For the London Free Press – May 14, 2012 – Read this on Canoe

A movie studio’s roaring success opened the door for sounds to be trademarked

When one thinks of trademarks, the usual things that come to mind are word marks (the name of a company or product such as “Harrison Pensa” or “President’s Choice”) or design marks (the logo for a company or product such as the Ford blue oval or the McDonald’s arches).

Trademarks can also be registered for colour applied to an object (such as the Nerds On Site red cars, or the UPS brown delivery vehicles). And now we can register sounds as trademarks.

The Canadian Intellectual Property Office (CIPO) recently announced that it will accept applications for sound marks.

Sounds have been registrable as trademarks in the United States and other countries for some time. CIPO’s new position on accepting sound marks results from a long battle by Metro Goldwyn Mayer to register its roaring lion sound.

CIPO’s resistance to registering sound marks apparently arose because the wording of the trademarks act requires marks other than word marks to be filed as a drawing. Sound marks simply didn’t fit into the act’s registration requirements.

Many large brands have distinct sounds that form an important part of their television, radio and Internet advertising campaigns. It is logical that they should be able to file for a trademark for those, as they are no less of a brand than its word mark, logo or colour.

Indeed, sounds that don’t rely on language can become a powerful universal international brand.

We all recognize, for example, the MGM roar at the beginning of a movie, the NBC chimes on television shows and the Intel sound on computer ads.

An applicant for a sound mark registration will have to follow strict rules on the form of the application. It will also have to comply with requirements that apply to trademark registrations generally, such as not being descriptive, and not confusing with existing marks.

Applicants will need to file a recording of the sound, along with a description of the sound and a drawing representing the sound.

Now that these types of applications will be accepted, it will be interesting to see which companies rush to register their sounds in Canada, and how CIPO will approach its decisions regarding which sounds they will accept and which they will not.

http://harrisonpensa.com/lawyers/david-canton 

A CIPO (Canadian Intellectual Property Office) practice notice issued yesterday says in part:

Trade-mark consisting of a sound

Publication Date: 2012-03-28

In view of a recent Federal Court Order, effective immediately, the Office will accept applications for sound marks.

The application for the registration of a trade-mark consisting of a sound should:

1. state that the application is for the registration of a sound mark;
2. contain a drawing that graphically represents the sound;
3. contain a description of the sound; and
4. contain an electronic recording of the sound.

Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.

Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. In such cases, the mark may be registered pursuant to the provisions of subsection 12(2) or section 14 of the Act.

That’s the title of my Slaw post for today.  It reads as follows.

Drafting proper trade-mark use descriptions when registering a trade-mark is important to get the right protection. Drafting uses can sometimes be a challenge when the wares or services the mark is used for is new and changing technology. The use description must accurately describe the wares and services the mark is used for, must stand the test of time, and must satisfy CIPO’s (Canadian Intellectual Property Office) rules on use descriptions.

Software is a good example of how things can rapidly change. If a business is selling software in the traditional manner where the user installs it on his/her computer, then from a trade-mark perspective, the software is a ware. It might be described, for example, as “Computer software for [describe function]“.

But if that software is being provided as an online service, then from a trade-mark perspective it is not a ware, it is a service. It might be described, for example, as “Online service providing [describe function]“.

Then we get to the smartphone world. If it is an app installed on a phone, it would be software. If it is coded in html5 and used through the phone’s browser, then it is a service.

Since wares and services are considered to be different things, you can get into the position where, for example, software brand X might be considered confusing with software brand X1 – but not be considered confusing with service brand X1 that provides the same function to the user.

That’s the title of my Slaw post for today.  It reads as follows.

The .XXX top level domain application period is underway. This has been a very controversial topic. The XXX domain is available for users in the “sponsored community”, being the “adult entertainment industry”.

One of the criticisms of this TLD is the fear that people will try to register domains using names or trade-marks of those outside of the sponsored community. disney.XXX, or apple.XXX for example.

So a procedure is in place called “Sunrise B” where for a short period of time (September 7 to October 28), trade-mark owners can apply to have their marks blocked from registration. The wrinkle is that it costs hundreds of dollars to do that. Sunrise B applications are now being accepted.

So if you want to block your brand so others can’t use it to get a XXX TLD – the time to act is now.

But doesn’t this seem like a protection racket?

For the London Free Press -  July 4, 2011 – Read this on Canoe

You have designed the perfect logo for your business. Before investing more time and money in using and promoting your new logo, you want to make sure you have the right to use this trademark for a long time and you’re not infringing someone else’s existing trademark.

You start by doing a search of existing registered trademarks in the database of trademark registrations on the Canadian Intellectual Property Office (CIPO) website.

The search doesn’t turn up any similar marks relating to the wares and services you provide, so you file a trademark application. A few months later a CIPO examiner approves your application. CIPO then publishes your application in the Trademarks Journal to allow the public an opportunity to oppose it.

Two months pass without a challenge to your application and the trademark is successfully registered.

You are now the first person to register that trademark in Canada for your wares and services. You now have exclusive Canada-wide rights to use this logo for the next 15 years. Or do you?

In a recent decision from the Supreme Court of Canada, the registered trademarks of a retirement company in Ottawa were invalidated because of the likelihood of confusion with similar unregistered trademarks of a company in Calgary that had used them before the Ottawa company.

The Trademarks Act prohibits the registration of a trademark that is confusing with a trademark previously used in Canada, regardless of whether that trademark has been registered.

However, some people thought the test for confusion took into account the geographic region of the operations associated with the trademark. For example, if a Calgary-based retirement residence did not operate in Ontario, its trademarks would not be considered confusing with trademarks of a retirement residence in Ottawa.

The Supreme Court in Masterpiece v Alvida determined the Trademarks Act affords Canada-wide rights even if a trademark is only used locally.

The test is based on the assumption both trademarks under consideration are used in the same area. It was irrelevant the operations of the companies were in different provinces.

The companies had similar trademarks in the same industry, so the trademarks were deemed confusing. Since the unregistered trademark was used prior to registration and use of the registered mark, the registration was expunged.

This demonstrates importance of conducting searches for unregistered trademarks before filing a trademark application. It may be difficult to locate every potentially confusing unregistered trademark throughout Canada, but search services are available that perform reasonably comprehensive searches.

The case also demonstrates the usefulness of registering trademarks as early as possible. In this case, if the Calgary company had registered its marks when it first used them, it would have prevented the Ottawa company from registering its mark, thus avoiding a costly and time-consuming court battle.

That’s the title of my Slaw post for today.  It reads as follows.

The Supreme Court of Canada recently released its decision in the case of Masterpiece v Alvida which clarified some trade-mark issues, particularly on the issue of confusion.

Here are some notes from an IT-Can roundtable conference call from today that discussed the case. Presenters were Kelly Gill of Gowling, Lafleur Henderson LLP, Clarke Hunter of Macleod Dixon LLP and Brandon Potter of Macleod Dixon LLP.

The issue in the case essentially related to the use by different parties of “Masterpiece Living” vs “Masterpiece the Art of Living”, and whether they are confusing.

The main issues:

Is it relevant that the companies are in different provinces?

Is the “get up” or appearance of a word mark relevant?

Is it relevant that the wares are costly?

The case reinforced some existing trade-mark understanding – but also clarified some things.

A registration gives national rights – and you must assume for the confusion analysis that they are used in the same place. The fact that they are actually provided in different provinces is irrelevant.

When dealing with a registered mark – one doesn’t look at how the mark is actually used – one looks at the actual registration. So if one has registered a word-mark – the fact that the word-mark is used in practice in a certain font or design is irrelevant.

These marks were for retirement homes, which is an expensive and not a quick decision. The court said that it is a first impression test, not after research. The price of the goods is a factor, but not as definitive as some had thought.

The court cast some doubt on whether expert or survey evidence was necessary, and encouraged litigants to rely on judge’s decisions without them.

From the perspective of the trade-mark registration process, the case reinforces some things:

It’s a good idea to search across Canada – preferably using a dedicated trade-mark clearance service that looks at common law uses across Canada.

It’s best to register sooner rather than later, as once filed it acts as a barrier to future applicants of confusing marks. (Rights always go to first use – but first application gives a procedural and cost advantage.)

Consider a trade-mark watch service that monitors the trade-marks journal for similar applications, so it can be opposed then, rather than finding out later and having to litigate it. It is simpler and cheaper.

If dealing with expensive wares and services – it does suggest one gets broader protection. This balances off against the former notion that the time to research after seeing a mark and acting on a purchase is relevant.

That’s the title of my Slaw post for today.  It reads as follows.

It can be frustrating when a client comes for trade-mark advice, but has already started down a less than optimal path with their branding from a trade-mark perspective. If they have already used the brand and built up some goodwill, or have invested emotional energy into the brand, it can be difficult to change. Here are a couple of common issues that arise.

The most common mistake is adopting brands that are descriptive of the product or service. The thought behind that is “how else is anyone going to know what my product or service is?”

That is wrong for several reasons.

One simply cannot register a trade-mark that is descriptive. The trade-marks act says one cannot register a mark that is “…clearly descriptive or deceptively misdescriptive…of the character or quality of the wares or services…or of their place of origin”.

From a practical perspective, a brand that is descriptive doesn’t do a good job of distinguishing one’s brand from the competition.

A good brand is memorable, not descriptive.

The second mistake may or may not be a mistake depending on one’s circumstances and business plan, but it’s something that should be thought through early. A business often adopts several brands. Perhaps one for its overall name, and others for their individual products. That’s not unusual, and in some circumstances can be the right approach – but it may not be the best approach for a small or emerging business.

First of all, that means registering several trade-marks to protect those brands. And while registering a single mark doesn’t cost a lot of money, it can add up quickly if you have to register several. And multiply that by the number of countries one might sell in.

And if a business is trying to build up its brand image, this approach fractures the businesses brands along its product lines, rather than concentrating on one central brand that will gain recognition from all of its marketing efforts and sales.

It may be a better approach to create one memorable brand, and name your individual products in a more descriptive way on the understanding that those product names can’t be registered or protected.

ipblog.ca has a good post entitled The Perils of Co-ownership of Intellectual Property that refers to a case where a trade-mark application was held invalid.  The reason – it was registered by one entity in its own name, when it was actually owned jointly by 2 parties.

For the London Free Press – March 8, 2010

Read this on Canoe

U.S. courts may have to decide if a teen’s parody of a popular clothing line is an infringement

The North Face Apparel Co., more commonly known as The North Face, recently filed suit against Jimmy Winkelmann, a 19-year old high school student and his small Missouri clothing company called The South Butt.

North Face’s statement of claim alleges trademark infringement and dilution, among other claims.

North Face sells athletic apparel and gear for runners, rock climbers, snowboarders and others. South Butt sells jackets, T-shirts and other apparel “approved for relaxation purposes only.”

Winkelmann says his intent was not to rip off the North Face, but to offer consumers an alternative.

He came up with the South Butt idea to mock North Face fleece jackets worn by the popular crowd at his school.

In response to North Face’s tagline, “Never stop exploring”, South Butt adopted “Never stop relaxing.”

The North Face’s legal counsel sent Winkelmann a cease and desist letter in August 2009, requesting that he stop using the South Butt name and logo and halt all sales, production and promotion of South Butt products.

According to North Face, the two logos are so similar as to possibly cause “consumer confusion as to the source, sponsorship or affiliation of particular promotions and services that could dilute or tarnish the distinctive quality of the famous and distinctive marks.”

Winkelmann recently filed a trademark application for the South Butt, which the North Face legal counsel also asked him to withdraw.

In response, Winkelmann’s counsel — a friend of Winkelmann’s father, who apparently agreed to represent the teen in exchange for a good bottle of red wine — filed a somewhat irreverent defence.

Mr. Watson, Winkelmann’s legal counsel, stated “the sense of parody employed by Winkelmann within the context of his South Butt undertakings clearly demonstrate a respectful, if not faltering ‘anti-North Face’ posture designed in all respects to distinguish itself from any and all North Face products.”

The defence points out that, to emphasize its position that the marks are unlikely to confuse, the defendant added this to its website: “We are not in any fashion related to nor do we want to be confused with the North Face Apparel Corp. or its products sold under ‘the North Face’ brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

Unless it is settled, the case will ultimately be decided on the technicalities of U.S. trademark law.

Since one legal tests of trademark infringement is customer confusion, you be the judge: Are the marks confusing enough that customers might think products bearing them are from the same source?

Out-Law.com has an article entitled Facebook IP protection is only for companies that join that says Facebook’s protection against misuse of brand names in Facebook names is only available if the brand is actually registered as a username.  A cynical person might wonder if this is in part a way to get more businesses to sign up for Facebook.

The lesson for business, or anyone with a brand they want to protect, is that it may be worthwhile registering your business name and any brands as usernames for as many social networking sites and web 2.0 sites as you can.  Even if you don’t plan to actively use it, set it up with basic information and links back to your website.  For example, facebook, twitter, linkedin, flickr.   There are too many to possible get them all – but at least cover the mainstream ones.   Not sure what they are?  Search Google or Bing for social networking sites or web 2.0 sites.  Or ask anyone younger than you are.