On April 15, 2019, the U.S. Supreme Court considered whether the mark “FUCT” could be registered on the U.S. Trademarks Registry in Iancu v. Brunetti.  (Apparently, the judges struggled with how to refer to the brand during the hearing, drawing a few chuckles from spectators).
See oral arguments on C-SPAN here.

The case was brought by Los Angeles graffiti artist, Erik Brunetti, owner of FUCT fashion line, after the USPTO rejected his application on the basis that the mark was scandalous. The term “FUCT,” an acronym for the paradox “Friends U Can’t Trust”, challenges federal law that states “immoral or scandalous matter” must be refused trademark protection.  Brunetti argued that his first amendment rights under the U.S. Constitution were violated.  Indeed, he has launched a supplementary brand:  Fuct is free speech. Free speech is Fuct™. 

In 2017, the US Supreme Court unanimously invalidated a related provision of federal law on the basis that it violated the Free Speech Clause of the First Amendment. See Matal v. Tam. In that case, an Asian American rock band had been refused registration of their mark THE SLANTS on the basis that it was a disparaging mark that was offensive to Asians. The Lanham Act’s anti-disparagement provision was deemed by the U.S. Supreme Court to be unconstitutional, and the band was permitted to register THE SLANTS.

The Supreme Court is due for a decision this summer, but till then, we hope the result isn’t “FUCT”. 
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For more information on what can (and cannot!) be trademarked, please contact us.

​Joey Tomato’s (Canada) Inc. (“Joey”), the company behind the well-known JOEY restaurant chain, won a recent trademark victory in Canada.

Joey registered the LOCAL trademark in 2013 for use with restaurant, bar and lounge services as well as various beverageware goods.  In 2014, another entity (1786325 Ontario Ltd) filed an application for the trademark “LOCALE and Design” which featured the silhouette of a rooster, and which was also for use with restaurant services and promotional items, including glassware.  Joey opposed the LOCALE & Design application on the basis of, among other things, confusion with its prior mark.

The test for confusion is whether, as a matter of first impression, the average Canadian consumer with an imperfect recollection of one mark is likely to be confused upon encountering the other party’s mark. 

In this case, the Canadian Trademark Opposition Board found that there was a high degree of resemblance between “LOCAL” and “LOCALE”, both visually and phonetically. The overlapping goods and services also increased the likelihood for confusion and lead a typical Canadian consumer to assume that the parties’ restaurant goods and services share a common source. Accordingly, 1786325 Ontario Ltd.’s application was refused. 
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For more information on trademark oppositions, and how to avoid them, please contact us.

 Photo by Jay Wennington on Unsplash

In March 2019, the United States Patent and Trademark Office (USPTO) refused the registration of a mark by Concentra B.V. which consisted of three-dimensional packaging of a male torso in association with perfumes, essential oils and articles for body and beauty care.

The issue arose as a result of another registered mark (U.S. Reg. No. 2141962) that also consists of a three-dimensional male torso for use in association with perfumes. 

The Board recognized that there were differences between the marks: the Applicant’s mark had a more proportioned torso that was muscular and defined, whereas the registrant’s mark had a more slender upper body with shorter arms.  

However, the Board found that under actual marketing conditions “consumers do not necessarily have the luxury of making side-by-side comparisons between marks” and must instead rely on “imperfect recollections.” 

The Examiner concluded that when viewed in their entirety both the Applicant’s mark and the cited mark were similar “in sight, connotation and commercial impression”, and would likely be referred to by consumers as the perfume container in the shape of a male torso.  This, together with the identical nature of the goods, weighed heavily in favour of a finding of confusion, and therefore Concentra B.V.’s application was refused.

For more information about trademark registration and how to avoid pitfalls, please contact us.

June 17th is the date of implementation of some major changes to Canada's trademark laws, including the shortening of registration periods from 15 years to 10 and the removal of Declarations of Use from the registration process.

The Canadian Trademarks Office online platform will be unavailable from midnight EST on June 13th until 6 am June 17th.

Accordingly, if a deadline falls on June 14th, please ensure we receive instruction in advance. Moreover, if you are ready to register your pending mark please ensure you do so prior to June 13th to take advantage of the extended 15-year registration period.

For more information on Canada's changes in law, please contact us.

The phrase “Google™ it” is not only apt for answering our questions, sending our e-mails and playing our music, but it may also change our shopping experience as well as the future of digital shopping.

A Canadian application for the trademark GOOGLE SHOPPING™ was filed earlier this year.  Not surprisingly, the Google Shopping platform is now available in Canada. 
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Google Shopping is not new – it was originally launched under the name “Froogle” back in 2002. Unfortunately, this fun take on the word “frugal” didn’t last (perhaps because “frugal” and “shopping” don’t mix well?)

Nevertheless, this revamped iteration includes functionality that helps consumers conduct real-time price comparisons, as well as permitting vendors to vie for advertising space and Google AdWords. The platform also features Google’s robust search functionality and web crawler that are used to index product data. The application integrates with the Google Pixel™ phone to allow users to shop online using augmented reality. 
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With Google’s plans for an enhanced on-line shopping experience, we are curious to see what’s “in store” for us.
For more information on branding and the registration of trademarks, please contact us.

With the hit HBO series, Game of Thrones, airing its final season the show is being touted as one of the greatest television series of all time.  Not surprisingly, others may be trying to capitalize on the show’s wild international success.  

The UKIPO has issued two blows to HBO in its attempt to protect its GAME OF THRONES brand:  it has rejected HBO’s opposition to the registration of “Game of Vapes” and “Game of Stones” in the UK.

Game of Vapes

The “Game of Vapes” mark is for use in association with tobacco and smokers’ articles. The UKIPO found that the marks “Game of Vapes” and “Game of Thrones” were phonetically similar but the conceptual difference between the words “vapes” and “thrones” was enough to differentiate the brands.

In addition, it was found that the differences were enough for the average consumer to understand “Game of Vapes” was a ‘comedic play’ on the Game of Thrones, and not an attempt to deceive customers as to the origin of the products.

Game of Stones

The “Game of Stones” mark is for use in association with beers sold by Wadworth and Company Limited. Established for over a century, Wadworth is a brewery with strong roots in Wiltshire, England. 

HBO owns trademarks registrations for GAME OF THRONES ASCENT Logo and GAME OF THRONES which also claim beerand the sale of beverage products.  The Hearing Officer acknowledged that there was directoverlap in the goods.  Furthermore, the Hearing Officer acknowledged there was a high degree of phonetic similarity with “Game of Thrones” and “Game of Stones”. However, the use of the image of stones as well as the conceptual difference between “stones” and “thrones” led the opposition to fail.

It’s clear from the outcome of these oppositions that there may be many new “games” to come. Apparently the Seven Kingdoms may not exert much influence over the United Kingdom.  
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For more information on trademark registration and oppositions please contact us.

We here at Clancy PC are wishing you a happy 19th World IP Day. This year's theme is "Reach for Gold: IP and Sports."

In January 2019, McDonald’s EU trademark registration “BIG MAC” was cancelled for non-use by the EU Intellectual Property Office (EUIPO).

Supermac, a growing fast-food chain in Ireland, sought to cancel “BIG MAC” on the basis that it had not been put to use by McDonald’s in the EU five years following its registration. The conflict between McDonald’s and Supermac is not new. Supermac has faced opposition for its burger, the Mighty Mac, a sandwich similar to the Big Mac.

In an attempt to defeat the action, McDonald’s filed evidence of use including documents such as: brochures and printouts of advertising posters of BIG MAC sandwiches in German, French and English, website printouts, affidavits and images of packaging.

However, the EUIPO held that brochures, posters and packaging didn’t provide information as to who the products were offered or whether they led to purchases. In addition, the affidavits needed to be supported by other types of evidence which were not provided.

Furthermore, the website printouts from McDonald’s websites were considered insufficient to prove use as there was no place, time or extent of use, or whether placing an order was possible on the website.

The EUIPO upon viewing the evidence provided, revoked the registration entirely. This has been a significant decision for Supermac’s owner McDough who is able to now expand in the United Kingdom. 

In the aftermath of the cancellation of the BIG MAC trademark, Burger King in Sweden featured menus with names such as “The Big Mac-ish but Flame-Grilled Of Course”, “The Burger Big Mac Wished It Was” and “The Kind of Like a Big Mac, but Juicier and Tastier”.
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In this underdog story, where “supermacs” truly beat the “big”, we can’t help but relish the taste of a hamburger.
For more information about the cancellation of trademarks, please contact us.