Be) A Thing (Kind Of)
Author: Brand & Brand Law Firm
Date: October 2017
Extract: The beginning of any regulatory period is exhilarating, yet filled with questions, starts-and-stops, and ever-shifting priorities. So it is with cannabis regulation in California, on the eve of its first issuance of business licenses for recreational cannabis sales. Exciting, but where does this leave companies ready to open their doors but unable to protect their brands?
Earlier this year, California was set to create two new state trademark classes specifically for cannabis goods and services as part of California Assembly Bill 64. At the last minute, California shelved this pending legislation, opting instead to continue its alignment with the federal USPTO policy and prohibiting trademark registration for marks used in connection with goods and services that violate the Controlled Substances Act (CSA).
Until now. We recently learned directly from the California Secretary of State that beginning January 1, 2018, cannabis companies in full compliance with state regulations may obtain a state trademark registration for cannabis-related services (even if in violation of the CSA). This means that once you obtain a state and local license to operate your cannabis company, you’ll be able to file a California state trademark application to protect your brand in connection with your cannabis-related services. Unfortunately, the Secretary of State still won’t allow registrations covering goods like cannabis flower or edibles––only services such as retail dispensary or distribution services.
Questions? We know you have them. Get in touch; we’d love to guide you through this. And check out other information we’ve shared on state trademark registration. Creating a comprehensive state trademark strategy is worth considering.