Last month, a U.S. federal court upheld a decision by the
U.S. Trademark Trial and Appeal Board and ordered the cancellation
of all trademarks registered by the NFL team The Washington
Redskins for its team name.The
cancellation of the Redskins trademarks was affirmed on the basis
that the team name was disparaging to Native American culture
– a conclusion that is painfully obvious to any
This decision does not automatically lead to the result,
though, that the team has to actually change its
name.It just means that it has
lost of its federally registered trademarks in the U.S. with
respect to that team name, which ordinarily means the scope of the
trademark's strength is diluted, and enforcing trademark rights
against imitators becomes slightly more
difficult.It is too early to say
what actual impact that might have on the team, as well as the sale
of branded merchandise, or whether the team will appeal the ruling
to the U.S. Supreme Court.
It also has no real bearing on the team's trademarks
in Canada, until such time as the Canadian Intellectual Property
Office sees the need to take similar
measures.That said, Canada's
prohibit the registration of any trademark which is
"scandalous, obscene or immoral", so if the Redskins
trademark was challenged here, it may be the case that the team
name is found by Canadians to be as culturally insensitive as it
was in the U.S.It is also
interesting to note that, unlike in the U.S., if a trademark in
Canada is found to be "scandalous, obscene or immoral",
it will not be allowed to be used here.
What else can trademark applicants and owners do in Canada
to best ensure that their registered trademarks stay valid, and
that their unregistered trademarks may get
Don't use marks that are already taken –
this may seem obvious and apparent, but if it were only that easy,
trademark litigators would be out of a job. It is critically
important to run searches in advance of selecting a trademark for
your business to ensure that nobody else in Canada is using
something identical or similar in association with identical or
similar goods and services.
Don't try to own a trademark that describes what you
are selling – "descriptive" trademarks are
prohibited where the mark itself describes the goods and services
associated with it. Nobody should be able to own exclusive
rights to the trademark "HAMBURGER" if they sell
Be distinct – a bit of an extension of the point
about similarity above, but the best trademarks are the ones that
are made-up words. The more generic your trademark, the
harder time you will have enforcing it against others.
Avoid using peoples' names – a trademark
will not be registerable if it is primarily the name or last name
of a person who is living, or who died within the last thirty
years. In order to determine whether a person's actual
name is distinct enough to be registered, trademarks examiners will
research Canadian telephone directories to see whether fewer than
twenty-five people in the country have that same name.
Don't use any governmental flags or other symbols
– it may be surprising to some, but trademark law in Canada
prohibits the use of a trademark featuring the Canadian flag
without getting prior written consent from the Department of
Brand owners, or prospective brand owners, should be
aware of the restrictions and prohibitions contained in Canadian
trademark laws before settling on a word, image or other feature to
distinguish a business' goods and
services.This is especially true
for the franchise industry where the entire model is premised on a
brand owner's license of that trademark across a local,
national or international system, and the loss of that trademark
could have devastating consequences.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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