Trade Marks 2018

The Trade Marks guide provides expert legal commentary on key issues for businesses. The guide covers the important developments in the most significant jurisdictions.

Last Updated May 30, 2018


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Kirkland & Ellis LLP 's Intellectual Property Law Practice is one of the oldest such practices in a full-service firm in the country, having been an integral part of Kirkland since 1925. Located in the Firm's Chicago, London, Los Angeles, New York, Palo Alto, San Francisco and Washington, D.C. offices, Kirkland has approximately 230 intellectual property lawyers who are experienced in a variety of technical disciplines and registered to practice before the US Patent and Trademark Office. More than 70% of the lawyers are engineers and scientists trained with degrees and professional backgrounds in technical areas.


Trade Marks: Trends and Developments

The value of trade marks has never been higher. As evidenced by the explosion of logos, such as the now ubiquitous logo for the streetwear fashion brand Supreme (appearing as a white font in a red square), on plain white t-shirts or sneakers in the market, the consuming public has a pronounced affinity for brands. See https://www.forbes.com/sites/andriacheng/2018/02/07/flaunting-logos-is-coming-back-into-fashion/#76b34f028723 This rise in what some call “logo culture,” is partly attributable to social media, which is particularly well-suited for optimising labels and brands. This value has encouraged the extension of existing brands into new categories and industries, resulting in increased trade-mark filings worldwide, see http://www.wipo.int/export/sites/www/ipstats/en/docs/infographic_madrid_2017.pdf (showing 5% increase in trade mark applications filed under the Madrid Protocol) and more trade-mark litigation. See  http://www.compumark.com/press-releases/three-quarters-brands-experienced-trademark-infringement-past-year/

Both legacy and new brands are expanding beyond the traditional boundaries of single-industry business (eg, “just” luxury apparel) into industries such as restaurants, hotels, or other hospitality-based businesses. Furthermore, brands have increasingly taken part in collaborations with other brands in both adjacent (eg, Supreme and Louis Vuitton) and distinct (eg, streetwear brand KITH and Coca-Cola) markets. As these brands enter new territories, leveraging their substantial goodwill, it has become more challenging for trade-mark law practitioners who must carefully examine marketplace proximity and assess whether consumers would in fact be confused or, alternatively, have experienced a rise in sophistication such that they can discern between third-party uses of similar marks. Together, this has altered the way that consumers view brands and trade marks, paving the way for a new globalised perspective on branding.   

Growth in United States Patent and Trademark Office Filings

In Fiscal Year 2017, (1 October 2016 through 30 September 2017), more than 425,000 new trade-mark applications were filed with the United States Patent and Trademark Office. This was an increase of more than 10% from the previous year and the US register of trade marks now contains more records than ever before. As noted above, this likely reflects the desire for brands to extend their reach into new goods and services. It may also reflect an increased interest by businesses and individuals to provide additional notice to their competitors that they are using the applied-for term as a source-identifier and wish to protect that term as a trade mark. 

United States Supreme Court Allows Registration of ‘Disparaging’ Trade Marks

In Matal v. Tam, a case involving the band The Slants, the US Supreme Court declared that a portion of the US Federal trade-mark statute, the Lanham Act, which banned “offensive” trade-mark registrations, was unconstitutional because the law violated the First Amendment. The United States Patent and Trademark Office had previously opposed registering the name of the band because it found that the name “The Slants” was disparaging to people of Asian descent. The Supreme Court’s decision also meant that the Washington Redskins, which have been involved in a 20-year legal battle based on a claim that the mark was “offensive,” can keep its registrations intact. 

Social Media Fuels New Trade-Mark Applications

The social media giants, eg, Facebook, Instagram, Snapchat, and Twitter, have expanded the scope of their trade-mark portfolios. In addition to registering the names of the platforms, the companies have also applied for, or already registered, marks such as the Instagram photograph “filters,” Sierra and Hudson and Facebook’s “thumbs-up” button. Businesses have also upped their enforcement of marks on social media, while companies have been quick to capitalise on United States Patent and Trademark Office’s decision that a ‘hashtag’ is registerable. See https://tmep.uspto.gov/RDMS/TMEP/current#/current/ch1200_d1ff5e_1b5ad_3bc.html

Author



Kirkland & Ellis LLP 's Intellectual Property Law Practice is one of the oldest such practices in a full-service firm in the country, having been an integral part of Kirkland since 1925. Located in the Firm's Chicago, London, Los Angeles, New York, Palo Alto, San Francisco and Washington, D.C. offices, Kirkland has approximately 230 intellectual property lawyers who are experienced in a variety of technical disciplines and registered to practice before the US Patent and Trademark Office. More than 70% of the lawyers are engineers and scientists trained with degrees and professional backgrounds in technical areas.