NHL Expansion Team in Trademark Trouble – USPTO Issues Preliminary Refusal Against “VEGAS GOLDEN KNIGHTS” Application
Not even a major franchise system like the NHL is immune from trademark troubles: the USPTO has issued a preliminary refusal against the NHL expansion team’s trademark application for VEGAS GOLDEN KNIGHTS (Ser. No. 87/147,239).
The NHL had announced the name of its newest expansion team a mere two weeks prior to the USPTO refusal. The USPTO’s objection is based on potential confusion with a prior registration in the name of the College of Saint Rose in New York, which also has a team called the GOLDEN KNIGHTS. According to the USPTO: “The evidence suggests the services of both the applicant and registrant are similar in nature; consumers of sports entertainment services enjoy both professional and collegiate-level sports, and sometimes even prefer the latter over the former. The registrant’s services are presumed to include all sports played at the collegiate level, including hockey. Therefore, the services of the applicant and registrant are considered related for the purposes of the likelihood of confusion analysis.”
The NHL has indicated that it intends to argue against the citation and that it is not presently considering re-branding for its new franchise team. The NHL team has until June 2017 to respond to the USPTO’s objections.
Interestingly, Clarkson University (which is also located in New York State), has a Division I hockey team nicknamed the GOLDEN KNIGHTS. According to news reports, Clarkson entered into a peaceful co-existence agreement with the Las Vegas NHL team earlier this year.
We will continue to monitor this story.
After stumbling near the finish line, Canada and the EU were finally able to sign the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016. Bill C-30 (the CETA Implementation Act) was tabled the following day, on October 31, 2016.
CETA brings significant changes to Canada’s trademark and patent laws. On the trademark front, the most significant change is the recognition of geographic indications that extend beyond wines and spirits, to cover agricultural products and foods.
Once these changes are in effect, the use and registration of words that are protected as a geographic indicator (GI) will be prohibited. A common example would be Parmigiano Reggiano. There are certain exceptions that will permit the continued use of words like “Feta” and “Asiago”, if they were used for an extended 10 year period.
For further information, please contact Paula Clancy.
The simple and prudent answer is ‘no’. A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.
The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin. This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].
For further information, please contact Paula Clancy
The Quebec government introduced amendments to the Charter of the French Language that will come into force on November 24, 2016. As a result, all Quebec businesses will now be required to add French words to their non-French trademarks on all outdoor signage. This means that retailers like WALMART or BEST BUY will now need to include on their signage a French descriptor outlining the nature of the business, or a slogan.
Businesses will have 3 years to comply with respect to existing signage, but the changes apply immediately to all new signage.
For additional information, please contact Paula Clancy.
The Canadian Intellectual Property Office (CIPO) has issued a warning regarding various scam emails and letters that are being sent to registered patent and trademark owners. These notices are designed to closely resemble CIPO notices.
Please do not extend payment to any entity, regardless of how formal the invoice or notice looks. Any charges related to your intellectual property portfolio, including registration fees, will always be billed directly through Clancy P.C. or Brion Raffoul.
CIPO has noted the following facts about scam notices:
On December 24, 2015, a new Regulation (EU No. 2015/2424) was published which will bring several significant changes to the Community Trademark system. The Regulation will come into force on March 23, 2016. The aim of the Community Trademark Reform is to harmonize the existing national EU trade mark system.
What are some of the most relevant changes for Canadian brand owners?
Canada has concluded negotiations with 11 other countries (including Australia, Chile, Japan, Mexico, and Peru) to create the Trans-Pacific free trade zone (the largest free trade zone in the world). The text of the Trans-Pacific Partnership (TPP) Agreement was released on November 5 2015. The TPP Agreement will need to be ratified by Canada before coming into force.
The TPP addresses aims to facilitate the protection and enforcement of IP rights. Chapter 18 of the TPP covers IP. Parties to the TPP must cooperate by streamlining their PTO procedures and processes, exchanging search results and other information, and reducing procedural barriers.
On the Trademark front, the TPP requires signatories to allow for the registration of sound and scent marks, and to adopt the Nice Classification system. These requirements have already been addressed in Bill C-31 (which received Royal Assent and is anticipated to come into force in late 2017, or early 2018. The TPP also expands the protection afforded to registered trademarks, well-known marks and geographical indications, and requires stronger border measures. Although Canada recently introduced new border measures in the Combating Counterfeit Products Act, the TPP expands on these by requiring member states to provide customs officials with the power to initiate border measures ex officio with respect to goods under customs controls that are in transit.
The newly-elected Liberal government has indicated that it supports free trade. Prime Minister Trudeau stated that “[t]he Trans-Pacific Partnership stands to remove trade barriers, widely expand free trade for Canada, and increase opportunities for our middle class and those working hard to join it. Liberals will take a responsible approach to thoroughly examining the Trans-Pacific Partnership.”
For further updates, please contact Paula Clancy
In 2016, a number of changes will be implemented to the European Community Trademark System. Among the most important for Canadian brand owners are:
Clancy + Brion Raffoul continues expanding and is now listed as the 15th largest patent and trademark firm in the Ottawa Business Journal’s Book of Lists 2015. C+BR is the youngest firm to be recognized on this list, which is a testament to our success in the last 7 years. We take this opportunity to thank our clients and associates for helping us reach this important milestone.
Canadian DJ, DeadMau5 (Joel Zimmerman), known for the over-sized mouse-shaped head he wears during his electronic music shows, amicably settled a dispute with Disney this summer over the use of the “mouse ears”. DeadMau5 applied to register the mouse head in the U.S. for use with various goods and entertainment services. Disney opposed the application on the basis that the mouse head/ears bore a striking resemblance to the iconic Mickey Mouse. Fortunately for music lovers, DeadMau5 and Disney have agreed to play nice.