Creativity Life Cycles : Canadian Trademark Agent and Lawyer : Joshua MacFadden : MacPherson Leslie & Tyerman Law Firm : Patents, Intellectual Property

The operators of the website www.thinkgeek.com received a cease and desist letter (see ThinkGeek blog here) earlier this summer for an April Fool's advertisement for "Canned Unicorn Meat" which included the tagline "Pate is pase.  Unicorn, the new white meat" and the promise that the product is an "excellent source of sparkles". 

The tag line "The Other White Meat" is registered in the United States to the National Pork Board thereby triggering the objection and subsequent apology from Geeknet, Inc. which includes a statement from Geeknet, Inc. President and CEO Scott Kauffman that "[i]t was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.  In fact, ThinkGeek's canned unicorn meat is sparkly, a bit red, and not approved by any government entity."

The cease and desist and resulting publicity relating to the unauthorized use of the tagline is a rather amusing piece of brand news considering it relates to a non-existent product along the lines of earlier April Fool's jokes including a 2008 ad for the ZapCam, which automatically uploads video clips of taser victims to YouTube, or the 2009 ad for a Tauntaun sleeping bag (which subsequently became a real product).  

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Canadian Internet Registration Authority ("CIRA") is currently conducting a consultation on its Domain Name Dispute Resoultion Policy ("CDRP") to obtain feedback on the dispute process and fees. 

Anyone interested in commenting on the consultation period may participate through following this link until September 17, 2010.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Trade-marks Branch announced a consultation period (expiring June 26, 2010) to address two issues:

(1)  Priority Claims (s. 34):  The Trade-marks Branch has suggested that an applicant referencing a priority claim that wishes to restrict its reference to only certain wares and/or services may do so within the six month priority period but that such restriction cannot be removed subsequent to that timeframe.  Comments:  Since current practice does not require that an applicant identify the wares and/or services in reespect of which priority is claimed, the introduction of this new requirement may only complicate trademark prosecutions without offering significant value to trademark applicants or registrants.

(2)  Application and Use Abroad Claims (s.16(2)):  This proposal by and large recycles a previous proposal of the Trade-marks Branch along with a refinement in response to the a consultation period last fall.  Specifically, the proposal states that where an application is otherwise in order for approval for advertisement but contains an incomplete 16(2) claim (i.e. a claim referencing Registration and Use Abroad that does not reference a registration No. or a jurisdiction in which "use" has taken place), the application will proceed to advertisement in the Trade-marks Journal without the s.16(2) (Registration and Use Abroad) Claim.  However, an Applicant may have an opportunity to complete the claim at any point prior to the decision of the Registrar to advertise the application.   Comments:  While the refinement from the previous proposal is a positive development it is unclear what is meant by "prior to the decision of the Registrar".  For example, if the "decision of the Registrar" is the notice of approval, does this suggest that the Applicant must anticipate such approval, or can this amendment to the application be made at any point prior to the advertisement of the trademark?  Since the consequence of denying a s.16(2) claim will require submission of a Declaration of Use (thereby potentially delaying registration for years), there is perhaps very little advantage to the Trade-marks Branch which would simply be required to send repeated correspondence post-allowance rather than pre-advertisement.  At the same time, the consequence to Applicants (and perhaps to their Agents) should require that the Trade-marks Branch provide clarification to the date of the "decision of the Registrar".

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a follow up to an earlier post, the Canadian Trademarks Opposition Board ("TMOB") has enabled e-services to file Statements of Opposition and to submit requests for extensions of time.  In each case, these submissions can be made by following this link and selecting from the available "E-Services". 

The TMOB has suggested that this approach will allow for faster processsing of documents and immediate confirmation that submissions have been received while providing assurance that prescribed fees have been paid in full at the time of filing.  Hopefully this is only the first step in modernize workflows at the Trademarks Branch and TMOB and we will soon have the ability to file Counter-Statements, evidentiary submissions and written arguments in the same manner while also providing electronic access to the complete record of files as is the case at the United States Patent and Trademark Office (see Trademark Trial and Appeal Board).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

In a decision rendered January 22, 2009, just days before annual Robbie Burns' Day celebrations, the Federal Court of Appeal has upheld Glenora Distillery's trademark application for "GLEN BRETON"in association with "single malt whisky", reversing the earlier decision from the Federal Court.

Since the initial adoption of the trademark, the Scotch Whisky Association, which represents over 50 brands incorporating the word "Glen" in their whisky labelling,  has attempted to oppose the adoption of the mark on the basis of potential consumer confusion with the many "GLEN" branded Scotch whisky products emanating from Scotland.

An appeal to the Supreme Court of Canada is available but must be submitted within 60 days of the decision.  We will continue to monitor this case for further developments.

• Email This
• Print
• Comments
• Trackbacks
• Share Link