NEWS
Canadian IP deadlines extended again to August 10, 2020
The Canadian Intellectual Property Office (CIPO) has again extended deadlines on IP matters until August 10, 2020. Deadlines had previously been extended until July 17, but given the continuing impact of COVID-19, further measures have been taken to mitigate the disruption.
Herbs ‘R’ Us Branding Gets Wrecked
Blazing the Trademark Trail: Herbs ‘R’ Us Gets Smoked
Canadian cannabis dispensary Herbs ‘R’ Us, rolled out a logo a little too reminiscent of the well-known Toys ‘R’ Us logo.
Toys ‘R’ Us, feeling a little burned by the effort, sought to bring them down, and sued in Canadian Federal Court.
They claimed Herbs ‘R’ Us infringed its trademark and left consumers in a haze about where the brand came from. Oh, yeah, and diluted* the buzz attached to the Toys ‘R’ Us trademark.
Puff, Pass… and Pay: The Court Weighs In
The Court accepted the case, but blunted the infringement and confusion complaints, having found it would be highly unlikely that consumers would be either dazed or confused into thinking Toys ‘R’ Us had started selling pot.
Buzzkill: $30K Damage for ‘Herbs’ Hijinks
The Court did, however, find that Herbs ‘R’ Us logo would, in fact, depreciate the Toys ‘R’ Us brand and ordered Herbs R Us to cease using the name, deliver up any packaging in possession for destruction, and pay $30,000 CAD in damages.
* dilution is a technical term in trademark infringement. You can find a good definition of it on our Trademark Infringement and Litigation FAQ page, along with other terms relevant to this case.
USPTO Launches Fast-Track Appeals Pilot Program
On July 2, 2020, the USPTO launched the “Fast-Track Appeals Pilot Program” which allows applicants to speed up the examination process on their most important inventions and get a decision in half the time of a normal application. The fee to Fast-Track an appeal is $400, and the USPTO estimates that an appeal will be read in six months under the program.
Trademarking generic.com
Supreme Court Landmark Ruling on Generic.com Trademarks
On June 30, 2020 the Supreme Court handed down a landmark ruling in trademark law. It decided generic terms can be registered as trademarks when followed by .com.
Why Generic Terms Were Historically Unregistrable
Trademark law had, up to this time, held that generic terms are not registrable*. For example, getting a trademark on the word “Farm”. Farm is a generic description of a type of property. As such, it would be improper to grant rights of usage for the word to one party. In the same way a generic term couldn’t be combined with “Inc.” to bypass the principle, the PTO held that adding “.com” to a generic term yields a generic composite, not a distinctive mark.
Booking.com Challenges the USPTO
It was this basic principle that led the USPTO to reject Booking.com as eligible for trademark.
So Booking.com took the case all the way to the Supreme Court. The Patent and Trademark Office asked the Supreme Court to hand down a clear decision upholding the prohibition. It argued that overturning it could lead to large companies like Booking.com, abusing smaller companies that use the generic term “booking” anywhere.
Supreme Court Decision: Consumer Perception Matters
Instead, the Supreme Court, by an 8-1 decision, rejected the USPTO’s request. It found that if consumers perceive a term as not being generic, then it isn’t generic. This reasoning is consistent with trademark law. The whole point of which is to protect consumers in their ability to know the source of goods and services. But the Court was clear that while they could not create a bright line rule prohibiting generic.com trademarks, neither would such names be automatically considered distinctive. A substantial amount of evidence would be required to convince the PTO that consumers view such names as trademarked.
Implications for Future Trademark Applications
This ruling will likely lead to another gold-rush of companies trying to register such names. Lacking the bright-line rule, the PTO will have to consider the merits case by case. We expect there will be no shortage of registration attempts and subsequent challenges over the marks.
See our FAQ page on Trademark Basics: What are the levels of Distinctiveness?
Political Campaigns and Copyrighted Music
Why Artists Object to Campaign Use of Their Songs
At a recent political rally, the Trump campaign played Tom Petty’s “I Won’t Back Down”. The singer’s family found out and sent a cease-and-desist letter. They stated that neither the singer, while still alive, nor his family, endorse the President and his political stances. So they don’t want Petty’s music associated with the campaign.
But despite copyrights on Petty’s music, there isn’t as much legal ground as the family might hope for ordering the campaign not to use the song.
Why is that? If they own the copyright to the song, then shouldn’t they be able to stop someone from using it?
How Performance Rights Organizations Allow Public Music Use
When someone wants to use a copyrighted song, permission must be sought. But in practice, this is nearly impossible for a venue that plays a lot of music. There are just too many artists to reach out to and ask permission for each song. Enter broad licenses issued by performance rights organizations like ASCAP and BMI.
These licenses allow public venues to play a broad catalog of songs for a fee, without the risk of infringement. Usage under these broad licenses means that it is much more difficult to stop individuals from using specific songs.
Political Campaign Licenses and Artist Opt-Out Efforts
Over recent years however, various artists have objected to their music being used for political campaigns. To address that, efforts have been made by ASCAP and BMI for artists to withdraw permission in these instances. This is done by creating licenses for political entities that allow them to exclude individual songs.
But one proven way around that is the venues and stadiums, where the rallies take place have their own licenses. And those venues aren’t under the political entity rules.
When Public Statements Become the Best Remedy
If politicians can’t be stopped from using songs under copyright laws, the best recourse may simply be a public statement from the artist stating his views on the candidate. The harm of using a song for a campaign rally boils down to people thinking the artist endorses the candidate. But if the artist comes out with a vocal disavowal of the candidate and his campaign, it may even cause the campaign to look elsewhere for music, than from an artist vocally in opposition.
IP Deadlines Extended around the World Due to COVID-19
Patent offices all around the world have been finding ways to adjust to the COVID-19 situation by extending deadlines. In Australia, the IP office gave free extensions to customers until July 31. In China, the CNIPA has not extended any deadlines but has instead allowed applications abandoned due to the pandemic to be restored for free. Similarly, in Japan, the JPO did not extend any deadlines but does allow you to request an extension, but the JPO is generally strict in granting extensions. In Europe, the EPO extended their deadlines to June 2, but didn’t extend it further than that. They did, though, reduce the renewal fee by 50% until August 31. In South Korea, the KIPO extended their deadlines to June 1, but hasn’t extended it past that. Furthermore, only trademark opposition briefs, Office Action responses, and responses to notices for correction by KIPO has been extended, while other deadlines have not.
Australia (IP Australia):
Extended deadlines until July 31
Europe (EPO):
Extended deadlines until June 2
Renewal fee reduced by 50% until August 31
China (CNIPA):
No extended deadlines
Abandoned applications can be restored for free
Japan (JPO):
No extended deadlines
You can request an extension, but not many are given out
South Korea (KIPO):
Extended deadlines until June 1, but only for:
Trademark opposition briefs
Office Action responses
Responses to notices for correction by KIPO
Jennifer Lopez is Sued for Copyright Infringement… again
Jennifer Lopez posted a picture on Instagram taken by photographer Steve Sands, and was sued for over $150,000 because Sands was the author (i.e., the one who took the picture) and Lopez used it without his permission. This isn’t the first time she’s made this mistake. She was sued for the same thing back in 2017 and 2019.