Important Amendments to Canada's Trademark Law
  
Canada's finally moving towards aligning its trademark law with the rest of the world.
On June 19, 2017, Canadian government published proposed regulations that—when adopted—will result in implementation of Canada's commitment to join Madrid Protocol and introduce some significant amendments in the way trademarks are registered in Canada.
I recorded a video where I go over 6 important changes and one important non-change.
Here's a short table of contents, but you should really watch the video.
1. Canada is joining the Madrid system that will allow Canadians file international trademark applications. It would also allow non-Canadians register their trademarks in Canada more easily.
2. There will no longer be a requirement to show (or declare) use to register your trademarks in Canada.
3. It will be easier to trademark shapes of your products.
4. Canada is officially adopting the Nice Classification of Goods and Services. The practical result of that for business owners is that the government fees are going up. Significantly.
5. The registration term is going down from 15 years to 10 years.
6. You will be able to divide a pending trademark application to get a registration certificate for one part of the application and continue fighting with the Trademarks Office over the rest of your application.
7. Official marks are not gone. They will continue creating chaos and disarray—for no good reason.
Like I said, this is just a brief summary.
Just watch the video.
Patricia's First Ever Recital
Patricia (my 7-year-old) has been taking singing lessons for some time but had never been in front of an audience.
Until earlier this month when she had her first recital organized by her voice teacher.
She sang two songs to a roaring crowd of parents who came to see the progress of their little ones.
One of the songs was the Canadian anthem. Watch her sing it here.
Masha (11-year-old) volunteered to introduce her but was so worried that she ended up showing some weird gymnastics while she was at it. You can see that in the same video.
A perfectionist in me might point out a few things that Patricia should get better at, but at this point, I just wanted to share her triumph in getting in front of a live audience and doing her best.
Watch the video. It's very cute! :)
Trademark Screw-Ups of the Month
Google Facing Two New Trademark Lawsuits Over AdWords: The question is amount of notice that Google has had and amount of control that they exercise (or should exercise) over use of third-party trademarks in ads. The first case (a law firm's trademark hijacked by a lawyer referral service for a click-to-call ad) is a textbook example of unsavory unfair competition tactics that trademark laws are designed to protect businesses from. I'd say, someone is definitely going to pay for that. Not sure it'd be Google. But the referral center and their advertising agency will probably be on the hook. Google will be on the hook if they were notified by the law firm and didn't do anything about it while the misleading click-to-call ads continued running. As for the second case (website selling Teri Jon knock-offs), again, the plaintiffs are suing the entire chain from the website operators to payment processing companies (PayPal, American Express, Visa and Mastercard) to Google. I don't think Teri Jon expects a monetary award from Google or Amex, but they may get a court order that would prevent payment processors from running transactions for the website operator, which would pretty much kill the counterfeit business.
‘Covfefe™’: Russian company seeks to trademark Trump-ism: LOL, unlike the comments we just posted about Swedish, Norwegian, British, and Norwegian entrepreneurs who ran to the Trademarks Office to trademark COVFEFE, this article is actually full of really funny posts and comments. From the trademarking perspective however, it's still the same idea. You don't own the word when you trademark it. You own the word only in connection with products and services that you register your trademark for. In Russia, you can invalidate a registered trademark if, after it was registered, it was not used by the trademark owner for 3 years. So yes, an early application will give you a heads-up in case something actually becomes out of that brand, so you can negotiate the terms of its transfer, but in the long run, you have to actually do something with it, something that goes beyond simply filing a trademark application.
Spigen has a trademark beef with Andy Rubin's Essential Products: Actually, Spigen already owns registered trademark for ESSENTIAL and SPIGEN ESSENTIAL that cover all sorts of accessories and parts for cell phones and tablets. In addition, Spigen applied for the same trademarks in connection with cameras and home and office electrical power automation systems. These latter applications are still pending before USPTO because the Trademarks Office is of the opinion that these applications by Spigen are confusingly similar to a previously registered ESSENTIAL trademark for "electronic controllers for automated plubming systems." My guess is, Spigen will need to limit the scope of products in order for these applications to go through. As for the newcomer who is trying to enter the market with the Essential phone and accessories, I must question the wisdom of ignoring the demand letters that they received from Spigen. While "Essential" may not be the most creative name out there, it is still a trademark registered on a principal register, which will give Spigen enough power to seek injunction to prevent sales of Andy Rubin's products in the U.S. Having to change the name in the process is painful. Brainstorming over a new name after you have given so much love to the one you already have is not where you want to be as an entrepreneur. But putting a new product on the market AFTER you've been warned that it will probably get you in trouble may not be a wise decision. To put it mildly.
Bob Marley companies win $2.4 million damages in coffee trademark case: There are many remedies available to a trademark owner whose trademark is infringed. One of them is getting the defendant to pay all of its profits resulting from unauthorized use of your trademark. Best part is, the plaintiff only has to prove the defendant's gross sales only. Then it's up to the defendant to prove all elements of cost or deductions. In other words, it's up to the defendant to prove that some of the profits were not due to the infringement. This is how you can end up looking at a court judgment for $2.4M against you even if—as you say—you didn't make any profits. Be careful.
Nintendo Trademark Reveals Theme Park Name, Hints at Mario Kart Ride: It's a amazing how much a trademark application can reveal in terms of one's plans. Experienced business owners don't make loud announcements and expensive preparations and then wait until someone snatches their trademark from under their nose. First they make sure they secure the brand—and then they make the loud announcements and expensive preparations. In a grand scheme of things, the cost of trademarking SUPER NINTENDO WORLD is negligible. But the value of a protected brand is huge. More importantly, the cost of having someone dispute the name after they'd open their doors would be massive.
Hormel, Purina in beef over bacon trademark: Trademarks will not give you a monopoly over your product itself. A trademark will not allow you to prevent your competitor from using bacon in their pet food. The real question here is whether the use of "Black Label" by Nestle Purina Petcare Company for dog treats infringes on Hormel Foods' "Black Label." More specifically, is Hormel's "Black Label" distinctive enough to prevent anyone from calling their food products—even pet food—that. Based on the law suit, looks like Hormel's strongest point is HOW Purina is using the name to create an association with Hormel's bacon. If Hormel can prove that Purina indeed "exploited an image of Hormel's Black Label-brand bacon in an advertisement that depicts an excited cartoon dog sniffing at the meat case in a grocery store," THAT could be the real clincher in this case.
Art Basel Is Reportedly Suing adidas for Trademark Infringement: Instant karma? The world is now used to law suits that Adidas brings against anyone who so much as thinks as using a straight line—especially when there are three of them—in anything that a person can wear. This time around, Adidas gets caught using a trademark of someone else. Art Basel's lawyers didn't miss an opportunity to remind the world about Adidas's litigiousness over trademarks. And just because Adidas was giving the sneakers away rather than selling them doesn't make a difference. The defendant does not necessarily have to make money to be found to have been infringing the plaintiff's trademark. Using someone else's trademark does not necessarily mean it has to be sold. It's enough for the infringing products to be distributed to the public. The weakness of Art Basel's lawsuit, of course, is that it was a one-off. In other words, Adidas is no longer making sneakers that bear Art Basel mark. So Art Basel's leverage over Adidas is minimal. They can't get a huge settlement out of Adidas threatening to get the court to order Adidas to stop Amaking sneakers with Art Basel mark on them, because Adidas is not doing it anyway. So Art Basel's remedies are basically limited to a compensation for unauthorized use of the brand in the past. How much can Art Basel really make in these circumstances? Probably not much. But, as it often is in stories like this, the PR value of the lawsuit is probably greater than the court reward or settlement.
Dunkin' Donuts claims trademark infringement by new North Attleboro coffee shop: Intention to create confusion CAN play a role in trademark infringement cases but the defendant's intention to infringe is not required for the trademark owner to win the case. In other words, if the plaintiff can prove that the defendant knowingly and intentionally created an impression that their products or services are somehow related to those of the plaintiff, then even if the trademarks side by side are not very close, the courts may take the view that the plaintiff's trademark was infringed. However, just because the defendant used a similar brand without any intention to infringe—even if the defendant had no idea about the plaintiff or their trademark—is not a good enough defense. That's one benefit of registering trademarks: it creates a presumption of ownership and validity and it also creates a presumption that everyone is put on notice about your trademark. In other words, even if no one IN FACT knows about your trademark, everyone is PRESUMED to know about it. Whether or not "North Runs on Mike's" was confusingly similar to "America Runs on Dunkin" we'll never know, since this case will not see the light of a courtroom because the small coffee shop prudently decided not to get into a legal fight with a multi-million dollar giant.
WWE Has Filed New Trademarks For Pete Dunne and Shinsuke Nakamura: The usual blueprint: come up with a brand -> trademark the brand -> exploit the brand. Notice that it's not come up with a brand -> exploit the brand -> see if we can still trademark the brand. Order of steps is important.
Ford Battling Universal Pictures Over Jurassic World’s ‘Raptor’ Trademark: First of all, Ford is not battling Universal in court. Ford has simply opposed Universal's trademark application that was approved by USPTO and published for opposition purposes. Secondly, Ford opposed Universal's trademark not because Ford thinks that dinosaurs and trucks have anything to do with one another. Ford opposed Universal's trademark because both Ford owns a trademark for RAPTOR that covers toys and Universal is in the process of obtaining a trademark for RAPTOR SQUAD—also for toys. In other words, there is a very small overlap between the goods and services—and that is what's got Ford's attention. Universal's problem, however, is that it NEEDS to also be able to sell toys and other merchandise. The opposition was just filed, so we'll see how this battle develops.
Wawa prevails against Paterson’s Dawa in trademark dispute: A trademark gives its owner the right to stop others from using not only identical marks, but also similar marks, as long as the owner can prove that the marks are similar enough to cause customer confusion. The "confusingly similar" test relies on a fictional person, an average consumer in a hurry, who vaguely remembers the registered brand. The question that is asked is whether that consumer, when exposed to the second brand, would be likely to think that the second brand comes from the same source as the first one. In this case, the standard would be whether customers who vaguely remember Wawa stores (but not necessarily a frequent customer), when seeing the Dawa store, would think that Dawa and Wawa are owned by the same company or even are the same thing. Dawa was probably right to settle. I hope that when they think of a new name they don't make a mistake so many small businesses make when forced to rebrand by a big company. I hope Dawa does not rebrand into something that is STILL too close to Wawa, like Vava, or Dava, or Davva, etc.
‘Cash Me Outside’ girl sues gaming company for using her phrase: It's fascinating what one national TV appearance can do to a person or a business. That's how viral sensations are born. This is also how your catchphrases and product names attract attention of unscrupulous people who would want a free ride on your popularity. If you haven't secured your brands by the time you are put in front of millions of eyeballs and ears, you've got a problem. In this case, Danielle Bregoli filed a bunch of trademark applications in April and May of 2017, several months after a few other people applied to get these brands trademarked. If she fails to secure the brands for herself, she may have a hard time winning her lawsuits against the software companies. Simple lesson here, if you say you're KNOWN AS something, make sure you trademark that term ASAP. Otherwise, you may become known as someone who failed to protect what could have been a great name.
First They Came For the Tobacco Trademarks…: It is indeed becoming a huge problem. Absolutely despicable how bureaucrats and regulators steal liberties from both the public and the manufacturers of what the bureaucrats deed worthy of regulation. Exactly, first they came for the tobacco trademarks. Then it will be sugary drinks. Then it will be GMO foods. Then it will be [insert some other cause progressives are fighting for]. As much as I don't like second-hand smoke, I find it appalling how smokers are being treated around the world. It's not the government's job to mandate a bar or an airline to offer smoke-free experience. It's not the government's job to protect smokers from themselves. It's not the government's job to tax businesses to death while they're trying to kill them with regulations at the same time. It's easy today to attack smokers, because fewer and fewer people smoke. But this issue has nothing to do with smoke and cancer. It has everything to do with individual rights. It has everything to do with freedom. It has everything to do with usurpation by the government of your right to make choices, even when they are stupid choices. It has everything to do with the government's stealing your right to fail. It has everything to do with your life being owned by the government. If you don't resist the slaughter of tobacco brand trademarks today, you may not recognize your life in 10 years. And I guarantee, the change won't be for the better.
Zootopia copyright battle continues; writer that is suing Disney details plot similarities: Copyright does not protect ideas or general concepts. It protects specific expression of such ideas. In disputes like this, the question the court needs to answer is whether the subsequent script was an unauthorized reproduction of a previously created literary work (which amounts to copyright infringement) or merely the use of an unprotectable idea (which does not amount to copyright infringement). While courts may be suspicious to the timing of the plaintiff's resurfacing with their claims against what is now the 2nd highest movie ever, with gross sales of over $1 billion, the fact that the plaintiff waited until they were sure the defendant made a fortune does not by itself mean the infringement didn't happen. One thing is certain: if it ever gets to trial, the decision would be a thriller to read. Just imagine the judge analyzing the differences between "small, cute, furry, female, prey animals, who are outsiders to Zootopia"!
BEYONCE’S IN A LEGAL BATTLE OVER BLUE IVY CARTER TRADEMARK: The danger in filing a trademark application without a clear intention of using it in the foreseeable future is that you may end up losing it by the time you actually plan to use it. So here's what really happened here. Beyonce's company filed for the trademark to protect her daughter's name. The trademark application was allowed but could not proceed to registration until use of the mark in commerce commenced. What this means is that, in the U.S. for a trademark to be registered, the applicant must provide evidence of selling or offering for sale of all products and services listed in the trademark application. The time to provide such evidence is limited. The applicant is allowed to make several requests to extend the time to provide evidence, each time for 6 more months, but eventually, no further requests will be granted, and the trademark application will be deemed abandoned. The common strategy to deal with this issue is to file a new trademark application that would essentially copy the first one—a short time before the last extension for the first application expires. This way, there is continuity in that the applicant always has a pending trademark application that would prevent others from trademarking identical or similar brands. The problem, however, is that while there may be an uninterrupted pendency of trademark applications, each application is treated separately. Whatever obstacles did not manifest themselves on the first application may well show up on the second, or third. The Trademarks Office is not bound by its decisions over the first application when it makes a decision on the second, or third. Which is what happened here when someone opposed Beyonce's second trademark application, while the first application went unopposed. Would be interesting to see how this matter is resolved.
Ivanka Trump brand applies for, wins more China trademarks: Enough already! Just because you hate President Trump doesn't mean his and his daughter's attempts to trademark their brands in China are abuse of power. Just because someone may do something for the President and his daughter, doesn't mean they're doing it as a bribe. Is Twitter bribing the President by transmitting Mr. Trump's messages? No, Twitter does what it does according to its regular practice. If Eric Trump drove a Ferrari, would the media consider whether Italy could be said to have bribed the President if his Ferrari performed well and didn't break down all the time? This is pure nonsense. Trademarking is done on a per-country basis. Trademarking in countries other than your own can only be done through foreign government institutions. Just because you don't want your brand to be ripped off doesn't by itself create a conflict of interest—even if you are the President or the President's relative. The media would have been more justified in criticizing Trump for lack of business acumen if he WASN'T protecting his brands.
Hershey Entertainment targets The Milton Hotel in trademark infringement fight: Hershey Entertainment does not own a registered trademark for MILTON. In fact, the only U.S. registered trademarks that mention MILTON HERSHEY are MILTON HERSHEY SCHOOL trademarks owned by, you guessed it, Milton Hershey School—Not Hershey Entertainment. According to the article, Hershey Entertainment vigorously attacks hotels for alleged trademark infringement, and so far all of them caved in to Hershey's demands without going through a full-blown trial. We'll see what happens in this case...
In Ruling That May Impact ‘Redskins’ Controversy, SCOTUS Won’t Ban Offensive Trademark: This is the decision that a lot of people were waiting for. I was hoping for it. A huge victory for free speech and trademark rights. In a way, Obama administration's attack against Redskins' trademarks provided a perfect example of the government usurping free speech and depriving a football team with a long history of one of their most valuable assets, their brand. In case you haven't heard, just before the USPTO Trademark Trial and Appeal Board voted to cancel six trademarks owned by Redskins in 2014, President Obama in an interview said, "If I were the owner of the team and I knew that there was a name of my team — even if it had a storied history — that was offending a sizeable group of people, I’d think about changing it." Whether TTAB's decision was made with a view to Obama's words is secondary. What matters is that it could have created a dangerous precedent when the government could destroy your property, just because they didn't like your message. Because of the procedural status, Redskins' trademarks were not the ones that the U.S. Supreme Court looked at in the Slants case, but everyone knew that its decision would create a precedent that would either allow Redskins to regain their trademarks or whether it would open the door to mass-expropriation of intellectual property by the government. In the Slants case, a band sought the court's opinion that just because some may find the word "slants" offensive, it should not bar the music band with that name from registering it as a trademark. The case was more about free speech than it was about trademarks. Remarkably, the Supreme Court found that free speech trumps the government's desire to suppress it. Duh!
Justice Alito's words provide a good insight on the dynamics of this case: "...it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things... It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public... For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike), or “Have it your way” (Burger King)? Was the Government warning about a coming disaster when it registered the mark “EndTime Ministries”?"
So yes, Slants will be able to get their trademarks registered. Redskins will probably be able to get their trademark registrations restored.
Two other questions arise in this regard, however.
First question is whether the decision of the Supreme Court would also do away with prohibition on registration of "immoral or scandalous matter"? The Slants case dealt with "matter that may disparage... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." The Federal Court whose decision the Supreme Court affirmed found that "the disparagement proscription of [§1052(a) of the Trademarks Act] is unconstitutional. However, there are other proscriptions in §1052(a) of the Trademarks Act, namely a proscription against registration of immoral, deceptive, or scandalous matter. USPTO routinely denies registration of swear words as trademarks. In theory, the reasoning behind "scandalous and immoral" prescription is exactly the same, the government making a value judgement about the merits of the message, which was just found unconstitutional. On the other hand, the courts' decisions only deals with a very narrow (although hugely important) provision. Looks like the decision of the Supreme Court should open the door to registration of a whole bunch of four-letter-worded trademarks. The real question is whether USPTO will require someone to try their case in court again.
Second question is whether the decision of the Supreme Court would also open the door to registration of marijuana brands on the Federal level. Currently, because marijuana is not legalized federally in the U.S., USPTO refuses to register trademarks that have anything to do with what can be a federal crime. Granted, this issue is separate, but it's a huge problem now that marijuana is legalized—and is becoming a massive industry—in several American states, while the players cannot properly secure that which allows their consumers to tell one brand from the other.
It would be very interesting to see what influence this Supreme Court decision will have over the development of trademark laws in the U.S.
Taj Palace becomes first Indian building to get trademark: Who would have thought it'd take them this long! I've said this time and time again, if you have something recognizable, something memorable, and you're not protecting it, you're squandering one of your most valuable assets!
GENE SIMMONS Seeks To Register Trademark On 'Devil's Horns' Hand Gesture: I'm actually eternally grateful to Gene Simmons for writing dozens of songs I love listening to. I'd enjoy my life less if his music wasn't around. So unlike the envious crowd of people who think that Gene has "made enough money," I'm not gonna bash Gene for wanting to monetize his creativity. What fascinates me is that it took him so long to file this trademark application. Frankly, at this point, the gesture has become generic—even he indeed was the one who created it. In other words, no one can trademark it because it has become a universal symbol for "This rocks!" or something to that effect. With thousands of bands using the gesture dayly for decades, his chances of getting this trademark approved for "Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist"—even if he claims first use in commerce since November 14, 1974—are slim to none. But hey, Gene has filed about 180 trademark applications and only 17 were registered. What's interesting though, is that he was able to trademark an image of a dollar sign on laundry bag. Check this out if you don't believe me: http://tsdr.uspto.gov/#caseNumber=75547697&caseType=SERIAL_NO&searchType=statusSearch . How he got that one in is a mystery to me.
UPDATE: In a surprise move, just hours after the news about the newly filed application started spreading around with many people openly mocking Mr. Simmons about his trademarking move, he expressly abandoned his trademark application, which means his trademark application will no longer pose any danger to those who might want to show the ubiquitous hand gesture while rendering entertainment services. I guess it's the best $275 (the government filing fees to file a trademark application in the U.S.), Gene Simmons spent on publicity!
Amazon Granted Patent to Prevent Online Price-Checking In-Store: This is a ninja move. The idea makes a lot of sense, yet, like many things that Amazon came up with, no one had thought of that before. If you are a store and you are offering free wi-fi, the least you can ask of your customers is not to use your wi-fi to find a better place to shop. The problem with this patent, however, is that most people now have data plans. So the store could only control their wi-fi traffic, unless they also install devices that render phone nonoperational, which probably wouldn't be a good idea (think of all helpless husbands who need to call their wives to make sure they're buying the right brand of pasta sauce!)
Russia renewed Trump Organization trademarks during election: Was the Russian Trademarks Office supposed to wait for the trademarks to expire? Just to make sure that the left-leaning media doesn't attack President Trump over some made-up reasons?! You see, Trademark Offices have rules and deadlines. When a deadline comes up, the applicant must ask for an extension of time. If they don't ask for extension, the trademark application is deemed abandoned. This is fake news at its finest.
Irish Breeze sues US firm in baby wipes trademark row: A trademark is not going to protect the product itself. Just because your wipes "contain almost entirely water and no chemicals," doesn't mean you own the word "Water" as your trademark. To claim ownership in the product, you may try to get a patent, but trademarks do not protect functionality. What trademarks protect is the identity that allows customers to tell products and services of one company from identical or similar products and services of another company. And no, WaterWipes and WaterPura are not confusingly similar marks.
George Clooney sells his tequila company for up to $1bn: Newsflash: George Clooney is an actor, a celebrity. He's not, I repeat, he's not a professional liquor manufacturer. In fact, he admits to have started his tequila brand by accident some 4 years ago. He and his co-founders found a distiller in Mexico and instructed the distiller to create tequila that "tasted great and didn't burn going down." So what exactly did George Clooney and his team just sell to Diageo for $1,000,000,000.00? In case you're lost in zeros, it's one billion dollars. What they sold was basically the brand. Now, here's the kicker. Casamigos tequila brand was launched in 2013. Guess when they filed their trademark application? May 9, 2011. A year and a half BEFORE launch. I don't know how much they would have been able to sell the brand for if it wasn't properly trademarked, but I can guarantee you, it wouldn't have been for a billion crispy dollars. If there ever was an example how creating, building, and protecting a brand creates a massively valuable asset, it's this. It's absolutely fascinating! You and your friend come up with a brand, you trademark it 19 months before launch, you reach some level of success with your brand, which at that point is well protected, and you get an offer to sell the brand off for a bazillion dollars. I don't know about you, but I think they're feeling pretty good about their investment in trademarking now. What do you say?
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