By Alina Carta
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.
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.
Written by Alina Cartan.
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.
Written by Ashley Moniz
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.
There are two applications filed, "Breakfast Burrito" and "Breakfast Burritos," both covering "Breakfast burritos; Burritos." The marks are clearly descriptive, not to mention the fact that the southwestern dish has been marketed and sold in restaurants for decades, including fast food giants such as McDonald's.
Suffice to say, the applicant might face objections upon examination.
For more information on what you can trademark and how, contact us.
Paula Clancy is attending INTA’s 2019 Leadership Meeting in Austin, Texas. This is her last year as Chair of the Public Information Committee, though she is excited to take on a new role in the “Brands for a Better Society” Committee for the 2020-2021 term.
We're pleased to announce that Paula Clancy will be a member of the panel session "Genuine Use of Trademarks" at the AIPPI World Congress in London on September 17.
For more information and to register for the panel, visit here.
It turns out that “Taco Tuesday” is a trademark owned by a fast food chain from Wyoming, Taco John's. The mark, filed on March 23, 1989 and registered with the U.S. Patent and Trademarks Office (USPTO) under registration number 1,572,589, covers “restaurant services” in international class 42. The only exception in the country-wide registration is the state of New Jersey, where the same mark owned by a different restaurant preceded it.
This registration has caused an online stir after Freedom’s Edge Brewing Co., located five blocks from the taco chain’s national headquarters, received a cease and desist letter. The warning was for a sign advertising an unaffiliated food truck that parks outside of the establishment weekly.
The Wyoming brewing company posted on their Facebook July 31, the day after receiving the letter, “Just to clear things up, we have nothing against Taco John's, but do find it comical that some person in their corporate office would choose to send a cease and desist to a brewery that doesn’t sell or profit from the sales of tacos.”
While the company says the term is part of the company’s “DNA,” others argue that the slogan is no longer distinctive of Taco John's due to its widespread usage. "Taco Tuesday" has its own Wikipedia entry mentioning its widespread usage in restaurants, LeBron James is in headlines celebrating it, not to mention references from pop culture such as the Simpsons.
In other words, the Taco Tuesday mark may have suffered "genericide". For more information on "genericide" and how to avoid it, please visit INTA's guide here.
After cancelling the BIG MAC trademark in the EU, Irish fast food chain Supermac's has continued its offensive against McDonald's, this time petitioning to cancel its MC trademark in the EU. In another blow to the multinational fast-food giant, the EUIPO has partially cancelled the MC mark on the basis of a lack of use as a standalone mark as it is exclusively used as a prefix, only retaining chicken nuggets and some sandwiches.
While McDonald's will continue to maintain its registrations for products containing the "Mc" prefix, such as "McNuggets" and "McFlurry", the EUIPO determined that there is no use of the MC mark by itself. The question, then, is if the addition of these other elements altered the distinctiveness of the mark. The EUIPO Cancellation Division determined that, if paired with a descriptive element such as a "Muffin" (ie. as in "McMuffin"), the additional element does not add to the distinctiveness of the mark.
McDonald's will most certainly appeal the decision; however, the partial cancellation of the MC trademark is a reminder that giants aren't immune to challenges by the "little guy".
For further information on protecting your brand, please contact us.