Trademark Prosecution Luncheon March 2014

Are You A Canadian John Doe? February 2014, Federal Court of Canada ordered an ISP to release the names and addresses of 2000 subscribers alleged to have downloaded a copyrighted movie using peer to peer networks and BitTorrent. encourages lower Courts to impose strict safeguards to prevent coercive settlement tactics. First Canadian decision to order large scale production of customer information from a third party ISP in order to identify potential defendants in an action for illegal downloading Voltage Pictures LLC v John Doe and Jane Doe

A TM Action May Have An Equal And Opposite Cancellation Reaction 9 th CA: No independent cause of action for cancellation of a trademark registration: –Section 37 of the Lanham Act gives a district court power to order cancellation of a trademark registration "in any action involving a registered mark." Cancellation may be sought in federal court only "if there is already an ongoing action that involves a registered mark." Air Aromatics, LLC v. Victoria's Secret Stores Brand Management, Inc., Appeal No (9th Cir. February 28, 2014).

You Can’t Phone-In Your Specimen TTAB aff’d refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts" - Applicant failed to provide an acceptable specimen of use. Tsubaki submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order. That was not sufficient to qualify as acceptable specimens of trademark use. In re U.S. Tsubaki, Inc., Serial No (March 7, 2014) [precedential].

You Write it – You’re Stuck With It Clark’s appealed the denial of a PI to enforce a non- compete against former employee. Smith worked for Clark’s for ~14 years before joining Ferguson. The trial court found the covenant to be overly broad and restrictive: –it prevents Smith from working directly or indirectly in any capacity for any other entity that seeks to solicit or provide services to any entity that was a customer of Clark’s during the 14 years Smith worked there. Court declined to use the “blue pencil doctrine” – Clark’s had a fair opportunity to draft a reasonable and enforceable covenant yet failed to do so. Clark's Sales and Service, Inc v. John D. Smith and Ferguson Enterprises, Inc., 49A PL-552