New Year’s Trade-Mark Checkup

Every year, I recommend that businesses perform a “checkup” on their branding and advertising to ensure proper usage of their trademarks.

First, recall that even though a trademark may be registered, this alone does not ensure protection – a trademark must be used properly and consistently to ensure its survival and scope.  For more information on how to use a trademark properly, see this post.

Second, what if your trade-marks, advertising or logos don’t look exactly like what you originally started with 5, 10, or 20 years ago?  With “design” trademarks or logos, this is entirely possible where new artwork is updated or re-started after old design templates are lost, or where marketing decisions affect the look and feel of the logo.  An example of this was highlighted in the well-known decision of the Court in Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA).  In that case, the long-standing use of a thin, fit penguin design on shirts was changed by marketing decision to a more robust “corpulent” penguin design.  As a result, a challenger attempted to strike the “thin” penguin registration from the register of trademarks due to its non-use (this is possible under section 45 of the Trade-Marks Act… see my post on this here).  However, the Court ruled that the deviation from the original design was not sufficient enough as to completely abandon the original trade-mark.  With “word” trade-marks, the test is similar but extremely stringent as even a single letter or space could potentially alter the meaning of the trade-mark.  It remains prudent, however, that if your trade-mark has changed, you should register the new one.

Thirdly, it may be possible that you are no longer using your originally registered trade-marks, or you have developed further trade-marks which are not registered.  You should review these and seek registration for any trade-marks you now use.

For more information on trade-marks or if you would like a trade-mark “checkup”, contact me.


Santa Claus (TM)

A search of the US trademark database revealed 123 citations including the terms SANTA and CLAUS as of December 20, 2012.  A handful of these citations are the exact name SANTA CLAUS.  Oddly enough, these marks claimed specific protection over un-Christmaslike products such as video games, trading cards, hard cider, and live cuttings from young plants.

In Canada, the trade-mark database as of December 20, 2012 lists only 20 trade-marks using SANTA CLAUS, 3 of which are the exact name.  These also cover strange products, including ornamental plants and soap.

Both Canada and the US each have legislation barring the registration of a trade-mark if it falsely suggests a connection with any living individual (in Canada this is section 9(k) of the Trade-Marks Act).  Santa Claus is certainly entitled to expunge these trade-marks based on the false connection.  It would appear that he has been mostly successful in ensuring that no one obtains a trade-mark registration over his most critical wares and services, including protection over toys, toy manufacturing, toy distribution, reindeer-powered avionics, red velvet suits, and hearty laughs.  However, it would also appear that his solicitor has been remiss in enforcing Santa’s rights against those seeking protection for plants and soap.

Santa, if you’re reading this blog, I’d be happy to take on your case.  Please bring me a 2013 convertible Aston Martin db9.


New Year’s Resolution #1 – Trademark Your Name!

The protection that registration lends to your business is important.  Let’s recap what benefits you receive, only through registration:

1. Exclusive right to use the trademark across Canada rather than certain areas where you carry on business

2. The additional right to sue others for infringement

3. Extremely strong protection of your trademark after 5 years (so register now!)

4. A definable business asset

5. Easier to license the trademark and control its use

6. Enables easier registration in foreign countries

For more information contact me.



New Top Level Domains

Starting in January 2012, ICANN (the organization that administers domain names on the Internet) will accept applications for custom gTLDs (global top level domain), which will stand alongside the existing 22 gTLDs that you are familiar with, such as .com and .net.

From January 12 to April 12, 2011, and for the paltry fee of $185,000 and an annual maintenance fee of $25,000, you too can have your very own gTLD.  In order to apply, applicants must prove a bona fide claim to the domain they are registering (i.e. connected with a business).  Trade-mark rights will be examined by the application board, but trade-mark owners are also affected in two ways:

First, trade-mark owners will have an opposition period to oppose any applicant who is attempting to register a gTLD that infringes on an existing trade-mark.  This means that a trade-mark owner of “LOSERFISH” associated with trucker hats can oppose the registration of http://www.anything.loserfish.

Second, the gTLD owner will be responsible for guarding the registry for second-level domains associated with the gTLD.  For example, our “LOSERFISH” owner would be concerned with domains such as http://www.loserfish.hat, or http://www.loserfish.trucker.  Unfortunately, with the expansion of gTLDs, this may result in a flurry of infringements which the trade-mark owner should challenge, leading to additional costs.

In addition to the new gTLDs, a .xxx domain will be added to the registry for the adult entertainment industry.  Trade-mark owners should be concerned that their trade-marks may be used in this domain registry.   For example, our trucker hat businessperson may not want there to be a website.  To prevent this, there is a 30 day SUNRISE window commencing in September 2011.  Legitimate trade-mark owners can “opt-out” of the .xxx domain by filing an application with ICANN for about $300.  This will prevent the registration of that particular trade-mark within the .xxx domain.


I would recommend that trade-mark owners apply for the .xxx opt-out system as a cost-efficient method of preventing association with the adult industry, as well as preventing infringement litigation down the road, especially considering the potential for harm to a business’ goodwill.

Trade-mark owners can also engage a domain-name monitoring service that will notify them if anyone registers, or

Contact me for more details.