CLANCY PC - IP LAW
  • Home
  • About
  • PAULA's BIO
  • Contact
  • IP Blog

@CanadianIP News


Follow us on Twitter @CanadianIP
Follow us on LinkedIn @ClancyPC
Follow us on Facebook @ClancypcIP
Follow us on Instagram @ClancyPClaw

BOTH Clancy PC and Paula Clancy Recognized by the WTR For Excellence in Trademark Law

16/2/2021

0 Comments

 
Picture
By Sukey Omran
Clancy PC is honoured to be recognized as one of Canada’s top trademark firms by the World Trademark Review.  A special congratulations to Clancy PC’s very own Paula Clancy who has also individually been recognized for another consecutive year as one of the world's leading trademark professionals. 
 
We are very grateful to be recognized for our excellence in the area of trademarks and this designation is a testament to our drive in providing quality service. We take pride in continually growing and developing our skills in trademark law and it is a privilege to serve our clients.
 
Check us out in the World Trademark Review!
0 Comments

Section 30 (i) of the Trademarks Act and Bad Faith

16/11/2020

0 Comments

 
By Sukey Omran
Picture
Photo by Wesley Tingey on Unsplash
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 authorization 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!
0 Comments

WALDORF ASTORIA mark in USE in Canada - despite lack of waldorf hotels

5/10/2020

2 Comments

 
By Sukey Omran
Picture
Photo by Wesley Tingey on Unsplash
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.
2 Comments

WTR 1000 2020 – Paula Clancy Among World’s Leading Trademark Professionals

4/3/2020

 
By Alina Cartan
Picture
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.
​​
To learn more about WTR 1000, click here.
To view the official rankings, click here.
​

Is phrase “Choose Your Own Adventure” generic? Netflix would argue "Yes"

2/3/2020

 
By Ashley Moniz
PicturePhoto by Ella Deane on Unsplash
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.
 
​
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.

USPTO Now Requires Email Addresses

28/2/2020

 
By Alina Cartan 
PicturePhoto by Annie Spratt on Unsplash
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.


​

Lucasfilm Files For "THE CHILD" Trademark One Month After The Mandalorian Premiere

6/2/2020

 
Written by Alina Cartan.
PicturePhoto by Andy Holmes on Unsplash
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.

CIPO Limits Time Extensions for Office Action Responses and Goods Classification

30/1/2020

 
Written by Ashley Moniz

PicturePhoto by Jon Tyson on Unsplash
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.

Breakfast Burrito

13/1/2020

 
Can "Breakfast Burrito" function as a trademark?

The well-known southwestern dish consists of breakfast items, such as eggs, bacon, and sausage, often topped with burrito ingredients such as salsa and beans and wrapped up in a flour tortilla.  Recently, two trademark applications were filed in the U.S: one for "Breakfast Burrito" and the other for "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 at 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.
​
Picture
Photo by Bret Kavanaugh on Unsplash

Cannabis Edibles, Extracts and Topicals Legalized in Canada

22/10/2019

 
Picture
Three new types of cannabis products have been officially legalized in Canada: Edibles, extracts, and topical lotions.

The gold rush for filing cannabis-related trademarks is well underway. Cannabis companies are actively securing whatever trademarks they can in anticipation of the lucrative new market.

There are, however, tight restrictions in place regarding packaging, how the trademarks can be used, and how the products may be advertised.

To learn more about these and any other restrictions, contact us.

Photo by Esteban Lopez on Unsplash

AIPPI World Congress: Genuine Use of Trademarks

6/9/2019

 
Picture
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.

Photo by Robert Bye on Unsplash

"Taco Tuesday" Trademark Causes Stir Online

27/8/2019

 
Picture
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.”

Picture
The registration as it appears on the USPTO's Trademark Status & Document Retrieval page.
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.
Photo by Christine Siracusa on Unsplash

What "THE"? Ohio State University Applies to Trademark "THE"

23/8/2019

 
On August 8, 2019, Ohio State University filed application no. 88/571,984 with the USPTO for the trademark "THE". The application was brought to light by trademark attorney Josh Gerben on Twitter.
Filed in class 25, the application covers "Clothing, namely, t-shirts, baseball caps and hats." A specimen was submitted along with the application, showing a red Nike shirt brandishing the word "THE" in block text above the Ohio State University logo.
Picture
The "THE" application, as it appears on the USPTO's Trademark Status & Document Retrieval page.
Other universities have responded with ribbing, such as the University of Michigan's tweet of the word "OF" behind its logo.

​The application is now awaiting examination, but it may face some difficulty progressing to registration. For example, is the word "THE" sufficiently distinctive to warrant protection as a brand? We will continue to monitor this application for updates.


For further information on what constitutes a distinctive brand, contact us.

The Ohio State University has filed a trademark application on the word "THE."

The filing, made on August 8th, indicates #OhioState is offering a brand of "THE" clothing.

Not sure how 'The U' will feel about this one.

My analysis □:#BuckeyeNation #MiamiHurricanes pic.twitter.com/1UvLOAOnIc

— Josh Gerben (@JoshGerben) August 13, 2019

™ pic.twitter.com/bx2vTBUtst

— University of Michigan (@UMich) August 14, 2019

Another Mark "McCancelled"

13/8/2019

 
Picture
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.

Photo by Lidye on Unsplash

Paula Clancy Speaks On the Ottawa Entrepreneurs Podcast

8/8/2019

 
Picture
Paula Clancy is honored to have been a guest on the Ottawa Entrepreneurs podcast with Patrick Whalen. Ottawa Entrepreneurs is a podcast for business owners in which entrepreneurs share valuable lessons learned and ‘tips from the trenches’.  Each episode is hosted by Patrick Whalen, founder of Extension Marketing. For more information visit www.extensionmarketing.com.

Thank you Pat for this opportunity and thank you to the listeners for tuning in!  If you need any assistance with IP protection in Canada or around the world, please contact us at hello@clancypc.com.

​Peppa Pig has the Last Snort

5/6/2019

 
Picture
A competitor to popular children’s animated TV series Peppa Pig has come to the playground—a tapir with the mark “TOBBIA”.

The show Peppa Pig is known for its 2-dimensional drawings and centers around Peppa, a young pig, her family and friends. Its creation over a decade ago has become an icon for young children around the world.

In April 2015, Entertainment One UK Ltd and Astley Baker Davies, owners of the Peppa Pig Mark filed an application for a declaration of invalidity against Xianhao Pan’s trademark for “TOBBIA”. Both marks are associated with Class 25 "clothing".

The case was originally heard by the EUIPO Cancellation Division and, to much surprise, the court held the marks were not confusingly similar. The decision was appealed to the EUIPO First Board of Appeal. It was here that the marks were reviewed for similarities and differences, visually, aurally and conceptually.

In regards to the visual similarities, the Appeal Board found the shape of the head and snout to be almost identical as well as the ears, cheeks and eyes. In addition, the shape of the bodies was also found to be very similar.

The elements of the word were also considered. The Board noted that aurally, the double letter in the middle of both words “Peppa” and “Tobbia” would be similar when spoken. Xianhao Pan's argument that the animal depicted in his mark was a tapir, not a pig, was dismissed by the board.

The Appeal Board declared the “TOBBIA” mark invalid in the EU for all goods.
​
For more information about EU trademarks, please contact us.

Image: EUIPO

​Ariana Grande Files Trademark “Thank U, Next”

27/5/2019

 
PictureAriana Grande - thank u, next
Last month, singer and actress Ariana Grande filed two new trademark applications for ARIANA GRANDE THANK YOU, NEXT and thank u, next in the United States.  The marks relate to her hit single of the same name.

ARIANA GRANDE THANK YOU, NEXT™ is for use with a line of beauty products including perfumes, body lotions, bath gels and body mists, whereas thank u next™ is for use with clothing.

The artist has already successfully registered the marks ARI BY ARIANA GRANDE and ARIANA GRANDE before the USPTO, as well as having pending applications for ARIANA ARMY, BE GRANDE, ONE LOVE MANCHESTER, EAU FOR ALL, ARIANA GRANDE SWEET LIKE CANDY. 

Ariana is one of many artists seeking trademark protection for their brands. Artist Taylor Swift famously trademarked several of her lyrics including “This Sick Beat” and “Nice to Meet You, Where You Been?” Similarly, Hailey Bieber has filed an application for the trademark “Bieber Beauty” with future plans to launch a beauty and cosmetics line.
​
Yet, you don’t need to be a celeb to recognize and take advantage of the power of branding.  If you’re looking to register your next trademark, please contact us.

Image: Ariana Grande – thank u, next

​Is FUCT Fashion Too Scandalous to be Trademarked?

23/5/2019

 
Picture
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”. 
​
For more information on what can (and cannot!) be trademarked, please contact us.

Photo by Flaunter.com on Unsplash

One Stop Shop – “Google Shopping” Trademark Filed in Canada

13/5/2019

 
Picture
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. 
​
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. 
​
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.

Photo by Jeff Sheldon on Unsplash

Canadians Can Enjoy WALDORF-ASTORIA hotel services even without WALDORF-ASTORIA hotels in Canada

16/4/2019

 
Picture
In the recent case of Hilton Worldwide Holdings LLP v Miller Thomson 2018 FC 895, the Federal Court of Canada affirmed that the provision of “hotel services” does not require a physical presence in Canada for the purposes of demonstrating “use” of a trademark.

In Hilton Worldwide, the mark of issue was WALDORF-ASTORIA. The Court overturned the Registrar’s decision to expunge the mark in association with “hotel services” where the owner did not have a “bricks-and-mortar” location in Canada.

Instead, the owner had an interactive website which offered worldwide registration, discounts to customers who pre-paid for rooms as well as loyalty programs. The Federal Court found that services such as registration and loyalty programs did constitute providing “hotel services” in Canada.
​
This case follows the recent Dollar General case maintaining its broad interpretation of “use” with services.
For more information on the Canadian trademark registration process please contact us.

Photo by Crew on Unsplash
<<Previous

    Archives

    October 2021
    September 2021
    August 2021
    July 2021
    June 2021
    May 2021
    April 2021
    March 2021
    February 2021
    January 2021
    December 2020
    November 2020
    October 2020
    September 2020
    June 2020
    May 2020
    April 2020
    March 2020
    February 2020
    January 2020
    November 2019
    October 2019
    September 2019
    August 2019
    July 2019
    June 2019
    May 2019
    April 2019
    March 2019
    February 2019
    December 2018
    November 2018
    May 2018
    December 2017
    May 2017
    December 2016
    November 2016
    July 2016
    February 2016
    January 2016
    November 2015
    September 2015
    June 2015
    March 2015
    January 2015
    December 2014
    October 2014

    Categories

    All
    Appointments
    Awards
    Brexit
    EUTMs
    Paula Clancy
    Trademarks
    UKIPO
    WTR 1000

Clancy PC

28 Deakin Street, Suite 201
Ottawa Ontario K2E 8B7
​Canada
pclancy@clancypc.com
Review us on Google
© Clancy PC, 2020
  • Home
  • About
  • PAULA's BIO
  • Contact
  • IP Blog