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.
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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.

By Alina Cartan

On March 11, 2020, Paula Clancy attended the Women Entrepreneurs Reception alongside other leading women entrepreneurs, Startup Canada and Startup Communities in celebration of International Women’s Month. The reception was the finale of Startup Canada’s Women Entrepreneurs Program, made in partnership with the Coca-Cola Foundation, which allows women entrepreneurs to start and scale thriving businesses. 
 
The ClancyPC team supports women and strongly believes that investing in women’s entrepreneurship and committing to gender equality in the workforce will bring positive changes to the years to come. #EachforEqual #StartUpWomen
 
To learn more about the Startup Canada program, click here.

Written by Alina Cartan

The Coronavirus (COVID-19) has infected more than 90,000 people globally this week, and the outbreak is massively dominating news headlines. Consequently, a number of trademark applications linked to this epidemic have been filed in the United States.

On February 15, 2020, And Still, LLC filed the trademark application COVID-19 VAX in association with vaccines. Unfortunately, it is highly unlikely that And Still, LLC has developed a vaccine for COVID-19 as other trademarks registered by the applicant are associated to “beer” and “clothing”.
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While some believe that an opportunistic COVID-19 trademark application is likely to fail as it is too descriptive, we will only be able to determine its registrability once the filed application has been assigned to an examiner in approximately three months. 

By Alina Cartan

We are delighted to announce that Clancy PC’s Managing Partner, Paula Clancy, has been ranked among the world’s leading trademark practitioners by the World Trademark Reporter’s Top 1000 (“WTR 1000”) for the 10th consecutive year.

The WTR 1000 is a publication that ranks the top firms and individuals that are deemed outstanding in the practice of Trademark Law. In order to do so, the World’s Trademark Reporter undertakes an exhaustive four-month qualitative research project in more than 80 jurisdictions.
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To learn more about WTR 1000, click here.
To view the official rankings, click here.
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By Ashley Moniz

Chooseco LLC, the owner of the mark and creators of the Choose Your Own Adventure children’s book series, has brought an action against Netflix for their use of their registered word mark, “Choose Your Own Adventure”. Netflix used this mark, as well as its concept, as the premise for their interactive film, Black Mirror: Bandersnatch.  Like the plaintiff’s book series, the film requires viewers to make decisions for the characters based on two given options. Unlike the series, and in classic Black Mirror style, all of the viewers’ choices result in either the ultimate demise or failure of the main character.
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In its defence, Netflix argues that the mark should be cancelled because numerous American storytellers are using a "Choose Your Own Adventure" model. Netflix claims that this concept has become a category of product, and that its use of the phrase “Choose Your Own Adventure” is unlikely to cause confusion with Chooseco LLC’s brand because the mark’s use has become “generic”.

Earlier last month, Vermont federal state Judge William Sessions dismissed Netflix’s motion to dismiss the lawsuit. Netflix brought the motion on the basis of their First Amendment right to freedom of expression; however, Judge Sessions cited, from the movie, at least one specific reference to the structure of the books that mirrored both the protagonist’s video game in development and the film itself. We will continue to monitor this case for further developments.

For more information on how to protect your trademarks from becoming generic, contact us.

By Alina Cartan 

Last week, the United States Patent and Trademark Office (USPTO) published a new examination guide entitled “Mandatory Electronic Filing and Specimen Requirements”. As of February 15, 2020, all applicants must provide and maintain a valid email address, even if they have appointed US counsel to act as agent before the USPTO. Furthermore, the USPTO will now only communicate by email.  But beware: email addresses provided to the USPTO will now be part of the public record, and will likely be viewable on the Trademark Status and Document Retrieval (TSDR) platform.  Concerns have already been raised about the potential misuse of trademark owners’ email addresses, particularly in light of the growing number of scam letters being sent to unsuspecting trademark owners. 

If required to provide an email address to the USPTO, we are recommending to clients to create a generic account for this specific purpose, i.e. uspto@[enterdomain].com to reduce the risk of spam email.

For more information on protection your marks outside of Canada, please contact us.


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By Alina Cartan

On January 31st, 2020, the United Kingdom formally withdrew from the European Union.  The good news for owners of EU trademarks and designs is that no changes will be made to trademark and design protection in the UK.  Specifically, until December 31st, 2020, UK trademarks will continue to be protected by European Union trademark (‘EUTM’) registrations, and trademark applications filed in the European Union will continue to include the United Kingdom.
 
Once the transition period ends on or after January 1st, 2021, registered EUTMs will automatically convert to UK registrations and will continue to be protected in the United Kingdom as if they have been filed and prosecuted under UK law. However, trademarks applications which are pending in the European Union will not be granted automatic protection in the United Kingdom. Although EUTM priority filing dates will be maintained, these trademark applications will need to be converted to UK applications within nine months of the end of the transition period.
 
More information regarding trademark protection and BREXIT can be found at www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#stay-up-to-date
 
For more information on registering and protecting your trademark internationally, contact us.

By Ashley Moniz

On January 29, 2020, the Government of Canada conducted its first reading of Bill C-4. The Bill, if passed, will bring the Canada-United States-Mexico Agreement (CUSMA) into force in Canada, replacing NAFTA. Bill C-4 includes proposed amendments to the Trademarks Act with respect to the import and export of trademark-infringing goods in Canada.
Currently, any person who is not entitled to use a registered trademark, that imports or exports goods with a confusing mark for sale or distribution infringes on the registered owner’s exclusive use of that mark. Bill C-4 would create a statutory presumption that the importer/exporter has infringed on the owner’s exclusive use unless they prove otherwise.
Bill C-4 further classifies goods in Canadian customs transit as Canadian imports. The Trademarks Act currently exempts goods under these circumstances which bear identical or indistinguishable marks from a registered trademark. 
Finally, Bill C-4 extends the powers of customs officials and allows them to share the name and address of any person believed to be involved in the movement of goods with infringing marks.

​For more information on protecting your mark from infringement, please contact us.

Since December 11th, 2019, Lucasfilm Ltd. LLC has filed over twenty-eight new US trademark applications, including applications for THE MANDALORIAN THE CHILD, and THE CHILD covering toys, food, jewelry, images, mobile apps, printed matter, bags, clothing, bakeware and, believe it or not, cosmetics.

“The Child”, otherwise known as “Baby Yoda”, has captivated millions following his appearance on the new Star Wars series “The Mandalorian”. 
                              
Lucasfilm filed these trademark applications after the series premiere. According to Disney CEO, Bob Iger, this was necessary to prevent any possible leaks of the adorable character. However, the late applications opened the door to a multitude of unauthorized sales using THE CHILD mark, which may have cost Disney over $3 million in lost revenue.

Registering a trademark takes time but offers you significant legal protection and benefits. For more information on registering your trademark, contact us.

On January 17, 2020, the Canadian Intellectual Property Office (CIPO) published a Practice Notice limiting an applicant's time to respond to an examiner's office action or to request for a classification of goods and services.

As before, applicants must respond within six months from the issuance of an office action. Where an applicant could previously receive one six-month extension, this extension is no longer available unless the applicant can prove that exceptional circumstances exist which have prevented the applicant from responding within the initial six-month term. If the applicant neither meets the deadline nor secures an extension, the application will be considered in default.

When a request for clarification is issued, the applicant also has six months to respond. However, if CIPO does not receive a response within six months, they will issue a notice of default providing an additional two months to respond. As above, CIPO will only grant a further six-month extension under exceptional circumstances. This process also differs because, as this is a statutory deadline, the extension request is subject to a $125 fee.

CIPO has included a non-exhaustive list of events which constitute an "exceptional circumstance". Among these exceptions are circumstances beyond the applicant's control, associated proceedings related to the mark, and additional time needed to gather evidence in response to a substantive objection to the mark's registrability. You can read​ the full list of objections in the CIPO Practice Notice here.

​For more information on registering and protecting your trademark, contact us.

​Online retailer Backcountry.com has been facing outrage from the outdoor community after an aggressive trademark enforcement campaign.

The Colorado-based retailer, which sells outdoor clothing and recreation gear online, has been enforcing its rights to the word BACKCOUNTRY. This includes suing small businesses such as Backcountry Denim, Backcountry eBikes, Snapperhead Inventions LLC for its Marquette Backcountry Ski, and avalanche safety course Backcountry Babes.

Most of the suits have been settled in court, which has led to very costly rebranding for Backcountry Denim (now BDCo) and Backcountry eBikes (now Bakcou).

After news broke of the retail giant suing small local retailers for infringement, the outdoor community was incensed. A Facebook group titled "Boycott BackcountryDOTcom" was created. Hashtags such as #boycottbackcountry started up on Twitter.
Community members argue that trademarking backcountry is like trademarking “camping” or “mountains.”

​Backcountry.com responded to the heat in an open letter on their website. Jonathan Nielsen, Backcountry.com's CEO, writes: "In an attempt to protect the brand we have been building for nearly 25 years, we took certain actions that we now recognize were not consistent with our values, and we truly apologize."

Although Backcountry.com was completely within its rights to enforce its trademark, the backlash has been significant. This is likely due to the fact that Backcountry.com was seen as a company geared towards “real people who are blending the outdoors with the everyday,” and the litigation was seen as contrary to their values.

For assistance on navigating trademark enforcement, please contact us.

The Federal Government amended the Cannabis Act and enacted new regulations to permit the sale of cannabis edibles in Canada, i.e. food or drink items made with cannabis oil.

As of today a host of edible cannabis products are available for legal sale to consumers in Ontario. Cannabis edibles are allowed to have up to 10 milligrams of THC (tetrahydrocannabinol) in a single package and up to 30 milligrams of caffeine, if it is naturally occurring (for example, in chocolate, coffee and tea). However, edible cannabis products may not contain nicotine or added alcohol.  The Government has published the following guidelines outlining what industry needs to know about cannabis.  See link here.

There are strict limitations on how cannabis products may be packaged and labelled, as well as how they may be promoted.  To ensure you do not go off-side, please contact us.