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.