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.
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 firstname.lastname@example.org.
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.
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.
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.
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.
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