By Sukey Omran

What inspires a trademark? Everyone has their story… but none quite like NBA player, Lou Williams. Williams has filed a U.S. trademark application for LEMON PEPPER LOU for use in association with various clothing articles. The trademark application, in Williams’ words, came out of the desire to 'own a joke'.
 
In order to resume the NBA season, players were required to abide by strict rules to protect the safety of their quarantine bubble. On a pre-approved trip to attend a friend’s funeral, Williams stopped in at an Atlanta strip club, famous for its delicious lemon pepper wings. When the media caught wind of William’s pit stop, he was plagued with the name “Lemon Pepper Lou”.
 
William’s story goes to show that brands can originate from the most unlikely stories. Williams turned a joke into a business idea.
 
Contact us at Clancy PC to tell us your trademark origin story. 

By Trish Sawhney

In March 2019, Nike Inc. filed a trademark application with UPSTO for the term FOOTWARE. You may assume I have made a mistake in the spelling of FOOTWARE but I assure you, there was no typo on my part: the athletic company is hoping to trademark the term FOOTWARE in relation to hardware and software products used on or within footwear products. Nike hopes to use the brand FOOTWARE to market its smart footwear.

Understandably, many rival companies have expressed concern about this potential registration. Puma SE not only filed a “letter of protest” with the USPTO but has also initiated opposition proceedings against Nike’s application, asserting that the term FOOTWARE is ‘merely descriptive’ of technology-based footwear and therefore is not registrable. 

In its Notice of Opposition, Puma argues that Nike is not the only company that “combines footwear, hardware, and/or software technologies,” and so, “just as consumers understand that spyware describes software combined with spying, they will also understand that ‘footware’ describes software combined with foot products, including footwear.”

We will be closely monitoring this case and providing updates. If Nike can register its FOOTWARE trademark, it could be the beginning of a remarkable branding scheme.  

Its been an exciting week at Clancy PC, with the addition of not one but two new articling students! Trish Sawhney majored in both business and music at the University of Western Ontario, and came in top of her class in law school at the University of Birmingham. Welcome Trish!

We want to acknowledge the huge generosity of Sandra Harvey and Enviromasks.ca who donated over 300 masks to the Childrens' Aid Foundation of Ottawa.  Thanks so much for supporting the kids in our community.  #hero 

It would have been hard to predict back in March 2020 that all CIPO deadlines would be pushed forward 3 months until June 2020, but here we are.  CIPO has announced a further extension until June 15, 2020 of all deadline for IP matters that fall on or before June 12, 2020. 

These extensions are of course necessary due to the hardships caused by Covid-19, but they may also create hardships for IP owners. For example, CIPO's system recently inadvertently issued Registration Fee Notices which permitted applicants to register their marks even though the opposition period had technically not yet expired due to the deadline extensions. As a result, several alarmed prospective opponents had to contact CIPO to request the retraction of these registrations/registration fee notices so that the full opposition period would be preserved.

​Despite this additional extension of time, CIPO is encouraging applicants to proceed "business as usual" where possible with responses to Office Actions, the submission of evidence, and so forth. 

We will keep you updated of all further extension periods.  If you need information on how these extension period affect you IP, please contact us.

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CIPO has once again announced an extension of all deadlines on IP matters under the Patent Act, Trademarks Act and Industrial Design Act as a result of the COVID-19 pandemic. All deadlines between March 16 and May 29, 2020 will now fall on Monday, June 1, 2020. Further extensions may be possible depending on the circumstances as the Office has indicated a willingness to consider the pandemic a sufficient reason to justify extensions of time. To view CIPO's announcement click here.

Please contact us if you need any assistance with your IP matters. 

By Alina Cartan

Armando Christian Pérez, better known as Pitbull, has successfully registered his distinct “EEEEEYOOOO” sound as a trademark before the USPTO.  This sound has featured prominently in Pitbull's pop songs since as early as 2002.

This sensory mark (U.S. Registration Number: 5877076) is described as a sound consisting of a man yelling "EEEEEEEYOOOOOO" in falsetto with "E" drawn out followed by a "U" sound.  

Non-traditional marks are registrable in Canada since June 2019. For more information regarding trademark registration, for both traditional and non-traditional marks such as sound marks, please contact us.

Listen to Scott Shayko of EnvisionSQ, featured as part of IPIC's "Own IT" campaign, discuss the value of protecting your IP rights.

There's no better time than now to #ownyourIP.  Please contact us for further information on IP protection.

Lithion Recycling turns to IP to protect the innovative technique they have developed to recycle batteries and expand their global reach. #ownyourIP #votreIPcestavous @LI_Recycling @IPIC

By Ashley Moniz

​The European Court of Justice (ECJ) recently found that Amazon, as an online retail outlet, was not liable for trademark infringement after unwittingly storing third-party goods that were infringing.The German unit of Coty, an American cosmetics company, brought the action against Amazon when a third-party seller advertised grey market DAVIDOFF cologne for sale.

The third-party vendor used Amazon Marketplace under the "Fulfilled by Amazon" scheme to stock and sell their goods. Under this scheme, vendors pay a fee to use Amazon’s warehouses and logistics. Even though Amazon owns this platform, the ECJ found that Amazon did not itself sell the infringing goods but merely stored them, and therefore was not liable for trademark infringement.



The ECJ found that the storage of goods without knowledge that the goods infringe trademark rights does qualify as 'trademark use'.  

For more information about protecting your intellectual property rights (and preventing the infringement of third party rights!) in international e-commerce channels, please contact us.

In the recent Canadian case Ontario (Energy) v Quality Program Services Inc, the Federal Court held that governmental agencies using official marks could be liable for infringement of a prior trademark owner’s rights. 

Official Marks are unique to Canada.  They are a type of mark that may only be owned by a Canadian public authority such as government agencies. Once public notice is given of an Official Mark, use of the Official Mark by third parties is prohibited under the Act. Official Marks cannot be opposed by third parties or cancelled for non-use.  T

The Federal Court has now clarified that a public authority that uses a mark confusing with a registered trademark does so at its peril as a finding of infringement may be made.  This is an interesting limitation on the broad scope of protection normally thought to apply to Official Marks.


For more information concerning Official Marks, trademark protection (and clearance searches to avoid infringement claims!) please contact us. 

By Ashley Moniz

On March 20, 2020, Tom Brady, through his agency Yee & Dubin Sports, LLC, filed an application to trademark TB X TB, to coincide with the Superbowl Champion’s move to the Tampa Bay Buccaneers. The mark was filed for use with “Clothing, namely, shirts, t-shirts, pants, shorts, sweatshirts, sweaters, jerseys, sleepwear, athletic tops and bottoms, and headwear”. The full details of the application can be found on the USPTO website here.

The application was filed on the same day that the Buccaneers tweeted a video revealing Brady as their new quarterback. The video featured the TB X TB mark, along with some highlights from Brady’s 20 years with the New England Patriots. As other manufacturers have already begun to sell shirts bearing the TB X TB mark, Brady is likely trying to prevent unaffiliated manufacturers from benefiting from this announcement.

Tom Brady’s initials have been trademarked numerous times in the past. His signature TB12 is registered for use with numerous athletic equipment and performance enhancers. He has also trademarked his TB12 FOUNDATION for his work helping underprivileged athletes to rehabilitate injuries and elevate their athletic performance.

For more information about registering trademarks to protect your brand, contact us.

By Alina Cartan

Although the Canadian Trademarks Office (CIPO) declared that deadlines falling between March 16 and March 31 are automatically extended to April 1, 2020, CIPO remains open and functional. That means new Applications are and will continue to be given filing dates during this period.

It is therefore more important than ever for brand owners to file their Canadian trademark applications as soon as possible in order to avoid being blocked by possible conflicting applications with earlier filing dates.
 
For more information about trademark applications and filing in Canada, contact us.

By Ashley Moniz

Tennis superstar Roger Federer can once again use his signature RF logo, having acquired the rights to use it from his former sponsor, Nike. Federer has not been able to wear the logo on his competition attire for 18 months, as he signed a new sponsorship agreement with Japanese apparel giant, Uniqlo.

Federer’s wife had created an early iteration of the RF logo for Federer’s 2003 fragrance. Nike took inspiration from this design when creating the RF mark for an exclusive cardigan it sold for the 2009 Wimbledon Tournament. Nike registered the RF logo in the US in 2010 and subsequently in numerous other jurisdictions around the world. For roughly a decade, the logo was seen on Roger Federer’s competition attire, as well as caps and warm-up jackets available for retail sale.

After Federer signed with Uniqlo in 2018, Nike maintained its ownership of the logo pending the sale of remaining RF merchandise. During this time, Federer still wore Nike shoes bearing the logo, since Uniqlo does not manufacture tennis shoes. In February 2020, Nike and Federer came to an out-of-court settlement which included Nike assigning the rights in the RF logo to Federer’s own corporation, Tenro AG.  Details of the settlement have not been made public.

​For more information about maintaining, reclaiming, or transferring ownership of your marks, contact us.

By Alina Cartan

Twenty-four Indigenous women entrepreneurs including artisans, designers, performing artists, researchers, and small-scale farmers have been selected out of a pool of hundreds to participate in the WIPO Project-Based Training and Mentoring Program. The selected participants come from various countries, including Australia, Belize, Brazil, Cameroon, Canada, Costa Rica, Ecuador, Egypt, Fiji, France, and Iran.
 
The Program is divided in two phases: the training phase and the mentoring phase. According to the WIPO Director General, the “innovative Program brings together WIPO’s commitment to intellectual property, economic opportunities, sustainable development and gender equality”. 
 
During the training phase, participants attended a workshop in Geneva, Switzerland where they learned strategic and effective use of IP rights, business models, market access strategies and marketing of cultural heritage. The training phase was specifically created to support the implementation of their businesses and projects. The second half of the Program, the mentoring phase, will continue throughout 2020. During this phase, the participants will implement IP components of their selected projects in their home countries with the help of an assigned mentor.
 
You can watch a video highlighting the training phase of the Program here.
For more information about the Program, click here. 

By Ashley Moniz

Last Thursday, U.S. Customs and Border Protection (USCBP) officers confiscated a shipment containing counterfeit COVID-19 test kits. This seizure highlights the issues with counterfeit products and the serious risks that they pose. Unreliable testing kits could seriously impact proper diagnosis of new cases and could lead to further spread of the virus. The USCBP therefore cautions about the presence of fake testing kits.

Los Angeles is not the only place where fake testing kits have been found. On Tuesday, March 17, Kenyan police arrested 10 people in Nairobi believed to be selling fake coronavirus testing kits.  It is important to remain alert to counterfeits and their negative impact on consumers. For more information about protecting your marks from counterfeiters and measures that you can take to stop counterfeit products before they enter Canada, please contact us. 

Although sadly there will not be any St. Patty’s Day celebrations today, we did receive some news to celebrate from the Canadian Intellectual Property Office (CIPO). 

Today CIPO issued the following statement:

“On account of the unforeseen disruption caused by the COVID-19 outbreak, and being satisfied that it is in the public interest to do so, the Commissioner of Patents, under subsection 78(2) of the Patent Act, the Registrar of Trademarks under subsection 66(2) of the Trademarks Act, and the Minister under subsection 21(2) of the Industrial Design Act have designated for the purposes of subsection 78(1) of the Patent Act, subsection 66(1) of the Trademarks Act, and subsection 21(1) of the Industrial Design Act all days in the period of time beginning on March 16, 2020 and ending on March 31, 2020.”

What this means for IP owners is that if a time period fixed under the Patent Act, Trademarks Act and Industrial Design Act falls between March 16 and March 31, 2020, that time period is now extended until April 1, 2020, or such other day, as may be determined by CIPO.   In other words, CIPO may decide to extend the period of time, if necessary.

Please note that as of now, CIPO remains open and its online solutions are available 24/7.  Clancy PC will continue to conduct business as usual until further notice. 

For more information on CIPO’s operations and services, please click here. 

Clancy PC would like to express our heartfelt solidarity to everyone impacted by COVID-19 (Coronavirus) everywhere in the world.
​
In order to contain the spread of COVID-19, our team will begin working remotely effective Monday, March 16, 2020. However, please rest assured that our firm will continue to provide full professional services with no disruption for our clients.
 
We are closely monitoring the developments and guidelines of the Canadian Government and Authorities and will continue to take the required measures to keep our clients and staff as safe as possible. 

If you have any questions or concerns about how we are responding to this outbreak, do not hesitate to reach out to us. 

By Alina Cartan

According to its latest provincial budget, the Quebec Government will replace the Deduction for Innovative Corporations (DIC) tax incentive with the new and improved Incentive Deduction for the Commercialization of Innovations (IDCI).

Starting January 1, 2021, businesses located in the Province of Quebec that commercialize their Intellectual Property and have incurred Research and Development Expenses in the province will receive a lower tax rate on income derived from leveraging their patents, copyrights and plant breeders rights (PBRs). Specifically, businesses will be able to benefit of an effective tax rate of 2% on the portion of the taxable income attributable to the qualified intellectual property asset.

The goal of this incentive is to “encourage the competitiveness of Quebec businesses” and “[foster] retention and valorization of intellectual properties developed in Quebec”. According to the Minister of Finance, Eric Girard, these businesses “will benefit from the most competitive tax rate in North America”.
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For general information on the Quebec Budget 2020-2021, click here.
For additional information on the IDCI, click here.