David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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Picking a domain name that will engender trust and drive traffic your website is a critical step in building a successful website. Factors in Picking a Domain Name: An easy to type and spell domain name is the most important factor. A short domain name, less than 10 letters is preferable. A one or two-word
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A Federal Court determined that a registered trademark, TIMES GROUP CORPORATION, had been infringed by a confusing tradename, TIME DEVELOPMENT GROUP, per The Honourable Mr. Justice O’Reilly, 2016 FC 1075. Time Development Group Inc. appealed the decision to the Federal Court of Appeal.   Time Development Group Inc. v. Times Group Corporation: Plaintiff registered its corporate name as
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The Federal Court of Canada granted Sleep Country an interlocutory injunction against Sears’ use of “There is no reason to buy a mattress anywhere else” because it was causing a loss of distinctiveness to Sleep Country’s trademark, “Why Buy a Mattress Anywhere Else?” It appears that Sleep Country’s radio slogan, “Why Buy a Mattress Anywhere
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Who has trademark priority? A. The first person to apply to register in Canada? (i.e. Canadian application date July 1, 2016) or B. The first person to apply for a trademark registration in the world within the prior 6-months and claims its priority date in its Canadian application? (i.e. USPTO application date May 1, 2016 and its
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Domain names are considered property in Canada and elsewhere. Some domain names have a significant inherent value beyond their initial acquisition cost. Domain names in our top domain name sales lists usually have one or more of the following characteristics: Short domain names Surname domain names Brandable domain names Spellable domain names Generic domain names
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Why Buy Domain Name sumo.com for $1.5 Million USD?

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There is an inherent value in domain names. The sumo.com domain name sold for 1.5 million USD. It took Noah Kagan of SumoMe.com 7 years of negotiations to buy the domain name sumo.com. SumoMe.com is now redirected to sumo.com. SumoMe.com transitioned to sumo.com for $1.5 million SumoMe paid $500,000 up front and it will pay
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How do you trademark? You trademark a word, picture, sound or a slogan by using it as a trademark and filing a trademark application with the intellectual property office in each country that you want trademark protection in. In Canada, trademark applications are filed with CIPO, the Canadian Intellectual Property Office. A trademark application needs
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Decisions in Canadian trademark cases are binding on lower courts if they are decided by the Supreme Court of Canada, the Federal Court of Appeal, or the court of appeal in any given Province. It should not matter how old the case is, these cases should be valid authority if the cases have not been overruled.
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Canada Goose and Sears Canada sent a letter to the Federal Court of Canada in November 2016 to inform the court that they had settled their cases against each other just in time for the winter coat season. Sears Canada had been selling a variety of winter parkas with a furry liner along the brim
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Cancelling a Trademark in Canada is a procedure that starts in the CIPO trademark office and usually does not involve any court proceeding unless there is an appeal. To cancel a trademark, you need to start a section 45 proceeding. The trademark owner must file evidence showing To cancel a trademark, you need to start
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The HERTZ System, Inc. v. HERC Equipment Rentals is a case filed in March 2016 in the Federal Court of Canada. Essential facts: HERC EQUIPMENT RENTALS INC. ON-1389811 Incorporated on 2000-01-24 Heavy equipment rental business based in Hamilton, Ontario Linkedin profile Trademark: HERC, Searched, 1775377 filed November 10, 2014, based on use in CANADA since June 2002. Claims:
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Trademark applicants should be cautious about the services that they claim. If the services claimed are not beneficial to the public or if they are self-serving and only done to sell the applicant’s goods, then applications are open to opposition and trademark registrations are vulnerable to cancellation proceedings. Only claim services in a trademark application, if you
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The Canadian Trade-marks Act gives foreign applicants an unfair advantage in their ability to register trademarks that are names, surnames or clearly descriptive trademarks, which would otherwise be unregistrable pursuant to section 12 of the Trade-Marks Act. The Amendments to the Trade-marks Act (not yet in force) will repeal this loophole soon. Merely descriptive marks on the USPTO’s
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Mr. Justice Mosley performed a distinctiveness analysis and found that FRENCH PRESS is a generic trademark. The Federal Court of Canada expunged trademark registration TMA 475,721 for FRENCH PRESS covering Non-electric coffee makers. Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2012 FC 1450; Bodum USA, Inc. v. Meyer Housewares Canada Inc., 2013 FCA 240 (appeal dismissed) THE LEGISLATIVE and
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Be mindful when selecting a brand. Not all words and names are capable of being protected as trademarks. Section 12(1) of the Trade-Marks Act limits what kinds of trademarks may be registered. So choose registerable trademarks as brands for your business. Suggestive (less than clearly descriptive, but still suggest the goods or services —think Facebook®) –
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RE/MAX, LLC sued PROPERTY MAX REALTY INC. AND OTHERS for trademark infringement in Vancouver Canada according to Federal Court file T-545-16. PROPERTY MAX REALTY INC. appears to operate from propertymax.ca. Trademark Infringement and Passing Off PROPERTY MAX’s logo doesn’t look anything like the RE/MAX logo, the name includes the words “MAX REALTY” and that may be the basis for
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Laches is a legal doctrine that bars those who take too long to assert a legal right to any entitlement to compensation or relief. In order to establish the defense of laches, a party must show undue or unreasonable delay by the other party in asserting its rights, and prejudice resulting from the delay. A
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Select a Brand Name that is Registrable

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It is important to select a brand name that you can register as a trademark in Canada. Most products and services need a distinctive brand name to build goodwill and enhance their reputation. If you spend money building a brand using a mark that you can’t register, anyone can compete with you using the same brand or
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What is a trade-name? A “trade-name” means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual;  Trade-marks Act, R.S., 1985, c. T-13, s. 2;  1993, c. 15, s. 57;  1994, c. 47, s. 190;  2014, c. 20, s. 369, c. 32,
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A trademark is a mark that distinctly identifies your business brand, goods, and services. If your trademark is not distinctive, it is usually not registrable. A mark is a word, symbol, or design used to distinguish goods or services of one company from others. Canada still uses the hyphenated spelling for trade-mark for now. Pending
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Do Not Commit Perjury on Affidavits

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A party before a tribunal may submit an affidavit as evidence to help a tribunal member or a judge determine the facts in a matter. A trademark owner is required to submit an affidavit to the Registrar of Trademarks when responding to a Section 45 notice or when opposing a trademark application. Let Right Prevail The
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A man’s name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damage he may do a
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The low threshold of evidence required to show use of a trademark is not all that minimal according to the Federal Court of Appeal’s recent decision in Alliance Laundry Systems LLC v. Whirlpool Corporation LP. Since there is no option to cross-examine affiants, affidavits in section 45 proceedings need to contain solid facts proving use during the
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Twelve countries signed the Intellectual Property Rights Chapter of the Trans-Pacific-Partnership Agreement “TPP” on October 9, 2015. TPP is an expansion of the Trans-Pacific Strategic Economic Partnership Agreement (TPSEP or P4), which was signed by Brunei, Chile, New Zealand, and Singapore in 2005. In 2008, Australia, Canada, Japan, Malaysia, Mexico, Peru, the United States, and Vietnam joined the TPP. It
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You may do a CIPO trademark search on the CIPO database: http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng   and a USPTO trademark search on the USPTO TESS database: http://www.uspto.gov/trademarks-application-process/search-trademark-database and a global trademark search on the WIPO brand database at: http://www.wipo.int/portal/en/index.html

Stephen Charles McArthur speaks at Casual Connect MISTAKE #1: Trying to use an NDA to protect your game. When hiring contractors (and in some places even employees) to build your game with code and images, you need to get them to sign a “Work For Hire Agreement.” Make sure you have a work for hire
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Doctrine of Laches in Patent Suits

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Federal Circuit says that the doctrine of laches applies to damages in patent cases since limitation periods in patent suits are not Federal law The Federal Circuit ruled on September 18, 2015 that the doctrine of laches can still be used to bar the recovery of pre-suit damages in long-delayed patent suits. The doctrine of laches lets
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Canadian Trademark Legislative Changes

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CIPO is making progress to modernize Canada’s intellectual property (IP) framework. The following is an overview of the trademarks legislative work that is underway to help Canada better align itself with international best practices. Take a look at the Update to the trademarks online tools page to see which applications and forms will be adapted
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Proper Trademark Use

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Proper trademark use is vital to obtaining and maintaining trademark registration. When you first adopt a trademark, you may use the TM symbol. You may only use the R symbol after obtaining trademark registration.

Isn’t incorporating like trademarking the company

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Question:  Isn’t incorporating like trademarking the company? Answer: No. Incorporating gives you some common law rights, but not the exclusive right to use the distinctive word in your corporate name throughout Canada for the services the business provides. For example, the distinctive portion of Michaels Inc. and Michaels Tech Inc. is “Michaels.” The name of a company is
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The Canadian Intellectual Property Office (“CIPO”) adopted the international Nice Classification for trademark applications in 2015. As of January 1, 2017, CIPO applies the 11th Edition of the Nice Classification to all New applications. If you have filed your application prior to January 1, 2017, and have chosen to submit a Revised application, you may choose
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Generic Trademark

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A generic trademark merely describes the goods or services. Specifically, a mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed
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Black v Molson Canada domain dispute

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Douglas Black sued Molson Canada in the Ontario Superior Court of Justice to decide their domain dispute. Black v Molson Canada, 60 O.R. (3d) 457, [2002] O.J. No. 2820 Court File No. 02-CV-231-828CM3 Ontario Superior Court of Justice B. Wright J. July 18, 2002 Intellectual property — Trademarks — Domain Name — Applicant registering domain
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Official Marks in Canada are trademarks that are used and adopted by a public authority under government control. A public authority has been described as an entity that is subject to government control and engages in activities that benefit the public (United States Postal Service v. Canada Post Corporation, 2007 FCA 10). Trademarks Act, Section
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Click to see the Trade-marks Act (R.S.C., 1985, c. T-13) current to 2015-03-03 and last amended on 2015-01-01. Previous Versions Some of the amendments to the Trade-marks Act, including changing the title of the Act to the Trademarks Act, have not taken effect yet. The Trade-Marks Act was amended on December 31, 2013, before it
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Major Changes to Canadian Trademark Law happened when Canada updated its Trademarks Act effective June 19, 2014. Some of the minor changes are: Trade-mark became trademark; Wares became goods; Some of the major changes are: A mark becomes a sign, which is far more expansive; The concept of a “proposed trade-mark” is gone! The definition
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Trademark Offices Canadian Intellectual Property Office – Trade-mark Office http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00002.html EU Office for Harmonization in the Internal Market (Trade Marks and Designs) http://oami.europa.eu/ows/rw/pages/index.en.do Japan Patent Office http://www.jpo.go.jp/ UK Intellectual Property Office http://www.jpo.go.jp/ United States Patent and Trademark Office http://www.uspto.gov/ World Intellectual Property Organization http://www.wipo.int/

Trademark Associations American Intellectual Property Law Association http://www.aipla.org/ Anti Copying In Design http://acid.eu.com/ British Brands Group http://www.britishbrandsgroup.org.uk/ Business Europe http://www.businesseurope.eu/Content/Default.asp? European Brands Association http://www.aim.be/ European Communities Trade Mark Association http://www.ecta.org/ INDICAM http://www.indicam.it/ Intellectual Property Owners Association http://www.ipo.org//AM/Template.cfm?Section=Home International Intellectual Property Institute http://www.iipi.org/index.asp International Trademark Association http://www.inta.org/ Licensing Executives Society International http://www.lesi.org/ Licensing Executives Society (USA
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