Eric Perrott’s Post

I have been working with clients on issues with counterfeits on a number of international marketplaces that I was not as aware of, so I am sharing my growing list of IP take-down resources for growing international e-commerce sites (as of 4/17/2024) 👇 Before filing any claim, make sure to: 🔹 Understand the specific IP being infringed. Are you dealing with a counterfeit, a copyright violation, a patent violation, or a trademark infringement? Something else? 🔹 Clearly state your grounds for your claim in the forms- Ensure you have all necessary documentation and evidence to support your infringement claim. 🔹 Follow the specific platform's procedure. Use the correct forms and follow the steps outlined in their policy to avoid unnecessary delays. These requirements are often different from Amazon/Walmart/eBay and sometimes require authorization documents. Got any forms/policies for websites that I'm missing? Please share! 🔵 Shein IP Policy: https://lnkd.in/eexz48c6 Infringement Reporting: https://lnkd.in/epBUQf9F 🔵 Temu IP Policy: https://lnkd.in/eFDq7xuq Infringement Reporting: https://lnkd.in/eE7gs-M2 🔵 DHGate IP Policy: https://lnkd.in/eeBJbVtM Infringement Reporting: https://brand.dhgate.com/ (login required) 🔵 AliExpress IP Policy: https://lnkd.in/erG_gVzh Infringement Reporting: https://lnkd.in/erypP-kt 🔵 Wish IP Policy and Infringement Reporting: https://lnkd.in/efxGD2hc 🔵 Taobao IP Policy: https://lnkd.in/ev_gYUbS Infringement Reporting: https://lnkd.in/eBBBsvaz 🔵 GearBest IP Policy: https://lnkd.in/e_2a8s23 Customer Service Email for IP Issues: legal@gearbest.com (No specific form, submit a Notice of Claiming Infringement via email) 🔵 Banggood IP Policy: https://lnkd.in/eY6-X_xG Infringement Reporting Email: Contact through specified mailbox in the "Contact Us" section. 🔵 LightInTheBox IP Policy: https://lnkd.in/exV7ke-f Infringement Reporting: ipip@lightinthebox.com 🔵 Lazada IP Policy: https://lnkd.in/eF5BwyjZ Infringement Reporting: https://lnkd.in/etkfXqdb 🔵 Joom IP Policy: https://lnkd.in/e2VPex-h Infringement Reporting Email: ipr@joom.com

Let me introduce you to "Rick Brown" (Rickbrown@markprofilers.com) from "Mark Profilers"- "Rick" is not a real person, and "Mark Profilers" is not a real law firm. But "Rick" will try to scam you by sending you threatening messages like: Subject: Trademark Infringement On The Business Name Response Required Importance: High   I represent the Legal Department of Mark Pro Filers and bring to your attention a crucial matter regarding the potential trademark registration of the brand name [REDACTED] by a startup business. Our extensive search revealed your association with this brand name, and it is imperative that we address this issue promptly.   I can be reached at (213) 491-1835 (EXT 20) for any further discussion. If you are worried about trademark protection, don't call "Rick." Call a real trademark attorney and come up with a plan to protect your brand. These scammers are getting more and more sophisticated, with websites that look professional and, on their face, look legit. They are not. Stay vigilient! #scams #trademarks

AliExpress is a constant hotbed for counterfeits. Worse, if you've ever tried to get something removed from AliBaba websites, it can be incredibly difficult because of a IPR registration process that requires way more information than most IPR platforms. AliBaba has now released a beta form allowing brand owners to submit takedown notices without registration: https://lnkd.in/erypP-kt This is a step in the right direction for situations in which time is of the essence or in the case of a one-off, targeted takedown notice. For everything else, I will still take the time to register the IP with the IPR systems, but this is a good secondary option. #brandprotection #counterfeits

In most cases, the USPTO requires "consent" from the name, image, or likeliness of a person portrayed in a trademark filing. This applies to everyone, including famous celebrities who registered their names or likeliness in a trademark filing. This has been the USPTO's policy for a long time and it is extremely helpful in stopping third parties from registering someone's name without them knowing about it, and then using that registration in a harmful way. Those filings, like every other filing made with the USPTO are public records 👇 #trademarks #theboss

According to NPR, the New York Times has filed takedown notices against hundreds of "Wordle" clones that use online services like Github. The NYT cannot claim exclusive rights in the "concept" of a game but appears to be making both trademark and copyright claims against several creators of Wordle clones. NYT might have a policing problem based on years of non-enforcement. Since Wordle took over the puzzle world in 2021, there have been countless spinoffs using the name format, including: Worldle: Guess countries based on silhouettes. Quordle: Solve four puzzles at once. Nerdle: Create correct math equations. Lewdle: Focuses on vulgar words. Lordle of the Rings: Themed around J.R.R. Tolkien's universe. Taylordle: Taylor Swift-themed Wordle. Murdle: Combines Wordle with hangman. Gordle: Guess NHL players' last names. A Greener Wordle: Environmental and climate change-themed. Sweardle: Focuses on four-letter swear words. Squirdle: A Pokémon-themed variant. Bikle: Based on cyclists' last names. Phordle: Themed around the band Phish. Absurdle: Adapts its answers to make the game harder. Passwordle: Try to crack a 12-character password. Hurdle: Play multiple Wordle rounds in a row. Dordle: Solve two Wordle puzzles at the same time. Hello Wordl: Customize the game with different word lengths. Crosswordle: Combine Wordle gameplay with crossword puzzles. Sedecordle: Solve sixteen Wordle puzzles simultaneously. Artle: A National Gallery of Art game to identify artworks. Heardle: Guess a song from its first few seconds. At what point does a 'brand' become generic? We might be watching it happen in real time. If consumers believe that "Wordle" is the "type" of game (e.g. a Wordle-like game), then it would follow that consumers would not be confused by Quordle, Dordle, etc. because they would not think it was associated with the creators/owners of "Wordle." The NYT would strongly disagree with the above and argue that WORDLE is a registered trademark and that consumers are likely to be confused by all of these other similar-named games. What do you think? #wordle #trademarks #copyrights

The USPTO has proposed increasing trademark fees and making deficient trademark filings more expensive by including "surcharges." The base fee will be $350 per class but will increase by $100 if any of the following are missing: 🔹 Applicant's Name and Domicile Address - The application must clearly state the name and address where the applicant is domiciled. 🔹Legal Entity of the Applicant - The application must specify the type of legal entity (e.g., corporation, partnership, individual). 🔹Citizenship or State or Country of Incorporation/Organization - For individual applicants, citizenship is required. For juristic applicants, the state or country of incorporation or organization must be specified. 🔹 Sole Proprietorships, and Names and Citizenship of General Partners or Active Members - If the applicant is a domestic partnership or joint venture, the names and citizenship of general partners or active members need to be included. If applicable, the state of organization and the name and citizenship of the sole proprietor must be provided. 🔹 Basis for Filing: The application must specify the basis for filing and meet all requirements for the chosen basis under § 2.34. 🔹 Goods/Services Classification: If the application includes goods/services in more than one class, it must comply with the classification requirements. 🔹 Filing Fee: The correct filing fee for each class of goods/services must be included. 🔹 Verified Statement: A statement that meets the requirements of § 2.33, dated and signed by an authorized person, is necessary. 🔹 Mark Information: If the mark is not in standard characters, a digitized image of the mark must be attached. For marks including color, a statement naming and describing the color(s) is required. 🔹 Translations and Transliterations: Non-English wording must be translated, and non-Latin characters must be transliterated. 🔹 Name or Likeness of an Individual: If the mark includes a name or likeness of an individual, a statement identifying the individual and their consent, or a statement that the mark does not identify a living individual, is required. 🔹 Ownership of Prior Registrations: If applicable, a claim of ownership of prior registrations must be included. 🔹 Attorney Information: For applicants not domiciled in the U.S., the designation of a domestic representative is required. 🔹 Goods/Services Identification: The goods and services must be correctly classified and identified, preferably using the Acceptable Identification of Goods and Services Manual. Failure to include any of these details can result in the application being considered incomplete, triggering the additional fee for insufficient information. These fees are in place yet, but there has never been a better time to work with an experienced attorney to file a trademark application. #uspto

New trademark fees are coming to the USPTO, according to a Notice of Proposed Rulemaking released today. Trademark applications should expect to pay at least $100 more per class, but its structured in a way to encourage short, efficient applications. 👇 The USPTO has proposed a base fee that is $100 per class more expensive than the current "Teas-Plus" filing. The "base application" must use the USPTO's pre-approved ID language, and if the applicant misses one of seventeen required pieces of information, a fee of $100 per class will be due. Want to write your own ID instead of using the preapproved language? The cost will increase $200 per class for the first 1000 characters, and then an additional $200 per class for each additional 1000 characters. Noticeably absent from this proposal is any attempt to deal with bad-faith filers or the main source of 'laundry list' inefficient filings. The USPTO "decided not to charge foreign or international registrants a higher fee than domestic registrants for these services" even though "[o]wners of these registrations have not been required to prove use prior to registration” and “are more likely to describe an excessive list of goods and services, to offer suspect specimens and declarations, and to require auditing.” There are also no increased charges for bad specimens/suspicious specimen farm submissions. Instead, these fees apply to everyone, and here is a breakdown of the proposed fees: 💵 Base Application Fee: For filing an application, per class: New fee set at $350. 💵 Surcharges: Additional fee for insufficient information, per class: New fee set at $100. Fee for using the free-form text box to enter the identification of goods/services, per class: New fee set at $200. If using free-form, for each additional group of 1,000 characters beyond the first 1,000, per class: New fee set at $200. 💵 Amendment to Allege Use (AAU) and Statement of Use (SOU) Fees: For filing an SOU/AAU, per class: Increased from $100 to $150. 💵 Renewal/Maintenance Fees: For filing a §8 declaration, per class: Increased from $225 to $300. For filing a §15 declaration, per class: Increased from $200 to $250. 🔺This means most 6-year renewals will be $550 per class with incontestibility. For filing a §9 registration renewal application, per class: Increased from $300 to $350. 🔺 This means most 10-year renewals will be $650 per class. For filing a §71 declaration, per class: Increased from $225 to $300. 💵 Letter of Protest Fee: For filing a letter of protest: Increased from $50 to $150. 💵 Other Filing Fees: For filing a petition to the Director: Increased from $250 to $400. For filing a petition to revive an application: Increased from $150 to $250. Thoughts on the new fee proposal? #uspto

Having good relationships with opposing counsel and other attorneys in your field makes difficult interactions easier and helps provide better service to clients. I found out that I was nominated by my peers, and then selected to the Super Lawyer "Rising Stars" list in both 2023 and 2024. I don't do any advertising/paid profiles with Super Lawyers, but every year I submit a list of colleagues and opposing counsel that I've worked with and was impressed by. From what I understand, the Super Lawyer list is very 'peer' driven, so it's definitely affirming to see that other lawyers might like working with me a well! Good relationships help both sides start from mutual respect and understanding- it also makes the difficult calls much more impactful when they know you and know your 'default' isn't being a jerk to everyone. #trademarklaw

Did you know that the USPTO currently denies trademark applications that reference a living person without their consent? The Supreme Court will soon decide whether the USPTO's requirement is unconstitutional, but in the meantime, the USPTO has continued its practice of requiring the disclosure and consent for trademark filings with trademarks that appear to reference a living person whose consent is not of record. This requirement applies to everyone, not just famous or well-known people. I compiled some recent examples of Office Actions from just this week: ✨ Trademarks that might include names: HARRISON CLARKE VENTURES: Query on whether Harrison Clarke is a living individual. AKRAM HANNA: Examination of whether Akram Hanna is a specific living person. ELEANOR CURTAIN PUBLISHING: Examination of whether Eleanor Curtain identifies a living individual. STELLA BLANC: Inquiry if Stella Blanc is a living person's name. ART LEON: Inquiry about whether Art Leon refers to a specific living individual. ANTOINE DE SAINT-EXUPERY: Inquiry if the mark is associated with the living individual Antoine de Saint-Exupery. ✨ Nicknames, Pseudonyms, or Character Names: DR. OHHH JUICE: Clarification needed if Dr. Ohhh is associated with a living individual. TWEAK NIK: Query regarding the identification of a living individual. THE LIPSTICK GUY: Examination if this identifies a particular living person. DR. A., REVITALIZE YOUR LIFE: Inquiry about the association with a living individual named Dr. A. ✨ Company or Brand Names Including Personal Names: MESA MIA BY JENNY MARTINEZ: Need to ascertain if Jenny Martinez is a living individual. BILLY BOB'S REPAIR & TIRE: Inquiry if Billy Bob is a name of a living person. MIKAMI SHOKURAKU: Examination if Mikami Shokuraku signifies a living individual. ✨ Celebrity Names or Well-known Personalities: NICKY JAM: Question if Nicky Jam is a living individual's name. BAD BUNNY'S MOST WANTED TOUR: Clarification on whether Bad Bunny identifies a living individual. FLOYD MAYWEATHER: Inquiry if Floyd Mayweather is associated with a living person. If you are applying for a trademark that references a living person, be prepared for a refusal that requires that person's consent in order to proceed with the registration. #uspto #trademarks

Many people are learning the intricacies of generative AI and copyright law, but can you use generative AI (chatGPT/etc) to develop trademarks? The answer: "yes, but not without doing your homework." ✨ First, you need to understand how generative AI works- in broad strokes, it's not actually an artificial intelligence. It is trying to determine what you 'want' to see rather than any objective 'truth.' This is important because it can give you information that looks REALLY good but may have significant errors and lack context. This matters for brand development because it might ignore serious risks and create a false sense of security. ✨ Always do further research into any brands developed while assisted by AI. Asking the generative AI "Is this infringing on anyone else's trademark?" is not good enough. A comprehensive search with an experienced professional is the gold standard of trademark clearance. ✨ If designing logos, consider how the generative AI model was trained- it may pull design elements directly from existing brands in a way that may not mitigate potential liability. In the video below, I ask ChatGPT to come up with names for a brand of pet food. I then ran the options it gave me through an extremely basic trademark clearance search and found existing trademarks that would be problematic to the registration of the marks ChatGPT provided. So, if you're going to use generative AI in your brand development, make sure that you're also working with a trademark attorney to clear any potential trademarks before you invest a lot of time or money into a name. #generativeai #trademarks