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Retail Law Advisor

Category Archives: Intellectual Property

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The FTC Won’t Let Me Be: Warnings and Enforcement Actions Targeting Social Media Influencers

Posted in Intellectual Property, Retail

According to recent Nielsen ratings, the most watched TV shows and live TV events top off at around 20 million viewers. In contrast, the most popular personalities on various social media platforms have well over 100 million followers. It’s no surprise then, that retailers and advertisers are increasingly turning toward these social media “influencers” to… Continue Reading

Supreme Court Says ‘Give Me a ©’ to the Fashion Industry

Posted in Intellectual Property, Litigation, Retail

A recent U.S. Supreme Court copyright decision analyzing cheerleader uniforms may have a profound impact on retailers, and on the fashion industry in particular. On March 22, 2017, the Supreme Court held in Star Athletica, L.L.C. v. Varsity Brands, Inc. that original design elements that are separable from the “useful article” upon which they are… Continue Reading

Copyright Compliance: (Re-)Register Your DMCA Agent in 2017 to Keep Your Website Docked in the Safe Harbor

Posted in Intellectual Property, Retail, Technology

The Digital Millennium Copyright Act (DMCA) “safe harbor” provisions shield certain online service providers from copyright infringement liability arising from content posted by users on their website. Provided that the service provider registers its DMCA agent and complies with the other statutory requirements, the service provider may encourage user interaction with its website with peace… Continue Reading

The Implications of Trademark Infringement Decisions: Aw “Chucks”

Posted in Intellectual Property, Retail, Retail Sales

There is a growing population of fashionistas and #sneakerheads skyrocketing the sales of fashion retailers and traditional sneaker companies, such as @Nike and @Converse. Forbes contends that sneakerheads represent approximately 5% of the $22 billion dollar sneaker market in the U.S., which works out to roughly $1.1 billion dollars. Sneakerheads have an undeniable economic impact… Continue Reading

The Newly Enacted Defend Trade Secrets Act: What Retailers Should Know

Posted in Intellectual Property, Retail

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (the DTSA), creating the first Federal civil cause of action for misappropriation of trade secrets. The DTSA overlaps substantially with, and does not preempt, the trade secret acts already existing at the state level and adds an additional, powerful… Continue Reading

Retailers Take Notice: Will Customers .shop at Your .store?

Posted in Intellectual Property, Retail, Technology

Have you thought about establishing a new distinctive web address for your business? Do you worry that someone else may try to register your brand name within one of the new generic top level domains (gTLDs)? Whether consciously or not, many retailers have been sitting on the sidelines during the rollout of new gTLDs. But… Continue Reading

Retail Litigation Center: A National and Influential Force In Litigation

Posted in Employment, Intellectual Property, Litigation, Retail

The Retail Litigation Center (RLC) is a trade organization attached to the Retail Industry Leaders Association (RILA) that describes itself as “the only organization dedicated to advocating the retail industry’s perspective in those judicial proceedings that are most important to the retail community.”  Launched by RILA in 2010, the RLC is a membership-based organization whose members include many… Continue Reading

3D Printing: Potential Pitfalls For Retailers

Posted in Intellectual Property, Liability, Retail, Technology

What is 3D printing?  3D printing, a seemingly futuristic method of manufacturing objects, is steadily moving into the mainstream as three dimensional printers have relocated from labs to the shelves of retail stores. 3D printing, or additive manufacturing, is a method of production where small machines –robots – build three-dimensional objects layer by layer, directed… Continue Reading

Cyber Liability Insurance – Does Your Retail Business Need It?

Posted in Insurance, Intellectual Property, Liability, Risk Management

The news is full these days of hackers stealing credit card and other customer information from United States retailers such as Home Depot, Target, and Neiman Marcus (and the federal government) among others. These mega-breaches make great headlines, but what about smaller retailers? Are smaller retailers and restaurants targets for cyber criminals? The answer is… Continue Reading

Are You Ready for the Attack? Online Brand and Reputation Protection

Posted in Intellectual Property, Retail, Risk Management

It starts with an inaccurate, possibly fake, online review. Then a post appears on a consumer complaint forum. Suddenly, there is a surge of false postings about your company on social media sites. Invariably, these anonymous postings appear prominently in search engine results, including Google. If you haven’t implemented proactive monitoring for attacks and are… Continue Reading

INTA 2015 Annual Meeting Recap

Posted in Intellectual Property, Retail

Last week, members of Goulston & Storrs joined over 9,900 attendees from around the world who converged on San Diego for the 2015 Annual Meeting of the International Trademark Association (INTA).  This 137th meeting of INTA was its largest ever and assembled a remarkably diverse group of brand owners, legal advisors, consultants, exhibitors, and sponsors…. Continue Reading

[Insert Your Trademark Here].sucks – Is Your Brand at Risk?

Posted in Intellectual Property, Retail, Technology

In recent years, the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit entity responsible for maintaining the Domain Name System of the Internet, has begun to introduce hundreds of new top-level domains.  Top-level domains (TDLs) are the last part of a domain name, some of the most common being .com, .org, and .edu. … Continue Reading

Recent Guidance on Geographically Descriptive Trademarks May Help Brand Owners

Posted in Intellectual Property, Retail

Brand owners frequently adopt geographic terms to describe the origin or a characteristic of goods, such as NANTUCKET NECTARS for beverages from Nantucket and HYDE PARK for high end apparel.  They may also adopt such terms to describe the origin of services, such as CALIFORNIA PIZZA KITCHEN for restaurant services originating in California and FASHION… Continue Reading

Who Is Alice and Why Is She Invalidating Patents?

Posted in Intellectual Property, Retail, Technology

On June 19, 2014, the Supreme Court issued its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, clarifying what it means to be patentable subject matter. With one stroke of the pen, the Supreme Court effectively invalidated thousands of patents that claim a known business method implemented by a computer. The effect of… Continue Reading

Take Cover: Protecting a Brand in the New Era of Generic Top-Level Domains

Posted in Intellectual Property, Retail, Technology

The rollout of new generic Top-Level Domains (gTLDs) is now well underway, and approximately 300 new gTLD strings have become available. A full, up to date list of gTLD strings can be found on ICANN’s web site. Some notable additions include: .shoes, .clothing, .organic, .global, .software, .market, .space, .autos, .luxe, .discount, .cheap, .exchange, .capital, .webcam,… Continue Reading

Clowning Around and Reheating the Breakfast Wars

Posted in Intellectual Property, Restaurants, Retail

Taco Bell has joined the breakfast wars through the launch of its first breakfast menu. Taco Bell’s initial maneuver in this ongoing battle for breakfast customers takes direct aim at McDonald’s iconic breakfast menu. Taco Bell’s television commercials feature individuals named “Ronald McDonald” attesting to their “love” for “…Taco Bell’s new breakfast.” These commercials include… Continue Reading

Enhanced Brand Protection Under China’s New Trademark Law

Posted in Intellectual Property, Retail, Technology

On May 1, 2014, China’s highly anticipated amendments to its trademark laws went into effect. After decades of international criticism over the lack of enforcement and protection measures, China’s newly amended trademark laws seek to deter trademark hijacking through stronger enforcement measures and provisions aimed at removing bad faith registrations. Some of the new amendments… Continue Reading

From Strips to Chips: How Recent Data Breaches Threaten to Impact Your Point of Sale

Posted in Intellectual Property, Risk Management, Technology

The costs of recent data breaches have been staggering. In Target’s case, 40 million credit and debit card accounts were hacked, and the personal information of 70 million people was stolen. The cost to Target: $17 million in net expenses and a 46% decline in profits in the fourth quarter that ended February 1, 2014…. Continue Reading

Licensing Killed the Radio Star: When Retailers Need Music Licenses

Posted in Compliance, Intellectual Property, Retail

Your business may play the radio to enhance the customer experience. Or it may hire a band to play live music. If you were to receive a legal notice demanding payment for a license to play recorded or live music in your establishment, would you be obligated to pay? Perhaps surprisingly, the answer is often… Continue Reading

Capitalize on the U.S. Market, But Protect Your Brand

Posted in Intellectual Property, Litigation, Retail, Retail Sales

Are your brands and valuable intellectual property adequately protected? Retailers entering into or expanding operations in the U.S. access a consumer base which spends more than four trillion dollars on retail goods annually. There are lucrative opportunities for foreign retailers to introduce fresh and innovative brands to U.S. consumers. But retailers who fail to implement… Continue Reading

Doing Business with Children: Compliance with the Amended COPPA Rule

Posted in Compliance, Intellectual Property, Privacy, Retail

As of July 1, 2013, the Federal Trade Commission’s regulations implementing the Children’s Online Privacy and Protection Act (“COPPA”) were amended to address changes in the way children use and access the Internet, including through mobile devices and social networking. Originally enacted in 1998, COPPA applies to operators of websites and online services, including apps,… Continue Reading

ICANN’s Trademark Clearinghouse Arrives March 26th

Posted in Intellectual Property, Retail, Technology

As we have previously discussed here, the range of available generic Top-Level Domain names (gTLDs) will soon expand dramatically to include hundreds of new alternatives such as .store, .hotel, and .restaurant. Most of these new gTLDs will be offered to the general public for registration of second-level domains. To help mitigate the risk of brand… Continue Reading

Hacking It in the On-Line Environment: Mitigating Harm from Cyberattacks

Posted in Intellectual Property, Retail, Risk Management, Technology

Cyberspace has been abuzz with discussions about the recent hacking of Burger King’s Twitter account and the ensuing scramble to exercise damage control. The perpetrators who took over the account were able to post profane messages and change the profile picture to a McDonald’s logo, claiming that Burger King had been acquired by its rival…. Continue Reading

So You’ve Entered the Cloud: Do You Know What’s in Your Contracts?

Posted in Intellectual Property, Retail, Technology

As the retail industry strives to streamline inventory management and expand e-commerce opportunities, it is looking more and more to virtual infrastructure and cloud-based resources. Providing online and mobile solutions for ordering, fulfillment, inventory and sales while enhancing consumer experience has become paramount for successful retail enterprises. Though slower to transition than other industries, retail… Continue Reading