By Trish Sawhney

At some point or other, you have most likely seen the trademark symbol (™), or the registered trademark symbol (®) being used in association with various goods and services. These two symbols can be confusing. What exactly do they represent and why should you use them?

The ™ symbol is used when a mark is used as a brand identifier and meets all the requirements of a trademark but the mark is not actually registered.  By contrast, the ® symbol signifies that the mark has been registered by the Canadian Intellectual Property Office. Whenever you use your trademark in marketing materials or packaging, you should use the appropriate symbol.  Keep in mind that the ™ symbol may be used even if you haven't registered your trademark, therefore you should begin to use it as soon as possible.

In terms of the positioning of these symbols, they normally appear on the upper right side of the trademark, as a superscript, for example: Clancy PC™  or Clancy PC®.  However, there are no set rules as to where the symbol must appear.

Using either of these symbols to indicate trademark ownership can be quite advantageous. Not only do these symbols provide public notice of trademark use, but they also help your brand develop goodwill. By using the symbols, you can communicate to the public that you are invested in protecting your intellectual property.  Your competitors will be precluded from arguing that they were not aware that the word or design was being used as a trademark, or that they did not know you had asserted trademark ownership. We recommend you review your website, marketing materials and packaging to determine whether you are using trademark markings where necessary.

Have any other questions about trademarks or which symbols to use association with your trademarks? Please contact us! 

By Sukey Omran

Bill C-86 has introduced bad faith as a new ground of opposition.  In other words, an opponent may now oppose a trademark application on the basis that it was filed in bad faith.
 
Prior to the amendments to the Trademarks Act, Section 30 (i) required an applicant to declare that it was satisfied of its entitlement to use the trademark in Canada. This provision was sometimes used to attack applications filed in bad faith since it was argued that an applicant could not be satisfied that it was entitled to use the mark in Canada if it was filed in bad faith. 
 
The following are examples of where bad faith may be found:

1. Where an application has been filed by a licensee/distributor without the authorizatio of the trademark owner; 
2. Where one joint venture party files an application that was intended to be owned by the joint venture; 
3. Where an applicant files multiple applications for well-known marks for unrelated goods and services (i.e. trademark squatting); and
4. Where there has been a violation of another statute or regulatory regime, such as a copyright infringement.

We know you have nothing but the best intentions in mind, but where in doubt, feel free to contact us so we can help you avoid any allegation of bad faith!

By Trish Sawhney

On January 1, 2021, the Canadian Intellectual Property Office will be increasing its fees for several services, including:

• Filing fee for a Trademark Application
• Filing a Statement of Opposition
• Filing an Application to extend the statement of goods or services
• Filing a S.45 Cancellation action
• Renewal of a Registered Trademark

 
For a list of updated fees please click here.

​We would be pleased to review your trademark portfolio and provide you with recommendations of cost-effective strategies to help minimize expenses before the increases come into effect.

​For more information (on how to keep those extra dollars in your pocket!), please do not hesitate to contact us. 

By Trish Sawhney

When submitting a trademark application, clients often ask whether they should file an application for a standard character mark, a design mark, or both.   

A standard character mark, also known as a word mark, refers to a word, phrase, acronym, numbers or letters, regardless of the font, size, style, colour, etc. It is often deemed to be the broadest form of protection since it covers the words themselves. By contrast, design marks may consist of pure design elements and/or word elements. However, the word elements are protected in the context of the design, therefore if the design changes, protection for the words incorporated in the design may be lost. 

When deciding whether to register the word(s), the design, or both, some important factors to consider are:

• What is your budget? Ideally, separate word mark and design mark applications is best as it offers a wider scope of protection; however, filing multiple applications is more costly. If you cannot justify the expense, combining the word and design elements in a single registration or simply filing one or the other can be cost-effective. Alternatively, focusing on the word element(s) alone will offer you the broadest scope of protection.

 

• How strong is your word mark by itself? Some word marks are deemed unregistrable as they can be confusing with another registered mark, descriptive of the goods or services with which they are associated, or considered lacking in  inherent distinctiveness. By adding distinctive design elements this may help to overcome these types of objections. 

 

• Do you see your design mark changing in the foreseeable future? Design marks only protect the exact design filed, so if you anticipate changing your logo or design over time, keep in mind that you will need to file a fresh application.

 

• How memorable is your design mark? Design marks can be very effective as they are memorable for the average consumer. If your design is very unique and you want to ensure others don't copy it, trademark protection can be a very good tool as unlike copyright registration which eventually expires, trademarks may be renewed in perpetuity.  

Have more questions about choosing the right type of mark for you? Don't be shy - contact us for a free consultation!

Paula Clancy will be participating in a Twitter Q&A for Canadian Innovation Week.  Join us Thursday, November 19th at 1:00 p.m. @CanadianIP @PaulaClancy @BngatchaIPlaw @IPIC_Canada and @Cdn_Innovation to chat about Intellectual Property and Innovation in Canada.

Hayabusa CEO, Ken Clement, discusses the importance of having an IP strategy and securing IP protection in the fight against counterfeits.  A good defence is always the best offence — even outside the ring.

21 Savage recently took to Twitter to express his frustration over individuals profiting from the use of the word “Yessirskiii”, a word he claims to have coined in his 2020 song Yessirskiii. According to 21 Savage, authorship of this word should entitle him to 50 percent of the profits from every song that uses the Yessirskiii hook.
 
Although 21 Savage may have coined the word Yessirskiii, and while he may very well have copyright in his “Yessirskiii” song, to enforce ownership rights over the word Yessirskiii and to claim infringement, he would need to pursue a trademark registration.
 
If you have questions about ownership or how trademark protection can benefit you, please contact us at Clancy PC!

By Trish Sawhney

Samsung Displays, the display making affiliate of Samsung Electronics, has filed trademark applications in the United States, Korea, Australia, and Europe for QNED. QNED is an acronym for "quantum nano-emitting diode" which is a new type of display technology.

Samsung Display’s QNED application comes just weeks after LG Electronics also filed trademark applications for QNED. The two Korean tech companies have been competing globally in the electronic market for years. It will be interesting to see which company, if any, emerges victorious in this trademark battle. There may be an argument that QNED lacks distinctiveness or that it is descriptive of quantum nano-emitting diode display technology, which means that neither company may be able to monopolize this term.

For further information about what potential pitfalls you may encounter in the trademark registration process, please contact us. 

Is there a nicer surprise than receiving fresh flowers from a client?  A big, heartfelt thank you to our friends at Liuming International for the gorgeous flowers.  We are happy to celebrate the Harvest Moon Festival with you and we thank you so very much for the beautiful gift. We are so grateful for our clients in Canada and around the world who permit us to do what we absolutely LOVE to do each and every day.  

By Paula Clancy

Cannabis trademark owners are not able to obtain Federal Trademark Registrations in the U.S. This position was affirmed by the Trademark Trial and Appeal Board ("TTAB") last month in In Re NL LLC, wherein the Board held that for a trademark to meet the "use in commerce" requirement, the use must be "lawful". 

Although cannabis and CBD products have been legalized in several U.S. states, the Federal Food, Drug & Cosmetics Act (FDCA) and the Controlled Substances Act (CSA) prohibit the sale of products containing cannabis.

The Applicant argued that under Colorado state law, its use was indeed "lawful", however the TTAB rejected this argument. “The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law”. Under the Supremacy Clause of the U.S. Constitution, in cases where  there is conflict between federal and state law, federal law prevails. 

This is of course disappointing to cannabis brand owners who are excluded from the benefit of Federal Trademark Registration.  The upcoming U.S. election may provide some solace given that Biden/Harris have vowed to legalize cannabis if they win.

We will continue to track these developments as cannabis is a growing sector in Canada, and many Canadian companies are anxiously awaiting the decriminalization of cannabis in the U.S.

Please contact us for further information on protecting your brands worldwide.

By Paula Clancy

The Government of Ontario has introduced legislation to modernize its Business Corporations Act. Pursuant to Bill 213, the Canadian residency requirements for the board of directors of Ontario corporations would be eliminated.  Currently the Ontario BCA requires that at least 25% of the directors be Canadian residents.  Consequently, many foreign companies opt to incorporate in other jurisdictions offering more flexibility. Bill 213 further proposes to lower the threshold for resolutions adopted by written resolution (as opposed to by vote at a meeting of shareholders) from "unanimous" to "majority" approval. 

​These are both welcome changes as they reduce the administrative burden, and add flexibility to Ontario corporations.

By Sukey Omran

In the recent decision of Miller Thomson LLP v Hilton Worldwide Holding LLP, the Federal Court of Appeal provided more clarity on what constitutes use of a mark in relation to "hotel services" in Canada. 
 
The owner of the WALDORF ASTORIA brand, Hilton Worldwide Holding LLP, has been trying to defend its registration from a non-use cancellation proceeding.  The requesting party argued that the WALDORF ASTORIA brand was not in use in Canada since there is no 'bricks and mortar' hotel that is available in Canada.

Hilton maintained that the mark was indeed in use in Canada since Canadian consumers could access the online reservation, booking, and payment services to book at the chain's other WALDORF ASTORIA hotels around the world.  This would fall within a broad interpretation of "hotel services".  
 
The Federal Court of Appeal made three important assessments:

1. The ordinary commercial meaning of hotel services has changed overtime to include online services that may seem ancillary, such as reservations and bookings;
2. Registered trademarks cannot be faulted for using pre-approved terms that were found in the Goods and Services Manual at their time of registration;
3. There must be a sufficient degree of interactivity between the trademark owner and the Canadian consumer when offering services over the internet (viewing a website it not enough).

The use requirement for registered marks is important because it permits third parties to remove 'deadwood' (i.e. marks that are no longer in use) from the Canadian Trademarks Register. The use requirement balances the monopolistic rights that brand owners obtain through trademark registration, since there is no rationale to protect and grant such a broad scope of protection to marks that are no longer in use in the Canadian marketplace. 
 
Do you have a question about the use requirements for your trademark? Schedule an appointment with us.

By Sukey Omran

The Quaker Oats Company took an important step this year in deciding to overhaul its AUNT JEMIMA brand. Kristin Kroeplf of Quaker Foods stated: "We recognize Aunt Jemima's origins are based on a racial stereotype. While work has been done over the years to update the brand in a manner that intended to be appropriate and respectful, we realize those changes are not enough."
 
The AUNT JEMIMA brand used the "mammy" stereotype, namely the stereotype of an African American woman who is happy to be enslaved. The Aunt Jemima character was first created in the ministrel show song “Old Aunt Jemima”. Minstrel shows were known for skits and musical performances that involved entertainers in blackface. The original owner of the AUNT JEMIMA brand based the brand on the character in these minstrel shows. After acquiring the AUNT JEMIMA brand, the Quaker Oats Company moved away from the stereotypical mammy caricature, and updated the image of Aunt Jemima to that of a modern African American woman.  However, the name AUNT JEMIMA did not change, thereby perpetuating the link to the brand's racialized history.
 
What have we learned from this?  Brand owners should constantly re-evaluate their trademarks. If a trademark is imbued with a history or meaning that does not align with the brand, then a prudent course of action is to update or revamp the mark. Since marks may be renewed in perpetuity, and decades may pass between registration and subsequent renewals, brand owners should always include a re-evaluation step to ensure the brand is appropriate and that it resonates with consumers. 

By Trish Sawney

With the increase in homemade masks to help prevent the spread of COVID-19, it is important to understand what licensed fabric is and what one can do with it.

Licensed fabric is fabric on which there is a printed image that is protected by a registered trademark or copyright. Fabric that is produced under license requires an agreement between the fabric manufacturers and the copyright or trademark owner, to permit the reproduction of the owner’s design, characters, logo, etc., onto the  fabric.

Licensed fabric typically contains a notice printed on the selvage that the fabric is ‘for individual use only’ or that it is ‘not for commercial use,’ or both. The former means that you can use the fabric to make products for yourself; however, you cannot distribute them, even if you are doing so for free. The latter means you cannot buy the licensed fabric, create your product, and then sell it for profit. 

These notices are important and legally binding, yet often overlooked.  Masks created from licensed fabric and then sold online most often constitutes an unauthorized use of the fabric, and could lead to penalties such as having your online listing taken down, to an interim, interlocutory or permanent injunction, damages, and even legal costs. 

Therefore, although making homemade masks is laudable, be careful when using licensed fabrics as you will need authorization to distribute or selling these masks. 

For more information on licensing IP, please contact us.

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”.
 
Williams' 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