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.
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.
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.
Written by: Savannah Traynor
Online retailer Backcountry.com has been facing outrage from the outdoor community after an aggressive trademark enforcement campaign.
The Colorado-based retailer, which sells outdoor clothing and recreation gear online, has been enforcing its rights to the word BACKCOUNTRY. This includes suing small businesses such as Backcountry Denim, Backcountry eBikes, Snapperhead Inventions LLC for its Marquette Backcountry Ski, and avalanche safety course Backcountry Babes.
Most of the suits have been settled in court, which has led to very costly rebranding for Backcountry Denim (now BDCo) and Backcountry eBikes (now Bakcou).
After news broke of the retail giant suing small local retailers for infringement, the outdoor community was incensed. A Facebook group titled "Boycott BackcountryDOTcom" was created. Hashtags such as #boycottbackcountry started up on Twitter.
Community members argue that trademarking backcountry is like trademarking “camping” or “mountains.”
Backcountry.com responded to the heat in an open letter on their website. Jonathan Nielsen, Backcountry.com's CEO, writes: "In an attempt to protect the brand we have been building for nearly 25 years, we took certain actions that we now recognize were not consistent with our values, and we truly apologize."
Although Backcountry.com was completely within its rights to enforce its trademark, the backlash has been significant. This is likely due to the fact that Backcountry.com was seen as a company geared towards “real people who are blending the outdoors with the everyday,” and the litigation was seen as contrary to their values.
For assistance on navigating trademark enforcement, please contact us.
Written by Paula Clancy.
The Federal Government amended the Cannabis Act and enacted new regulations to permit the sale of cannabis edibles in Canada, i.e. food or drink items made with cannabis oil.
As of today a host of edible cannabis products are available for legal sale to consumers in Ontario. Cannabis edibles are allowed to have up to 10 milligrams of THC (tetrahydrocannabinol) in a single package and up to 30 milligrams of caffeine, if it is naturally occurring (for example, in chocolate, coffee and tea). However, edible cannabis products may not contain nicotine or added alcohol. The Government has published the following guidelines outlining what industry needs to know about cannabis. See link here.
There are strict limitations on how cannabis products may be packaged and labelled, as well as how they may be promoted. To ensure you do not go off-side, please 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.
On November 15, 2019, Paula Clancy joined some 1,350 attendees at the EY Centre for the Children's Aid Foundation of Ottawa's 25th annual World Trivia Night. The trivia-goers answered a total of 100 questions in 10 rounds.
Paula serves on the Board of Directors Of the Children’s Aid Foundation of Ottawa, an organization that raises funds to support local children and the Children’s Aid Society. Their programs include the Dare to Dream Bursary Program, Camp for Kids, and the Cookie Jar Fund, which enables families to engage in recreational and cultural activities and purchase necessities.
Presented by Pat Whalen's Extension Marketing, the event raised over $55,000. This money will primarily go towards the Society's Dare to Dream Bursary Program, as well as towards sending children to summer camp and helping them participate in sports activities.
Read more about the event here.
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.
Douglas Stewart, an Indigenous teacher from Moncton, has requested that clothing retailer Urban Planet pull items using the word SAVAGE.
Urban Planet was selling orange t-shirts with the word SAVAGE printed on the front. Keep in mind that Orange Shirt Day is held in honor of Indigenous children who were displaced from their families and sent to Canadian residential schools. Although the word "savage" is often used as a synonym for "fierce," Stewart noted that the term connotes the subjugation of Indigenous peoples during the colonization of North America. Accordingly, the use of the word SAVAGE on orange shirts was particularly poignant.
Although the orange shirt appears to have been removed from Urban Planet’s website, we found other items displaying the word "savage".
It is important to thoroughly consider alternate, and potentially disparaging, meaning of words when marketing goods and services. This is where we can help – our trademark searches can help you determine whether your brand choices will be problematic and/or offensive. For more information on trademark searches and other available services, contact us.
As one author discovered, Toronto's most famous landmark, the CN Tower, is registered as a trademark. Author James Bow received a cease and desist letter from Canada Lands Company Ltd. (CLCL), which manages the CN Tower as a Crown corporation, requesting that he remove an image of the landmark from the cover of his urban fantasy novel "The Night Girl".
Apparently, Bow and his lawyers fired off a response that there was little risk of confusion between his use of the CN Tower on the cover of the book which is set in Toronto, and CLCL’s monetizing of real estate assets. Bow further argued that the Crown corporation is not active in the business of “publishing novels, let alone fantasy novels featuring a strong female protagonist who helps trolls and goblins succeed in the human world through her work at an employment agency.” The Twittersphere seems to be siding with Bow as there have been numerous Tweets in support of the author.
Trademark law never ceases to give rise to interesting plot twists. We will continue to monitor this story for further developments.
On October 2, 2019, the Madrid Protocol went into effect in Brazil. Like Canada, Brazil's trademark laws have been undergoing big changes. These include the following:
To learn more about the Madrid Protocol, contact us.
Paula Clancy was invited to attend the ELLE Gala last night as a woman mentor. This event recognizes the work of women entrepreneurs who are fighting to break the glass ceiling. ELLE stands for Excellence in Leadership, Legacy in Entrepreneurship. The evening included a mentor hour, which allowed students to connect with professionals and entrepreneurs, like Ms. Clancy. The Right Honorable Michaelle Jean (27th Governor General of Canada) was the keynote speaker.
Clancy PC is pleased to announce that Paula Clancy has been re-elected to serve on Council for the Intellectual Property Institute of Canada (IPIC). This week, Ms. Clancy attended the 93rd IPIC Annual Conference in Gatineau, where the theme was “IP Beyond Borders: Canada’s Coming of Age in a Global Economy”.
The fourth edition of the IP Canada Report has been published on the Canadian Intellectual Property Office’s (CIPO) website. The annual report covers statistics in trends in IP in Canada and around the world, and covers some key points:
For more information on how trademarks can help your business grow, contact us.
Paula Clancy was one of the Canadian delegates voting for AIPPI’s Standing Committee on Client Attorney Privilege resolution at the AIPPI World Congress in London, England. Jo Johnson, brother of UK Prime Minister Boris Johnson, was a keynote speaker at the opening ceremony for the Congress. He noted that the UK is facing considerable turbulence in the face of Brexit but remained confident that the UK would prevail as a key centre for innovation.
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.