Canadian trade-mark owners can register their marks in the United States, through the USPTO . It’s important to remember that, as a Canadian business, registration of your mark in Canada does not afford any protection or trade-mark rights in the US, so a separate US application must be filed.  After application and registration of your mark, a declaration is required at the 5-year mark. This is known as a Section 8 & 15 combined declaration, which requires the trade-mark owner to file specimens to show that the mark has been used in the US. Here’s a tip: When preparing your initial trade-mark application and designing packaging and labelling for the products, it’s important to keep in mind the eventual requirement to file specimens of use, to ensure that the specimens of the mark-as-used will show use of the mark-as-registered.

Consider the case of the TTAB decision in In re E.A. Sween Company, where the applicant registered the mark DELI EXPRESS SAN LUIS for sweet rolls (shown at left). However, the specimen of use showed use of the DELI EXPRESS mark as a visually distinct mark in red, in the top left corner of the package label, and the words SAN LUIS to the right, separated spatially in such a way that the TTAB concluded that the two marks conveyed “two separate commercial impressions.” Thus, the applicant’s drawing of the mark as registered was not considered a “substantially exact representation” of the mark as used in commerce.

Contact Field Law for assistance with screening, filing and registering US trade-marks.

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Apple Inc. has a well-known family of iMarks registered in Canada, the US and around the world, including iTunes, iMac, iPhone, iPod and iPad. In Canada, it has even applied to register the iPad screen as a trade-mark under Application No. 1488599 (the IPAD TRADE DRESS ICON SCREEN Design) as well as the iPhone graphic (shown at right), under Application No. 1481515.

• The latest addition to the family is the iCloud mark. In the US, a company called iCloud Communications has sued Apple for alleged trade-mark infringement in the US District Court in Arizona. (See a copy of the Complaint Here). iCloud Communications claims use since 2005, though it does not have any registered marks. Prior to launching its new iCloud service, Apple bought the domain name icloud.com from Xcerion AB, a Swedish cloud-computing company, and there’s a pretty good bet that Apple has also acquired Xcerion’s registered US mark for ICLOUD which claims a priority date of November 29, 2007, for use with information management software.  Though the registration is still in the name of Xcerion, an Apple inhouse lawyer is named as the attorney of record. This strategic acquisition would allow Apple to rely on the earlier use claimed by this mark.
• In a recent Canadian case, Apple was the earlier user - in this case, it used its family of registered iTunes marks to oppose the application for the mark TUNECARDZ by Digi Media Cardz Inc., a BC company, for use with collectible cards allowing the card owner to download music. In the decision released by the Trade-marks Opposition Board (TMOB) (Apple Inc. v Digi Media Cardz Inc., 2011 TMOB 72 ), Apple prevailed by showing confusion between TUNECARDZ and its registered Canadian marks ITUNES and ITUNES MUSIC CARD for music downloads.

Apple has a long history of fighting strategic trade-mark battles, including for its core brand APPLE, starting in 1978, against Apple Records), against Cisco for its now-iconic iPhone trade-mark , and against Fujitsu, for the iPad trade-mark. Lessons for business? In many of these cases, the mark was already owned by someone else when Apple decided it was going to be an Apple brand.  This history is, in many ways, a reflection of the company’s approach to business: they did not invent tablet computing, smartphones, online music sales or the MP3 player. They simply stepped in, elbowed the early movers aside, and took over the top position. 

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Here’s something that we’re likely to see more of: the app patent dispute. Mobile apps are regularly mixed up in copyright or trade-mark complaints, trade secret disputes (occasionally), and privacy issues (often). In Lodsys LLC. V. Combay Inc. et al., an allegation of patent infringement has been levelled at a group of iPhone, iPad and Android app developers, including the publishers of the popular titles “Twitterific”, ”Quickoffice” and “Mega Poker Online Texas Holdem”. According to the complaint, the targeted apps infringe a method patent owned by Lodsys, entitled ”Methods and systems for gathering information from units of a commodity across a network” (US Patent #772,078). One defence to such an allegation is that the patent is licensed by the alleged infringer, and that’s where Apple comes in. Apple has reportedly intervened to raise the defence that the use by the app developers is covered by a license that Apple previously negotiated with the patent owner.  Another defence is that the patent in question is invalid and another company in an unrelated lawsuit is challenging the validity of Lodsys’s patent portfolio.

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In our earlier post - Intellectual Property & Agriculture - we reviewed the issues around patented herbicide-resistant seeds. A recent Federal Court of Appeal decision deals with patented machinery in the agriculture industry. To be patentable, an invention cannot be obvious to someone who is skilled in that industry. In other words, the invention must be “non-obvious”. In Bridgeview Manufacturing Inc. v. Central Alberta Hay Centre 2010 FCA 188, the court reviewed the question of whether a particular bale processor infringed the patent owned by Bridgeview. The alleged infringer fought back by saying the patent was invalid due to obviousness.  In Canada, the court uses a four-part test to determine whether a patent is invalid for obviousness:

1. Identify the hypothetical “person skilled in the art” and the relevant common general knowledge of that person. 
2. Identify the “inventive concept” of the patented claim .
3. Are there any differences between the “state of the art” and the “inventive concept” of the claim in the patent?
4. Viewed without any knowledge of the alleged invention as claimed, would those differences be obvious to the “person skilled in the art” or do they require any degree of invention?

By this analysis, the court found that the patent was not invalid for obviousness and the appeal was allowed on that point.

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Artists mash-up images, text and audio all the time and have been doing so for many years. When is “appropriation” considered “transformative”?  If you use someone else’s image to create something, is the new work simply a copy of the original image, or is it transformed into a new original work of art? 

If it’s just a slavish copy, then you need consent of the owner of the original image. Without that consent, you might be infringing copyright.  If it’s transformative, then is the appropriation forgiven since it results in something new and original?

Consider the case of photographer Patrick Cariou and appropriation artist Richard Prince. Earlier this year, a US District Court sided with Cariou in his copyright claim against Prince, based on Prince’s use of Cariou’s photographs of Rastafarians. The court was clear that the scope of Prince’s copying was substantial compared with the “slight transformative value”. In other words, there was a whole lot of appropriation and not much transformation. As a result, the fair use defence didn’t hold up.

The next question is the obvious one: where is the line between the two?  Andy Warhol made a career out of appropriation. His works - which borrowed everything from Campbell’s soup cans to press photos of Jackie Kennedy - were the subject of numerous complaints and lawsuits, all of which reportedly settled out of court. Artist Jeff Koons has also made a successful career out of transformative works, though he has often fallen on the wrong side of court decisions. In the 2006 US Court of Appeals decision in Blanch v. Koons, Koons successfully raised a “fair use” defence. This claim arose from the use of an image of the plaintiff’s copyright-protected photograph in a Koons collage painting entitled “Easyfun-Ethereal”. The court considered this use to be highly transformative, where the original image was used as “raw material” for a completely different type of work.

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Last week the US Supreme Court (SCOTUS) released its decision in the long-running patent infringement case between i4i, a Canadian software company, and Microsoft. (We’ve been following the case here). Microsoft has now run out of legal options. At trial, the jury found that Microsoft willfully infringed i4i’s software patent and that Microsoft failed to prove invalidity of the patent.  Microsoft appealed the original trial decision. That appeal was dismissed. Microsoft filed another appeal for a en banc re-hearing. That appeal was dismissed. Microsoft challenged the validity of the i4i patent. The patent was upheld, and the USPTO denied Microsoft’s second application for a re-examination. Microsoft appealed up to the SCOTUS and that appeal has now been dismissed (see the full decision here). In the US, the Patent Act is clear that a patent is presumed to be valid and in order to establish invalidity, the party who is challenging the patent must present “clear and convincing evidence”. Microsoft failed to provide such evidence and the original infringement decision stands.

One of the interesting elements of the case was Microsoft’s allegation that i4i had previously sold software (known as S4) which embodied the patented invention. If true, this would have impacted the validity of the patent that Microsoft had infringed. The S4 source code had been destroyed years before the patent infringement litigation, so evidence came from S4’s two inventors, both of whom testified that the S4 software did not embody the invention claimed in the infringed patent.  Microsoft now has to face the $290 million damage award and permanent injunction that bars the sales of certain versions of Microsoft Word.

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It’s worth reviewing the concept of confusion in this landmark case. Confusion is a central concept in Canadian trade-mark law. 

The Supreme Court of Canada’s (SCC) decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 made it clear that, when comparing two trade-marks, the test for confusion is based upon the hypothetical assumption that the marks are used in the same geographical area, regardless of whether this is actually the case.  For the owner of a registered mark to enjoy exclusive use throughout Canada, that mark can’t be confusing with another trade‑mark anywhere in the country (registered or unregistered).  The actual location where the marks are used is not relevant for the purpose of this test, since the court assumes for the purpose of the test that the marks were used in the same place.

Next, remember it is the use of a trade‑mark and not registration itself that confers priority and the exclusive right to the trade‑mark in Canada.  For the first person to use a mark in Canada, trade-mark rights are granted in two ways.  First, you can earn the right to register a trade‑mark when you are the first user of that mark.  Second, you can also oppose applications of other marks, or apply to cancel someone else’s registration, based on your earlier use of a confusing trade‑mark. 

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