Trademark Security Interests in Canada (Guest Post from Canadian Firm)

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We recently shared our Seven Secrets of Security Interests with some tips about security interests in IP registered in the U.S.  But often, U.S. IP goes hand-in-hand with trademarks, patents, and copyrights registered in Canada.  Should security interests against Canadian IP be treated the same as in the U.S.?

We asked our colleague Silvia de Sousa from Thompson Dorfman Sweatman LLP in Winnipeg, Manitoba to describe the basics of security interests involving Canadian trademarks (as well as patents and copyrights).  Silvia’s answers appear below.  Enjoy!

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Be on the Lookout for Potentially Misleading Trademark Solicitations

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If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

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Scandalous Marks? Nothing the Proverbial Bar of Soap Can’t Fix

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The recent U.S. Supreme Court decision in Iancu v. Brunetti will likely not be the last word on the subject of scandalous trademarks being granted registration. That certainly suggests there is room for further interpretation in the future, especially if Congress elects to amend the Lanham Act. Further, four Justices voiced some degree of concern about scandalous marks being granted registration.

Read the full alert. 

New US Counsel Rule For Foreign TMs Promises Sea Change

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This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.

For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.

Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.

Read the full article on Law360.

Mindful Management of Marks and Money (Or, Spring Cleaning: Do You Really Need to Renew That Trademark Registration?)

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This post is for those who gain pleasure from tidying up.  It’s springtime here in DC, so let’s roll up our sleeves and declutter!  Your trademark portfolio, that is.  You’ll gain a sense of accomplishment AND you can humble-brag about your magical money-saving skills.

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Tips & Tricks to Trademark Licensing

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As the proud owner of a trademark, you will encounter a number of situations that may prompt you or your company to consider granting a trademark license. Navigating the process of selecting a mark, conducting a trademark search and securing a trademark registration is no small feat. Now that you have accomplished these goals, it is important to make sure you are getting the most out of your investment of time, energy and money. A trademark license may be the most effective way to ensure that your trademark rights primarily benefit you and not a third party.

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To Claim or Not to Claim … Seniority (Guest Post from EU Firm Cleveland Scott York)

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Businesses operating in the European Union may be familiar with the concept of “seniority.”  By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries.  To illustrate when a business might claim seniority, take the following example:

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The Seven Secrets of Security Interests

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Well, they’re not really secrets.  But whether you’re representing the bank taking a security interest, an owner granting one, or a buyer who wants to ensure that outstanding security interests are released before a deal closes, here are a few things to keep in mind when it comes to IP security interests.

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