The Briefing: The Supreme Court Limits the Reach of The Lanham Act
The U.S. Trademark Use Requirement and Associated Risks and Strategies for Chinese Applicants
In our previous article, Protecting Your Brand: A Primer on Canadian Trademarks, we touched upon the beginning stages of a trademark application and considerations such as, "Should I register my trademark?" and "Is the...more
In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate “use” of a trademark in Canada in association with “hotel services” in the absence of a brick-and-mortar...more
According to the USPTO Commissioner of Trademarks, the United States Patent and Trademark Office (USPTO) has seen a significant increase in the number of applicants who are not fulfilling their legal and ethical obligations...more
On June 17, 2019, Canada’s Trademarks Act changed, resulting in its modernization. Canada has now joined five international intellectual property treaties, including the Madrid Protocol, Singapore Treaty and Nice Agreement,...more
There were many interesting trademark cases coming out of 2018, a few of which are discussed below. The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more
After five years of uncertainty and speculation, a date has been set for Canada’s drastic new trademark laws to come into force. Five months from today, on June 17, 2019, brand owners and local, national and global companies...more
June 17, 2019 is the big day – a day anticipated since 2014. The major changes to the Canadian Trademarks Act will be implemented on this day. What does this mean for trademark owners?...more
Non-Canadian hoteliers have reason for celebration following the release of the Federal Court of Canada’s anticipated decision in Hilton Worldwide Holding LLP v Miller Thomson LLP, 2018 FC 895 (Hilton Worldwide)....more
Non-Canadian retailers can breathe a sigh of relief thanks to the Federal Court of Canada’s decision in Dollar General Corporation v 2900319 Canada Inc, 2018 FC 778 (“Dollar General”). The decision reaffirms the Court’s...more
As trade talks between Canada and the United States dominate the headlines, it is hard to ignore the strong economic ties between these neighbouring nations. For example, the total volume of goods exported from the U.S. in to...more
Those of us with clients who do business in Canada have been watching with interest as Canada prepares to implement significant changes to its trademark laws. The new Trademarks Act (no more Trade-hyphen- marks!) was enacted...more
Good evidence wins cases. In a trademark opposition, evidence demonstrating how and for how long a mark has been used in commerce (for example, on hangtags, labels, packaging, signage, invoices and online platforms) can be...more
Proper usage is essential to protecting and maintaining valuable rights in trade-marks. The general rule is ‘use it or lose it’: unless a trade-mark is actually used continuously in connection with products or services,...more
In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act....more
Late last week, the U.S. Court of Appeals for the Ninth Circuit determined a court had jurisdiction to decide a trademark lawsuit filed by a U.S. grocery store against a Canadian reseller where the products at issue were only...more