Tag: Trademarks

Picking: A Few IP Collectibles Since My Last Post

There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal … Continue Reading

CAN YOU SLEEP AT NIGHT – YOU NEED TO KNOW ABOUT INJUNCTIONS IN CANADA

The mattress business is a competitive one!  Trade-marks in the mattress business are valuable! Sleep Country Canada Inc. is a major mattress retailer in Canada.  It is best known for its slogan “Why Buy a Mattress Anywhere Else?”.  It owns two Canadian trade-mark registrations for this slogan.  This trade-mark, together with its accompanying musical jingle, … Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective … Continue Reading

CALIFORNIA MEN PLEAD GUILTY TO $1.66 MILLION TRADEMARK SCAM

As often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds.  The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to … Continue Reading

TTAB ADAMANTLY REFUSES TO CHANGE MARIJUANA TRADEMARK POSITION

When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or … Continue Reading

IS YOUR TRADEMARK MERELY DESCRIPTIVE?

In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive.  If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register.  So, how do you determine if your mark is descriptive and which … Continue Reading

Food Fight and Road TRIPS!!!!!: Treaties And Product Names Getting Messy

Two words, uttered in a certain tone and with a certain speed, are apt to suggest a bit of wastefulness, a touch of anarchy, and yet a sense of communal participation.  Those two words, from Faber College of lore to present discussions of law: Food Fight!!!!!.  And, we see the long smoldering discussions of geographical … Continue Reading

SMOKE SIGNALS FROM SPECIMEN OF USE SUPPORT REGISTRATION REFUSAL FOR “HERB” SALES DESCRIBED IN APPLICATION

In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.”  Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of … Continue Reading

What’s Your Evidence? The Danger of Hearsay Evidence in IP Litigation

In Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well. At … Continue Reading

Implications of Brexit on Trademarks in the EU

The United Kingdom’s vote on June 23, 2016 to withdraw from the European Union has left many issues in flux, including the rights of owners of European Union Trademark registrations (EUTMs), formerly Community Trade Marks (CTMs). While details of the separation have yet to take shape, below are some points to keep in mind:… Continue Reading

Nuthin’ but a Leaf Thang – Toronto Maple Leafs take issue with Snoop Dogg’s trade-mark application for LEAFS BY SNOOP Logo

Maple Leaf Sports & Entertainment Partnership (“MLSE”), the parent company of the National Hockey League’s Toronto Maple Leafs, has requested an extension of time to oppose a U.S. trade-mark application filed by one Calvin Broadus – better known as Snoop Dogg (“Snoop”) – for a logo featuring the words LEAFS BY SNOOP on a leaf-shaped … Continue Reading

New Fee Proposal for Trademarks in Canada

The Canadian Intellectual Property Office (CIPO) has published a Fee-for-service proposal (the Proposal), seeking public input by July 5, 2016.  The Canadian government significantly amended the Trade-marks Act (the Act) in 2014, in order for Canada to accede to the Singapore Treaty, the Nice Agreement and the Madrid Protocol. Those amendments have not yet come into force, however, pending the adoption of new Regulations on … Continue Reading

Proposed New French Language Requirements For Businesses in Québec

After losing the battle in court over the requirement that businesses must add French language to English trade-marks displayed on signage outside their stores, the Québec government announced its intention in June 2015 to make modifications to Québec’s Regulation respecting the language of commerce and business (“Regulation”). As recently reported in the media, the Québec government has announced proposed … Continue Reading

Excuses, Excuses: Saving a Canadian Trade-mark Registration in the Absence of Use

In a recent decision of the Federal Court of Appeal (“FCA”), the FCA took the rare opportunity to consider an appeal from a section 45 expungement proceeding. In One Group LLC v Gouverneur Inc, the FCA reviewed the Registrar’s decision not to expunge One Group LLC’s (“One Group”) trade-mark registration for STK (the “Mark”) on … Continue Reading

TTAB Proposes First Major Set Of Rule Amendments Since 2007

The Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office hears applicant appeals from the final decisions of trademark examiners, and oppositions to trademark applications, concurrent use proceedings, and cancellation proceedings against trademark registrations.  The proceedings are held on a paper record with oral arguments by counsel.  Matters before the … Continue Reading

WITHOUT PATENT PROTECTION, CAN YOU PROTECT THE DESIGN OF A PRODUCT IN THE UNITED STATES?

Suppose that you have a unique design for your product but no patent protection in the United States?  Can you protect your product design to prevent a competitor from producing the same or similar design?  Is there anything you can do? Let’s say you created a unique design for a product such as a smart … Continue Reading

Canada’s Federal Court Provides Welcome Guidance on Geographically Descriptive Trademarks

Canada’s Federal Court of Appeal (the “Court of Appeal”) has recently had the opportunity to clarify the test for  registrability of geographically descriptive trademarks in two separate decisions. The most recent of these is the decision in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60.  In the proceedings underlying the appeal, MC Imports Inc. … Continue Reading

IP HOUSEKEEPING – A CANTER THROUGH EU REFORMS COMING YOUR WAY DURING 2016

Here’s a quick “heads up” of what I see as the key reforms of IP laws in the pipeline at the European Union (EU) level that are likely to affect EU regional registrations of IP, as well as the national laws of each and every EU Member State.  You will no doubt be reading more … Continue Reading

“The Donald” Trump – Avoids Trade-mark Licensor Liability in Canada

I spent years at my office watching the gradual construction of the 70-story mixed-use TRUMP TOWER complex in downtown Toronto, Canada.  It is now a Toronto landmark and a place for the lawyers and bankers in the financial district to wine and dine clients.  Trump, two of his affiliated companies (Affiliates) plus the licensed developer … Continue Reading

The NOW TV case: Mere reputation of international brand is not enough to protect unregistered trade mark in the UK

Introduction The world has “internationalised” at an astonishing rate in the last 20 to 30 years.  People are better travelled and are familiar with overseas hotels, restaurants and media.  And it is the same with consumer brands: in the UK we are as familiar with Hershey’s chocolate from the US and Vegemite spread from Australia … Continue Reading

U.S. Federal Circuit Appeals Court sets standards for determining bona fide intent to use mark in commerce

A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application … Continue Reading
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