The United States Patent and Trademark Office (USPTO) has launched a new “Intellectual Property Identifier” tool. The tool is intended to assist users with identifying and pursuing potential intellectual property (IP) rights that may be available to them (e.g. to protect their brand, support a business, etc.). The current version of the tool includes two modules. The first module includes simple questions to be answered by a user to assess what type(s) of IP may apply. The second module is designed to help a user learn more about a specific type of IP and obtain additional resources.

Read more here.

Access the tool here.

The Federal Court granted an application to strike four trademark registrations from the Trademark Register. The Applicant Blossman Gas is a propane business in Mississippi. The Respondent Alliance Autopropane (AAP) is a company in Quebec.

AAP obtained the right to use the trademark ALLIANCE AUTOGAS as a sublicensee of Blossman. While still a sublicensee, AAP applied to register under its own name the ALLIANCE AUTOGAS design mark used by Blossman, as well as three other design marks that used the words ALLIANCE and AUTOPROPANE.

The Court found that AAP was not the person entitled to register the trademarks as they were confusing with trademarks and trade names that Blossman had previously used in Canada. The Court also found that AAP applied to register the ALLIANCE AUTOGAS design mark in bad faith: “…it knew it was merely the licensee of the ALLIANCE AUTOGAS Design and that Blossman was the owner of the mark. It did not advise Blossman of its application or registration and, importantly, it maintained its registration for several years, refusing to abandon or transfer the registration long after it should have become apparent that it had no legal justification to do so.”  The registration was therefore not a defence to Blossman’s claim of passing off as they relate to this trademark.

The Court awarded Blossman $20,000 in damages for passing off, $5000 in punitive damages, a permanent injunction against using the ALLIANCE AUTOGAS design mark and marks containing ALLIANCE AUTOPROPANE, delivery up of materials that would violate the injunction, and over $30,000 in costs.

Read the full decision here.

Adidas has lost a court case in New York to try to stop luxury fashion designer Thom Browne Inc. from using a four-stripe design on its apparel. Adidas had argued that the four stripes were confusingly similar to the sports giant’s signature three-stripe trademark.

Thom Browne managed to convince the jury that shoppers were unlikely to confuse its design and Adidas’ trademark because Thom Browne serves a different, higher-end customer base and the two brands have a different number of stripes in their designs.

A spokesperson for Adidas stated that Adidas may appeal the decision.  See the full article here.

The Canadian Intellectual Property Office (“CIPO”) is running consultations regarding an increase in government fees. The proposed fee structure and other regulatory changes were published on 31 December 2022 in part 1 of the Canada Gazette. Link here.

The proposal includes a general increase of 25% for many fees for services provided by CIPO. The 25% increase does not apply to fees charged to entities qualifying as small entities. However, the definition of small entity will be amended to increase the employee limit from 50 employees to 100 employees.

The consultations will be open until 30 January 2023. The Canada Gazette has a page explaining the amendments and permitting comments on the various parts of the amendments.  Link here.

The proposed amendments would be effective 1 January 2024.

Pop singer Taylor Swift has had a copyright allegation against her dropped. The dispute involved her 2014 hit “Shake It Off.”

On Monday, December 12, 2022, Sean Hall and Nathan Butler dismissed their lawsuit against Taylor Swift that they initiated in 2017. They dismissed their lawsuit with prejudice. Hence, Hall and Butler will not be able to refile the lawsuit. The public filings for the dismissal of the lawsuit do not disclose whether there was a settlement between the two songwriters and Taylor Swift.

In September, 2017, Hall and Butler accused Taylor Swift of copying lyrics that the duo wrote in the song “Playas Gon’ Play” that was released in 2001 and appeared on the Billboard Hot 100. The song was performed by R&B group 3LW. Hall and Butler alleged that the lyrics “the players gonna play, play, play, play, play, and the haters gonna hate, hate, hate, hate, hate” in “Shake It Off” were copied from “playas, they gonna play, and haters, they gonna hate” in “Playas Gon’ Play.”

In August 2022, Taylor Swift filed a sworn declaration in the federal court in the United States that she had never heard of “Playas Gon’ Play” prior to writing “Shake It Off.”

For more information, see here.

The federal government has recently announced the partners for Elevate IP as New Ventures BC, Springboard Atlantic, Mouvement des accélérateurs d’innovation du Québec, Communitech Corporation, and The Governors of the University of Calgary, in support of Innovate Calgary and Economic Development Lethbridge.

The Elevate IP program is a four year, $90 million project starting in 2023 which aims to ensure inclusive access to IP support for Canadian innovators, start-ups and technology-intensive businesses. ElevateIP will help business accelerators and incubators (BAIs) to provide tools that will enable start-ups to understand, strategically manage and leverage their intellectual property (IP). The program will leverage the existing Canadian BAI network to provide targeted IP support to start-ups, including IP education, IP strategies and implementation. ElevateIP will focus on increasing IP awareness and educational opportunities for start-ups, and on developing and implementing IP strategies to help them manage and make the most of their IP assets.

Start-ups and innovators may wish to watch for developments in the ElevateIP program in the New Year to see how the program may support the development or intellectual property portfolios.

See the federal government’s statement here.

Mariah Carey’s trademark application for the phrase “Queen of Christmas” was rejected by the USPTO last month.

After being approved for publication over the summer, an opposition to the “Queen of Christmas” trademark application was initiated by singer Elizabeth Chan. Chan is a New York based artist who specializes in holiday music, and has publicly denounced Carey’s attempt to obtain a trademark registration for the phrase “Queen of Christmas” stating that “Christmas is for everyone. It’s meant to be shared; it’s not meant to be owned”.

In a notice of opposition filed August 11^th 2022, Chan stated that “Christmas is big enough for more than one Queen”, and cited her own use of the term “Queen of Christmas” as a ground for opposition.

Carey’s company, Lotion LLC, had sought to use “Queen of Christmas” in association with a range of products including fragrances, hot chocolate, and dog accessories. Lotion LLC failed to respond to Chan’s notice of opposition in time, leading to the rejection of the application on November 15^th 2022.

Read more here.

Beginning next spring, the College of Patent Agents and Trademark Agents (CPATA) will revise certain features of one of its licensee classes and introduce a new inactive class.

Currently, CPATA has three classes of agents: Class 1 Active, Class 2 restricted, and Class 3 agent-in-training.  The original intent of the Class 2 restricted license was to allow agents temporarily or permanently leaving practice to maintain a license.  However, CPATA found during a recent licensee survey that certain Class 2 licensees still engaged in IP practice.  This presents a risk to the public in that Class 2 licensees are not covered by insurance and have no continuing professional development requirements.

As a result, CPATA is introducing the Class 4 inactive license to fulfill the original intent of the Class 2 license.  Class 4 licensees will be exempt from insurance and professional development requirements but cannot practice IP.

Additionally, Class 2 licensees will have to carry professional liability insurance and undertake continuing professional development.  Class 2 licensees will also be subject to a fee increase, to be determined.

For more information, please see CPATA’s article here.

The World Intellectual Property Office (“WIPO”) announced that world IP filings reached an all time high in 2021. Around the world, innovators filed 3.4 million patent applications in 2021 with China, the Republic of Korea and India all seeing growth in the number of local applications filed.

Read more about the growth here.