By Rebecca Kay and Charles Harvey

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Background

The famous fox and boot logo was first used by Peal & Co, an English bootmaker. In 1964, Peal & Co sold the goodwill of its business and the use of its trademark to Brooks Brothers UK Limited (a subsidiary of the well-known US menswear group) and in 1965 it ceased trading.  Following the demise of the Peal & Co business, W.S Foster & Son Limited (a shoe retailer on London’s Jermyn Street), recruited an employee of Peal & Co and (apparently at the employee’s suggestion) commenced its own use of the fox and boot logo.  In 2005, Brooks Brothers opened a number of UK stores.  Having realized that some of Brooks Brothers’ shoes featured the fox and boot logo, W.S Foster brought proceedings against Brooks Brothers before the UK High Court.


Continue Reading BROOKS BROTHERS OUTFOXED

By James Stewart

Earlier this month, Radiance Harris and James Stewart attended a roundtable on trademark protection in social media.  The event was hosted by the International Trademark Association (INTA) to create a forum for practitioners to share their experiences in this rapidly evolving area.  This is a multipart series that will discuss potential pitfalls, enforcement mechanisms for brand protection, and strategic tips for engaging in social media.

Practitioners agree that social media is no longer a luxury for “early adopters” or “hip” brands, but a necessity for brands to leverage bilateral communication with consumers, thought leaders, and the press.  If a brand does not have an active presence in social media, a user may create a presence for the brand.  Sometimes these user-generated accounts can adopt a laudatory tone and engage consumers better than the brand could have envisioned engaging consumers.  These accounts can grow to attract many thousands of fans.  However, all too often practitioners have seen brands take an overly cautious stance and become the subject of a dreaded “smear account” (i.e. www.yourbrandsucks.com), in which the negative aspects of a brand or consumer experiences with a brand are highlighted.  

These extremes aside, brand owners work hard to develop compelling intellectual property that uniquely resonates with consumers in a uniform and cohesive way.  Even if a social media presence created for a brand does not adopt a negative stance, does it conform to the brand approved aesthetic?  Are the correct logos, fonts, and colors used?  If they are not, or worse, if the creator has a poor experience with the brand and the tone of the page turns negative, the brand does not have control or ownership of the page or the immediate ability to take control of the message.  The brand may scramble to create its own “official” account to commence damage control, but many times this account will grow at a much slower rate than the rogue account.  Often by the time the brand has come up with this alternative account, the rogue account has grown and an online multichannel social movement has come to life. 


Continue Reading Social Media Part I: Protect Your Brand

Reposted from Intellectual Property Magazine, July 12, 2012

This article discusses the increasingly important role of social media in trademark enforcement efforts, and provides effective tips and strategies for corporate counsel to create a solid, value-driven enforcement


Continue Reading Choosing the right battles: DLA Piper’s Radiance A. Walters on how to avoid the “trademark bully” label

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One of the packed meetings at the United States-China Adjudication Conference was the trademark breakout session, conducted for the most part in Chinese, with simultaneous translations. Several high-ranking judges in the IPR Tribunal spoke on trademark developments. From a U.S. perspective, there is a keen interest in the protection of well known trademarks either registered or unregistered in China. 


Continue Reading Trademark Breakout Session on Enforcing Rights in China

Undoubtedly today’s widespread Internet protest, which has darkened web sites ranging from Wikipedia to reddit to Flickr, has raised public awareness of the looming legislative and public relations battles associated with the Stop Internet Piracy Act (“SOPA”) and the Protect IP Act (“PIPA”), which are currently under consideration in the House and Senate, respectively. While the debate over the merits of these largely similar bills is still heating up (a vote on PIPA is expected as early as January 24), Congressman Darrell Issa (R) of California has announced plans to introduce competing legislation in the form of the Online Protection and Enforcement of Digital Trade Act (“OPEN Act”).


Continue Reading The OPEN Act: Another Legislative Option to SOPA and PIPA

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Michelle Schaefer and Alexandra Marzelli (Washington, DC)

In September,  the U.S. Federal Trade Commission (“FTC”) — the consumer protection agency tasked with regulating U.S. advertising practices for consumer goods — warned companies selling apparel and footwear in the U.S. that all health and fitness claims must be substantiated by competent and reliable scientific evidence.  This warning came from the FTC’s lawsuit against Reebok International Lmtd. (“Reebok”), for alleged deceptive practices related to certain footwear including running sneakers, walking sneakers and flip-flops.  Reebok was charged with making “unsubstantiated claims” that the footwear provides extra tone and strength to key muscle groups (including the buttocks, hamstrings and calves) and strengthens various muscle groups by a certain percentage.  Under the settlement, Reebok agreed to pay $25 million in refunds to consumers.  Reebok has stated that the settlement does not indicate agreement with the FTC’s allegations and it will continue to sell the products at issue, but will market them differently.   


Continue Reading No Proof Reebok Shoes Shaping You Up, Says FTC

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Gina Durham and Erin Wright Lothson (Chicago)

Those involved in the fashion and retail industries are well aware of the challenges associated with combating the global proliferation of commercial-scale counterfeiting and piracy.  With legal rights and remedies often varying on a country-by-country basis, enforcement of intellectual property rights on an international scale can often be fraught with unexpected hurdles and inconsistent outcomes.  The Anti-Counterfeiting Trade Agreement (“ACTA”) aims to change that.

On October 1, 2011, eight countries signed ACTA, namely Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the U.S.  A signing ceremony was held in Tokyo by the Government of Japan.  Representatives of the E.U., Mexico, and Switzerland attended the ceremony and confirmed their continuing support for ACTA.  Those three sovereignties are in the process of finalizing domestic procedures in preparation to sign, and their signatures are expected by May 1, 2013.  Collectively, these eleven countries represent more than half of the world’s trade.


Continue Reading Global Developments Regarding the Anti-Counterfeiting Trade Agreement

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Tamar Duvdevani (New York)

Aspirin. Thermos. Escalator. Cellophane.  What do all of these items have in common?  If your answer is “objects that MacGyver needs to get out of a sticky situation,” you may be correct, but that is not what we were looking for.

Each of these commonplace, generic terms for the objects that they define were once valuable intellectual property before they lost protection through “genericide,” the  process by which trademark rights are diminished or lost as a result of overuse in the marketplace.  Genericide can happen in a variety of ways.  A trademark owner’s failure to police its mark, for example, can result in widespread use of the term by other sellers, thereby reducing the trademark’s ability to identify source.  In other instances, a term intended by the seller to be a trademark for its novel product is understood by the public to be a generic name because there is no other word in the vernacular to describe the product.  Both of these fates can be avoided by thoughtful branding strategies.


Continue Reading Don’t Let Genericide Happen to You