Cognate's Trademark Blog

Trademark Roundup: 11 January 2018

Looks like we are now back in the swing of things. Here’s a few articles from the past week that may be of interest to those of you following developments in trademark.

Title: The Importance of Trademarks When Choosing A Domain Name

Author: Silicon Republic

Date:  11 January 2018


Extract:  If you’re building an online branding strategy, you need to think about trademarks. Matheson partner Deirdre Kilroy has the essential checklist for securing your online brand.

Choosing a good brand for a website is not easy. It can be a challenge to get the domain name that you want. Once you find an available domain name that you like, it can be tempting to start using it immediately. However, it is worth spending the effort and time to find a good name that is protectable, and in which you can build real value.

At Matheson, we recommend that every online company thinks long and hard about its online brands and reviews its online branding strategy periodically. Take the time required to select a protectable brand.


Title: USPTO pledges to hire “substantial number” of examiners following record year of trademark activity

Author: World Trademark Review

Date: 11 January 2018


Extract:  New figures show that the US Trademark and Patent Office (USPTO) received over 440,000 new trademark applications in 2017, a rise of more than 13% year-on-year. Writing for World Trademark Review, the USPTO’s trademark commissioner, Mary Boney Denison, has promised that a “substantial number” of examiners would be hired in 2018 to ensure that the office can effectively handle the increase in application volume.

As first reported on the iPelton blog, records from the USPTO Trademark Electronic Search System (TESS) indicate that the USPTO received 440,768 new trademark applications in 2017. This was a rise of 13.4% from the 2016 figure of 389,000, wherein that year only saw a modest increase of new applications from the 2015 figure (of 378,000). Last year was also a record year for the number of trademark registrations at the USPTO, at 255,008. As Erik Pelton, of Erik M Pelton & Associates, notes: “With the rate of growth in application filings and registrations issued, the USPTO trademark register indicates steady and increasing growth in the economy.”


Title: Trending Trademark Topics 2018


Date: 8 January 2018


Extract:   In 2017, the U.S. Supreme Court ruled that the Trademark Office’s long-standing prohibition against registering disparaging trademarks was unconstitutional under the First Amendment.

There were many eyes on the court’s ruling because of the name of a certain professional football team, but the ruling first allowed the lead singer of an Asian-American band to register the trademark “The Slants” for his band name. Although the Trademark Office has not seen the opening of the floodgates that some predicted in terms of applications for disparaging marks, there are at least several dozen noteworthy applications that would have been automatically refused by the Trademark Office that may now proceed to registration. As of now, the Trademark Office has not examined any of these applications despite some being filed more than six months ago, but examination will likely be forthcoming in 2018.


Title: Hogan Lovells appoints Leopold von Gerlach as Chair

Author: Press Release

Date: 10 January 2018


Extract: Leo first joined the Board in May 2014 as the representative for Continental Europe and is an Intellectual Property, Media and Technology partner. As an accomplished IP litigator with extensive trial experience, Leo mainly acts against counterfeit and grey market goods, look-alikes, and other types of IP infringements. His clients from various industries include The LEGO Group, Citi, eBay, PayPal, Estee Lauder and Gibson Brands. He has been named as ‘one of the leading names in trademark law’ by the World Trademark Review 1000 report and has also been commended by Chambers for his strategic approach to IP litigation. He and Washington, DC partner Cate Stetson led the 2015-2016 project to produce the consolidated history of the firm.


Title:  International Trademark Association Elects Tish Berard Of Hearts On Fire As 2018 President

Author: Daily

Date: 12 January 2018


Extract:  The International Trademark Association (INTA) announces the election of Tish Berard as the 2018 President of the Association and Chair of its Board of Directors. Ms. Berard, formerly Vice President and General Counsel for Hearts On Fire Company, LLC, headquartered in Boston, Massachusetts, takes on this role after having served on INTA’s Board since 2011.

Her term coincides with the start of INTA’s 2018‒2021 Strategic Plan, which aims to promote the value of trademarks and brands, reinforce consumer trust, and embrace innovation and change.

“I am honored to partner with INTA as we work toward prioritizing the key directions of our new Strategic Plan, while remaining laser focused on our mission to strengthen trademark protection, achieve harmonization of trademark laws, and continue advocacy for effective enforcement mechanisms around the world,” said Ms. Berard.

As one of her goals during her presidency, Ms. Berard will seek to advance trademark protection for small and medium-sized enterprises (SMEs). She has assembled a Presidential Task Force to explore what it means to be an SME from different geographic regions, to assess the interest of SMEs and entrepreneurs in intellectual property (IP), and to identify effective communication strategies for conveying the importance of IP to these groups.


Title:  International Trademark Law: Thoughts on Japan’s Post-Registration Opposition Proceedings

Author: JD Supra – Press Release

Date: 8 January 2018


Extract:  Most nations with fully-developed trademark legal frameworks allow for opposition proceedings with regard to newly filed applications for trademarks. Most jurisdictions, like the United States, provide that opposition proceedings shall occur during the registration process, prior to issuance of the relevant Certificate of Registration. However, about 10 jurisdictions allow for opposition proceedings ONLY post-grant of registration. Of those few, many — e.g., Germany, Denmark, Poland, etc. — are within the European Union and thus observe their own domestic trademark laws and the EU system. As such, for those nations, two opposition proceedings are available and many trademark practitioners avail themselves of both.

Japan, however, is an outlier, having an opposition system that is only post-registration. Here are a few thoughts on Japan’s post-registration opposition proceedings.


Title: Trademark litigation slump continues; the law firms capitalising on dispute-related work revealed

Author: World Trademark Review

Date: 9 January 2018


Extract: Behind Paywall


Title:    China Trademarks: 12 Resolutions for 2018 (Part One of Two)

Author: China Law Blog

Date: 8 January 2018


Extract:  In the spirit of starting out 2018 on the right foot, I have compiled a list of 12 trademark-related resolutions for any company that does business in China and has at least one brand that they care about.

To the resolutions!

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