Creativity Life Cycles

Sound-Based Trademarks Now Registrable in Canada

Josh MacFadden — Thu, 29 Mar 2012 08:06:54 -0700

After twenty years of legal wrangling and a March 1 Federal Court Order directing that the Registrar approve the application, the Canadian Intellectual Property Office ("the CIPO") has now approved the trademark application of Metro-Goldwyn-Mayer Lion Corp. ("MGM") to register their familiar lion's roar that is presented along with the MGM lion at the beginning of the company's movie recordings.

Coinciding with the approval of the case, the CIPO has also issued a Practice Notice entitled "Trade-mark consisting of a sound" which details the requirements for a successful sound mark application. The Practice Notice requires that such applications for registration of a trademark consisting of a sound should (see MGM example below):

Practice Notice Requirements	The MGM Application No. 0714314
1. state that the application is for the registration of a sound mark;	ROARING LION (SOUND ONLY) DESIGN
2. contain a drawing that graphically represents the sound;
3. contain a description of the sound; and	The trade-mark is a sound mark consisting of a lion roaring. An electronic recording of the sound has been placed on file.
4. contain an electronic recording of the sound.	From the Practice Notice: New applications for sound marks may only be submitted by way of a paper application, and not through CIPO's online filing system. The Office can only accept a recording of the sound in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD. Other types of recording media and references to a hyperlink or a streaming location cannot be accepted. Electronic recordings should not contain any looping or repetition of the sound. The electronic recording of sound should only be submitted at the time of filing, and need not be re-submitted with a revised application.

Concurrent with this announcement is an ongoing Consultation to solicit input on proposed changes to the Trademarks Regulations which include proposals for the potential approval of other 'non-traditional' trademarks (i.e. holograms, motion marks and colours) as well as adjustments to the examination and opposition process. The deadline for comment is April 23, 2012.

Apple's Use of "iPAD" in Mainland China Challenged

Josh MacFadden — Mon, 13 Feb 2012 11:45:07 -0700

The Globe and Mail and other news agencies are reporting a brewing dispute in mainland China over the use of the trademark iPad has resulting in the seizure of Apple iPads at retail locations in northern China due to a dispute over rights to the iPad trademark in China.

Shenzhen Proview Technology, a subsidiary of Proview International Holdings Ltd. - a manufacturer of LCD screens, has filed a trademark violation complaint with the Chinese commercial bureau of Beijing citing its ownership of iPad trademark for over 10 years. Apple had previously purchased the rights with respect to the trademark in Taiwan and in December had unsuccessfully sought to enforce a 2009 agreement between the parties allegedly transferring iPad trademark rights to Apple.

Currently, Shenzhen Proview is seeking the seizure and destruction of offending goods, creating not only a challenge to Apple's ability to expand its business in the large and growing market for its products in China, but exposure to potentially significant legal costs and related expenditures in order to use its well-known trademark in China.

This story highlights a concern businesses and organizations - that trademark rights are specific to each jurisdiction and even a brand as "iPad" trademark - which might be regarded as "famous" in some jurisdictions, must be cleared and registered to enable a business to protect and enforce its rights.

Beyoncé and Jay Z's New Age Birth Announcement

Josh MacFadden — Tue, 07 Feb 2012 17:31:01 -0700

On January 26, 2012, Beyoncé's holding company, BGK Trademark Holdings LLC filed an application to register the name of her newborn daughter (born January 7, 2012), BLUE IVY CARTER, in association with a thorough list of consumer products, together with retail and entertainment services.

BLUE IVY CARTER is already in demand, however, and two other enterprising applicants have also sought to register trademarks referencing the famous infant, including:

a January 11, 2012 application for "Blue Ivy Carter NYC" in association with infant and toddler clothing, etc. based upon "use" of the mark (for specimens, see here) The application was subsequently abandoned; and
a January 20, 2012 application for "BLUE IVY CARTER GLORY IV" in association with a range of cosmetic and fragrance products.

Fortunately for Beyoncé, Jay Z and their already famous infant daughter, examination of each of the above-referenced applications has been swift and included a Section 2(a) False Connection Refusal, suggesting that BLUE IVY CARTER is not connected with the goods provided by the applicant under the applied-for mark and that she is "so famous that consumers would presume a connection". As mentioned the first application has already been abandoned and, without consent, the second application is unlikely to succeed.

Coincidentally, a pre-existing registration does exist for a BLUE IVY logo which references the retail services of a Wisconsin based company - a registration which pre-dates the birth of the famous baby so it may be interesting to follow how Blue Ivy's famous parents address the rights holder's position or whether the USPTO may issue a confusion objection.

A Few Practical Tips to Avoid Infringing Third Party Rights

Josh MacFadden — Wed, 01 Feb 2012 09:56:40 -0700

Be careful when copying material. Most material on the Internet (i.e. photos, logos, articles, etc.) is protected by copyright. Such material can only be used with the written consent of the owner (i.e. a license). The penalties of using content without such permission can be costly and embarrassing to you or your business.

Be careful when selecting and adopting new trademarks (i.e. logos, product names, slogans, etc.). It is important to research whether a new trademark may infringe on a third party’s copyright and/or trademarks. Consult with a legal advisor to research the availability of your new trademarks before investing large sums of time and money in adopting new brand names, logos or slogans. A failure to do so may result in a need to re-brand or, at worst, litigation. Bottom line: the loss of momentum for your new brand, not to mention the costs associated with litigation, are huge in comparison to appropriate due diligence.

Comply with license terms. Periodically review compliance with all key licensing agreements to which you are a party and make sure you are complying with user counts and other license terms and conditions. If you are not sure, check the license or consult with your legal advisor.

Protect third party confidential material. Many businesses will have material from third parties that is protected under confidentiality agreements. Segregate this material from non-confidential material, don’t disclose to third parties without authorization, and only discuss that information with others on a “need to know” basis.

Quick Tips for Business Managers to Protect Your Intellectual Property ("IP")

Josh MacFadden — Fri, 27 Jan 2012 10:27:02 -0700

Know what you have. Know what your business owns and what is licensed into the organization. Consider whether a client deliverable, an internal document or module of software (or a portions thereof) are developed, owned or licensed from a third party?

Protect what you have. If a deliverable or work product is owned by your company consider whether it should be protected by IP registration or trade secret policies. If you are unsure, contact your legal advisor.

Put IP Notices on original materials. This includes appropriate notices, symbols and disclaimers for your IP, for example:

Copyright notices include the © symbol and copyright notices such as “© 2010 . All rights reserved.”;
Patent rights can be indicated on a product or its packaging (i.e. Canadian pat. No. 1,234,567); and
Trademark rights can be indicated with use of the TM symbol or ® symbol for registered marks along with trademark notices such as “ is a registered trade mark of work”.

Make sure Consulting and Employment Agreements are in place to address Confidentiality and IP Ownership. Make sure written agreements are in place referencing commitments of non-disclosure, confidentiality and IP ownership before disclosing IP to employees or potential employees or engaging outside consultants. If there is not an effective agreement in place, a consultant, for example, may claim IP ownership or otherwise misuse key information or materials for their own benefit or for others in the industry.

Mark confidential information as “CONFIDENTIAL”. Where documents contain confidential information, mark the document “Confidential” and protect it from unauthorized disclosure. Only discuss confidential matters internally on a “need to know” basis and do not disclose to a third party unless effective confidentiality and non-disclosure agreements are in place.

New Entrants to Public Domain

Josh MacFadden — Mon, 16 Jan 2012 08:38:12 -0700

With our change of the calendar to 2012 it is worth noting the many artists, writers, lyricists and other 'creative types' whose work now passes into the "public domain" as a result of applicable copyright laws (i.e. in Canada, the life of the author/creator plus fifty years; in other jurisdictions, the life of the author/creator plus seventy years).

With the help of a third party blog post entitled "Public Domain Day 2012", the unofficial list of creators whose published works have potentially* entered the public domain in Canada includes, among others, Ernest Hemingway and Carl Jung, both of him died in 1961. In other jurisdictions (i.e. Europe) where the relevant date is 1941, the list of creators includes such prominent figures as James Joyce, Virginia Woolf, and Frederick Banting.

* It is important to note that entry into the Public Domain is not automatic and subject to many qualifications including works of joint authorship, unpublished/posthumous works, retroactive extensions, etc. If in doubt, contact legal counsel for advice.

Why Does Intellectual Property ("IP") Matter?

Josh MacFadden — Fri, 13 Jan 2012 09:34:33 -0700

IP is an asset of every business and indeed, may be the most valuable assets of a business. Such assets include brand names, logos, slogans, domain names, software code, literary works, inventions, confidential information and trade secrets (i.e. everything from your customer list to your corporate logo).

For many businesses IP may be unprotected, under-exploited, or vulnerable to theft or infringement by third parties thereby reducing the potential competitiveness of a business and opportunities for growth. Any individual or organization which invests in innovation fails to capture and exploit the true value of that investment if IP rights are not protected, commercialized and enforced. Moreover, to the extent that a third party’s IP (i.e. software) is being used in conducting business, it is essential to know what your rights and obligations are to any such third party to ensure you are not violating the rights of third parties.

Cease and Desist Issued to Anti-Asbestos Website

Josh MacFadden — Sun, 21 Aug 2011 12:01:20 -0700

The unauthorized use of the Conservative Party of Canada's logo on a website has placed Michaela Keyserlingk, an anti-asbestos advocate, in hot water.

Ms. Keyserlingk is the widow of Robert Keyserlingk, who died in 2009 of mesothelioma, a cancer caused mainly by asbestos exposure. She started her website (www.canadianasbestosexports.ca) to generate awareness on the dangers of asbestos in an effort to stop the mining and export of the product from Canada and claims that the unauthorized use of the CPC logo is merely to gain the attention of the Canadian government. Ms. Keyserlingk has made statements to indicate that she will remove the logo if a high-ranking member of the Conservative party meets with her to account for its continued support of the Asbestos industry. To date, the logo remains on the website.

New Winnipeg Jets Logos Unveiled

Josh MacFadden — Fri, 22 Jul 2011 15:24:17 -0700

True North Sports & Entertainment, owners of the Winnipeg Jets, have today released images of their new logos for the upcoming NHL season:

The logos represent a departure from the previous "Jets" logo as the team seeks to make a new identity from that of the former Winnipeg club. and an opportunity to generate additional fan enthusiasm for the return of NHL hockey to the city.

Disney Applies for 'SEAL TEAM 6' Trademark

Josh MacFadden — Tue, 17 May 2011 07:41:45 -0700

Within one day of the raid on Osama bin Laden's compound, Disney Enterprises, Inc. filed three trademark applications with the U.S. Patent and Trademark Office ("USPTO") for the trademark SEAL TEAM 6 in association with a range of products and services, including: entertainment and education services, clothing, headwear, footwear, a range of toys, electronic games, etc. and "snow globes", Christmas stockings, tree ornaments, and decorations.

Given the rushed nature of these "intent to use" filings it will be interesting to see whether the full range of products do, in fact, appear on department store shelves in the months ahead or whether Disney's filing was merely an effort to stake a claim on the Trademarks Register while they contemplate the business case and/or approach to capitalizing on one of the more significant United States news stories in recent years.

CIRA Warns .ca Owners of Phishing Scam

Josh MacFadden — Wed, 13 Apr 2011 16:08:19 -0700

The Canadian Internet Registration Authority ("CIRA") has distributed an announcement that it has received reports of domain name holders of a phishing scam which is utilizing images from the CIRA website. Generally, such scams involve an email sender masquerading as a trustworthy entity seeking to acquire sensitive information from the email recipient such as usernames, passwords and credit card information.

In this case, the scammer masquerades as CIRA by using CIRA logos, etc. to collect personal information and credit card numbers from those whom have registered .ca domains.

CIRA advises that it does not ask domain owners for credit card information (which is instead gathered by .ca certified domain Registrars) and if such information has been provided it is recommended that the credit card company be advised immediately.

Anyone with questions or concerns may contact CIRA by telephone at 1-877-860-1411 or by email at info@cira.ca.

Target Trade-mark Subject of Dispute

Josh MacFadden — Fri, 21 Jan 2011 15:14:52 -0700

Hot on the heals of the announcement of the Zellers Inc. purchase by Target Corporation, a statement of claim has been filed by Fairweather Ltd. against Target seeking damages of $250 million for claims of trademark infringement, diminished goodwill while also seeking an injunction to prevent adoption of the "TARGET" trademark in Canada.

Notably, Target Brands Inc. ("Target USA") has several trademark applications in the midst of opposition proceedings

In the circumstances Target USA will have the option of either re-branding Canadian operations or acquiring or licensing rights to the trademark from Fairweather.

Starbucks Unveils New Logo

Josh MacFadden — Wed, 05 Jan 2011 08:15:10 -0700

Image Courtesy of Starbucks Corporation.

Starbucks Corporation has announced it will be rolling out a new logo in its stores in March, 2011 as part of the company's 40th anniversary. As the evolution of the Starbucks brand (above) clearly indicates the new logo avoids referencing both "Starbucks" and "coffee" which has sparked speculation that the company is moving toward expanding the company's product focus beyond the realm of coffee, specialty beverages and related products and services. Indeed, in an announcement on the company's website, Starbucks president and CEO Howard Shultz acknowledges the company's movement toward new products and "channels of distribution" as the 40th anniversary roll out approaches. The customer comments on the new logo, (some of which appear on the same page as the Shultz announcement), appear mixed while some marketing professionals acknowledge the trend of certain well-known brand owners (i.e. Nike) have been moving toward removal of brand names alongside company logos.

Creative Commons Provides Logo For "Public Domain" Marking

Josh MacFadden — Tue, 21 Dec 2010 10:21:40 -0700

This week in the "in case you missed it" category of copyright news, I wanted to respond to a question that recently came up regarding the process of identifying whether certain works are in the public domain.

Creative Commons, a not-for-profit organization dedicated to enhancing the free and flexible usage of works intended for the public domain, had previously solicited opinions on a process to designate such works. In early October, 2010 Creative Commons announced the release of the "public domain mark" (depicted above) which is intended to indicate that users of works so designated can exercise all of the rights of the work's creator (i.e. to copy, modify, distribute, perform, etc.).

While the mark may be useful for creators to designate their works as public domain, any potential users of such content should be wary: the presence of the public domain mark does not provide a warranty of originality or non-infringement.

Bottom Line - The User Assumes the Risk.

Those intending to use or rely upon the "public domain mark" to use third party content should carefully review the source material, the Creative Commons database for a form of licence with the creator and, when in doubt, contact the copyright holder or the site where the material was found to confirm the ability to use the material.

Nevertheless, in spite of taking such steps it is important to note that, without a formal licence agreement (containing appropriate representations, warranties and indemnities, etc.) users of works designated as "public domain" will be assuming a certain amount of risk as to the validity of a creator's claims of ownership and non-infringement so it is recommended that such users consider the potential costs (i.e. infringement claims) and benefits (i.e. access, availability) of using such works versus the potential value of creating or formally licensing original works from a creator.

Implications of the .xxx Domain Extension on Trademark Owners

Josh MacFadden — Thu, 16 Dec 2010 14:36:02 -0700

The Internet Corporation of Assigned Names and Numbers ("ICANN") announced that it is considering the submissions of the ICM Registry to develop and administer the controversial .xxx domain extension and will defer its decision until February, 2011 after several years of delay on the issue.

The .xxx extension is intended to consolidate pornographic, adult entertainment and related providers within a single domain extension thereby enabling consumers of such content (or those wishing to avoid it for filtering purposes) a simplified means of identifying adult websites.

Trademark owners operating in trade channels entirely unrelated to the adult entertainment industry are concerned about the potential consequences of opening up the .xxx domain extension on their brands (i.e. is there a risk of a particular trademark being registered as a .xxx domain without the consent or knowledge of the brand owner).

To resolve this concern, the ICM Registry ("ICM") has indicated that the sunrise launch of the .xxx extension will include an opportunity for businesses, organizations and private individuals which do not wish to be associated with the adult industry (via the .xxx domain extension) to protect their trademarks, names, etc. through a blocking program involving a one time fee and registration. As described by ICM, the process, developed in partnership with Valideus, is intended a departure from the traditional method of protecting brands (i.e. via defensive domain registrations) to enable rights holders to pre-emptively register their protected terms to ensure that they are not associated with the adult content associated with the .xxx domain extension.

Until contract negotiations are finalized between ICANN and ICM brand owners can take no action but would be well advised to monitor the issue via their trademark counsel to obtain any updates on the final .xxx blocking program, process, fee(s), etc.

Recognizing the Value of Trademark Registrations: Celebrity Edition

Josh MacFadden — Tue, 14 Dec 2010 16:23:05 -0700

Katie Thomas of The New York Times recently wrote an article on professional athletes seeking to obtain trademark protection as a means of both protecting their personal brand and capitalizing on their fame.

A quick review of the USPTO and CIPO databases reveals trademark applications and registrations for names, slogans and catch phrases for such athletes as Chad Ochocinco (Logo), Terrell Owens ("I LOVE ME SOME ME", The TO Design, and "GETCHA POPCORN READY"), and Darrelle Revis' trademark "REVIS ISLAND" while certain sponsors such as Nike International Ltd. protect the brands associated with their own athletes (i.e. LEBRON and the Lebron Design).

Dallas Cowboys Website Disappears for Failure to Renew

Josh MacFadden — Wed, 10 Nov 2010 10:43:18 -0700

Following an eventful weekend in which the Dallas Cowboys (1-7) lost in a blowout to the the Green Bay Packers (6-3) and subsequently fired head coach Wade Phillips, apparently the team forgot to renew its domain name registration for the team's official website www.dallascowboys.com. As a result, for 48 hours the website was temporarily a generic landing page suggesting that the site was available for purchase from Network Solutions LLC. The error was subsequently corrected November 9th as the domain name was renewed. According to The Dallas Morning News, the administrative contacts for the domain referenced Jerry Jones Jr., the team's Executive Vice President and Chief of Sales and Marketing Officer (and son of team owner Jerry Jones) and have since changed to a contact email and mailing address care of Network Solutions, the Registrar. Lesson learned for the team, as the domain is now renewed until November 2, 2020.

The Gap Reverses Logo Redesign

Josh MacFadden — Wed, 13 Oct 2010 08:39:10 -0700

(You may have guessed that the Gaplash logo appears on the right)

Whether simply a misguided effort to reinvigorate the logo of Gap Inc. or shrewd publicity stunt to guage public sentiment for its brand, Gap Inc. distributed a press release announcing a reversal of a rebranding process commenced online less than one week ago.

The company, which attempted to utilize social media and crowd sourcing to devise, launch and monitor the public reception for the new brand last week, is now utilizing social media such as facebook, to apologize to its customers and reverse its position, stating "We've heard loud and clear that you don't like the new logo. We've learned a lot from the feedback. We only want what's best for the brand and our customers". See Marka Hansen, President, Gap North America's Huffington Post blog post which explains the company's position here.

While some commenters (see, for example, comments to the Globe & Mail article here) have suggested the move was simply to grab media headlines and reaffirm public loyalty to the brand, perhaps the lesson that can be distilled here is that companies with established brands cannot simply disregard their consumers when engaging in changes to their imaging. In this case, efforts at crowd sourcing feedback likely did not canvass a broad enough audience to solicit input as to whether the effort to "modernize" the logo would be well received, etc. Nevertheless, recent publicity over the change will likely provide little damage to the company's overall image and indeed, the additional media exposure may heighten the consumer interest in the company as the holiday shopping season approaches.

Changes to Patent Rules Coming in to Force October 1, 2010

Josh MacFadden — Wed, 15 Sep 2010 11:32:14 -0700

The Canadian Intellectual Property Office ("CIPO") has announced that amendments to the Patent Rules will come into force on October 1, 2010. The amendments, first published in the Canada Gazette Part II on December 9, 2009 include:

simplification of the definition of the term "description";
clarifying the purpose of section 16(4);
consolidation of provisions that address the establishment of a filing date;
clarity regarding the confidential period;
amending maintenance fee references to the Patent Act;
updating the definition of "small entity";
clarifying Form 3 of Schedule I; and
simplifying completion requirements.

Practice Notice Issued for Trademark Priority Claims

Josh MacFadden — Sun, 12 Sep 2010 12:03:32 -0700

On September 2, 2010 the Canadian Intellectual Property Office ("CIPO") issued a Practice Notice to provide guidance on the use and interpretation of (Paris Convention) priority claims in accordance with the Trade-marks Act (the "Act").

Priority claims, which are available within six (6) months of the after the date on which the earliest application was filed for registration of the same or substantially the same trademark for use with the same kind of wares or services (the "Priority Period"), allow trademark applicants to essentially 'back date' the date of subsequent filings to the date upon which the original application was filed. Claims for priority may be submitted in the following ways:

1. including the claim in an application at filing within the Priority Period;

2. by amending a previously filed application to include the claim, provided the amendment is submitted within the Priority Period; or

3. by filing a separate declaration in respect of an application within the Priority Period.

A priority claim must reference the date of, and country where, the initial application was filed and, where an error has been made an Applicant may only correct those claims within the Priority Period. The Trade-marks Branch has indicated that a priority claim need not include the application number in the priority claim - however, such applicants may be required to provide a certified copy of the earlier application. If an error has been made in the application number referencing the earlier filed application, the Trade-marks Branch has indicated that the number may be corrected at any time before registration.