Archived — Trademark Agent Exam 2010 - Part A

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Questions and answers - (150 Marks)

True or False short answer questions with explanation (referring to statutory provisions, practice notices and case law where applicable).

Question 1

In a S. 45 proceeding in the Trademarks Office, if the requesting party wants to cross-examine the Registrant's affiant, it must pay all costs associated with the cross examination. (2 marks)

Answer

False. (1 pt.) Cross-examination is not permitted in S. 45 proceedings. Or cite Burke-Robertson and Carhartt Canada Ltd. v. RTM (1994) 56 C.P.R. (3d) 353. (1 pt.)

Question 2

A S.45 notice was issued to a deceased registrant, Mr Valmor Deadman. Mr. Deadman's life partner, Hope Lajeunesse, did not review her late partner's business correspondence until some five months after the S. 45 notice had been issued, and one month after the trademark "Time Is Everything" had been expunged. There is nothing more Hope Lajeunesse can do to get the registration reinstated. (2 marks)

Answer

False. (1 pt.) She has two months from the date of the Registrar's decision within which to file a Notice of Appeal to the Federal Court pursuant to S. 56. (1 pt.)

Question 3

An applicant who has applied for a trademark in stylized font may claim the benefit of Section 14 in a foreign registration covering a corresponding block letter word mark. (2 marks)

Answer

True. (1 pt.) S. 14(2) – A stylized font would not likely be considered an alteration of the distinctive elements. (1 pt.)

Question 4

An application for a distinguishing guise can be based on the dual basis of use and registration abroad and proposed use covering the same wares. (2 marks)

Answer

False. (1 pt.) S. 13(1)(a) requires the mark to be used in Canada as the date of filing of the application. (1 pt.)

Question 5

A registered owner can voluntarily amend a registration to add a disclaimer. (2 marks)

Answer

True. (1 pt.) S.41 of the TMA (1 pt.)

Question 6

The applicant applied for a trademark in association with the goods "hot tubs" and now wishes to add the services "repair and maintenance of hot tubs" prior to advertisement. This change is acceptable. (2 marks)

Answer

False. (1 pt.) S.31 of the TMR (1 pt.)

Question 7

A copy of the certificate of registration supports the requirement of S. 31 of the Trademarks Act. (2 marks)

Answer

False. (1 pt.) S.31 specifically requires a copy of the registration certified by the Office (1 pt.)

Question 8

The time limit set out in the notice issued by the Office to pay the prescribed renewal fee ends on Tuesday, November 2, 2010. You receive instructions from the registered owner on November 3, 2010 to pay the renewal fee. Upon receipt of your client's instructions you immediately pay the renewal fee. The Registrar will renew the trademark registration. (2 marks)

Answer

False. (1 pt.) S.46(3) of the TMA (1 pt.)

Question 9

Briefly, in point form, assess the registrability of the following trademarks having regard to the relevant subsection of Section 12 of the Trade-marks Act, but excluding any Section 12(1)(d) issues. Provide reference to any other relevant sections or case law. (3 marks each for a total of 27 marks)

  1. SMITH & Jones – for use in association with: financial services, namely financial planning and investment advice
  2. HARRY POTTER – for use in association with: clothing, namely school uniforms
  3. HEALTHY BALANCE – for use in association with snack foods, namely pretzels, potato chips, peanuts and chocolate bars;
  4. MANITOBA TABLES – for use in association with furniture
  5. SWEET SWEET – for use in association with confectionaries
  6. QUICK BURN – for use in association with exercise equipment
  7. QUEEN ELIZABETH – for use in association with women's clothing and accessories, namely hats and purses
  8. OLYMPIC – for use in association with real estate brokerage services
  9. PIMENTO – for use in association with processed foods, namely pickles and peppers. The English translation of the word pimento is: "pepper".
Answer
  1. 12(1)(a) (1 pt.) registrable (1 pt.) 2 surnames – mark as a whole (1 pt.)
  2. 12(1)(a) 9(1)(k) 12(1)(e) – registrable – fictitious char. – assume not a person (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  3. 12(1)(b) – registrable as play on words OR not registrable as deceptively misdescriptive (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  4. No - 12(1)(b) (possibly 12(1)(c) too) – place of origin – Manitoba as source of goods? If yes, not registrable (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  5. 12(1)(b) – suggestive – registrable – Pizza Pizza decision (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  6. 12(1)(b) – registrable – suggestive – GRO-PUP case (Kellog's) (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  7. 12(1)(e) – 9(1)(d) – not registrable (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  8. 12(1)(i) – Olympics Act – not registrable + S. 9(1)(n)(iii) (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)
  9. No (S. 12(1)(c) for peppers but Yes for pickles. (1 pt for Sec., 1 pt for Y/N, 1 pt for principle)

Question 10

Your firm, Simpson, Griffin & Fox has been retained by InTouch Telecommunications Inc. to register its trademark I-N-Touch for use in association with its cellular telephones and portable entertainment devices. You have been instructed to conduct a preliminary search of the records of the Trademarks Office in order to assess the availability and registrability of your client's trademark. Your search has revealed the following trademarks:

A)
Mark Owner
Agent or representative
Particulars/Status Claims
Be InTouch ABC Network Systems Inc.
Agent: Michaels & Johnson LLP
  • Appl. 1,999,432
    (Filed March 9, 2001; Searched June 26, 2002)
Used in Canada since at least as early as October 24, 2000 in respect of wares (1)
B)
Mark Owner
Agent or representative
Particulars/Status Claims
OneTouch OTR Inc.
  • Appl. 1,995,433
    (Filed March 9, 2001)
  • Regis. TMA666,777
    (Registered July 16, 2009)
Used in Canada since at least as early as October 24, 2000 in respect of wares (2)
C)
Mark Owner
Agent or representative
Particulars/Status Claims
InTouch Second Face Inc.
Agent: Claxton Law Offices
  • Appl. 1,995,436
    (Filed March 9, 2001)
  • Regis. TMA299,990
    (Registered November 20, 1991)
Used in Canada since at least as early as October 24, 2000 in respect of wares (3)
D)
Mark Owner
Agent or representative
Particulars/Status Claims
In Touch Religious Ministries, inc.,
  • Appl. 680,333
    (Filed April 19, 1991)
  • Regis. TMA446,766
    (Registered June 16, 1995)
Used in Canada since at least December 1977 in respect of wares (4) and in respect of services (5)
E)
Mark Owner
Agent or representative
Particulars/Status Claims
In Touch Religious Ministries, Inc.,
  • Appl. 911,911
    (Filed July 29, 1999; Advertised September 8, 1999)
 
F)
Mark Owner
Agent or representative
Particulars/Status Claims
In Touch Jules Lab Inc.
Agent : Simpson, Griffin & Fox
  • Appl. 1,885,588
    (Filed December 6, 2000)
  • Regis. TMA669,711
    (Registered May 8, 2006; Renewal May 8, 2021)
Used in Canada since at least as early as June 1, 2000 in respect of wares (6) and in respect of services (7)
G)
Mark Owner
Agent or representative
Particulars/Status Claims
InTouch Media Technologies Inc.
Agent: Robertson, Wiley & Morris LLP
  • Appl. 1,234,456
    (Filed January 14, 2008; Allowed February 5, 2010)
Priority Filing Date: October 16, 2007, Country: OHIM (EC) Application 6 369 921 in association with the same kind of wares.

Proposed use in Canada in respect of wares (8)

H)
Mark Owner
Agent or representative
Particulars/Status Claims
Now You're in Touch SpeakUp Corporation
  • Appl. 711,442
    (Filed February 11, 1993)
  • Regis. TMA459,300
    (Registered July 19, 1996; Renewal July 19, 2011)
Used in Canada since at least January 15, 1993 in respect of wares (9)
I)
Mark Owner
Agent or representative
Particulars/Status Claims
NTouch Stevenson Peck Communications, Inc
  • 1,664,244
    (Filed December 24, 2009; Searched April 19, 2010)
Priority Filing Date: July 01, 2009, Country: UNITED STATES OFAMERICA, Application No: 77/772,085 in association with the same kind of wares.

Proposed use in Canada in respect of wares (10)

J)
Mark Owner
Agent or representative
Particulars/Status Claims
In-Touch BIT Inc.
Agent: Best & Hughes LLP
  • 779,976
    (Filed April 3, 2005; Abandoned April 30, 2006)
Proposed use in Canada in respect of wares (11) and in respect of services (12)

  1. Please provide your client with your opinion, yes or no, including a short explanation in point form as to whether you believe the trademark is likely to be a barrier to registration of your client's trademark. (3 marks each for a total of 30 marks)
  2. Please advise your client whether there are any concerns with your firm providing a registrability opinion with respect to any of the trademarks listed in the search. (2 marks)

Answer

  1. Mark Yes or No Point Form Explanation
    A) Be InTouch No Different wares/services and likely channels of trade
    B) OneTouch potentially a problem Same wares but different enough TM to get approval
    C) InTouch No Different wares, but could be an overlap if cited services used on mobile devices – can overcome
    D) In Touch No Different wares
    E) In Touch Yes Likely need s. 9 consent
    F) In Touch   No comment due to conflict
    G) InTouch No Same TMs but very different wares
    H) Now You're in Touch Yes Should be able to overcome based on difference in TM's and weakness in TM
    I) NTouch No Phonetically the same TM but different wares
    J) In-Touch No Abandoned therefore not citable, but should double check possible use in Canada
  2. Conflict of interest because firm represents some of marks found in the search. Must advise client, clarify that opinion does not include any reference to those marks and suggest client get advice from another agent to complete the opinion.

Question 11

Your receive instructions from a foreign associate agent to file an application for the registration of a trademark. Only the following information was included in the facsimile:

  • Applicant: ChipWagon Inc.
  • Trademark: "The best fries on wheels and design"
  • Services: restaurant services
  1. What further information is required to prepare the application? (5 marks)
  2. What else is required to obtain a filing date? (1 mark)
Answer
    • address of the applicant; (1 pt)
    • any of section 16: whether the trademark is proposed to be used, or has been used or made known, or the date of first use or making known of the trademark in Canada, or the name of a country in which the trademark has been used and information respecting the registration or application for registration in or for a country of the Union on which the right to registration is based; (3 pts)
    • a drawing of the trademark (1 pt)
  1. the application fee set out in item 1 of the schedule; (1 pt)

Question 12

United We Stand Inc., a world food distribution service, is incorporated as a non-profit organization in the United States. It adopted and is using the trademark FEED THE WORLD in several countries. It has a licensee based in Canada who distributes food bearing the trademark FEED THE WORLD in Iraq, Afghanistan and Canada. United We Stand Inc. directly controls the services provided by the Canadian-based licensee and has a proper licensing agreement in place. (Total of 8 marks)

  1. United We Stand Inc. now wishes to protect its rights in the mark FEED THE WORLD in Canada. Can this mark be protected in Canada as a trademark and/or an official mark? Please justify your answers.
  2. Would your answer be different if United We Stand Inc. was a Canadian organization? Please justify your answers.
Answer
    • Cannot be protected as Official Mark; (1 pt.)
    • In order to claim benefit of 9(1)(n)(iii), must be public authority in Canada; (1 pt.)
    • Canada Post Corporation v. United States Postal Services (2005), 47 C.P.R. (4th) 77 (F.C.T.D.); affirmed (2008), 54 C.P.R. (4th) 121 (F.C.A.) or TMO's Practice Notice published 2007-08. (.5 pt.)
    • Could be protected as ordinary TM, based on use in Canada in association with the wares/services covered under the license agreement. (1 pt.)
    • Section 50(1) deems licensed used to enure to the benefit of TM owner where quality control is exercised. (1 pt.)
    • No (1 pt.)
    • Evidence of adoption and use of an official mark by licensee not considered adoption and use by the public authority. (1 pt.)
    • S. 50 makes no reference to "official marks". (1 pt.)
    • Canada Post Corp. v. Post Office (2000), 8 C.P.R. (4th) 289 or Practice Notice 2007-08 (.5 pt.)

Question 13

Your client sells fruit flavoured power drinks and smoothies which high caliber athletes rave about. Its highly publicized banana flavoured smoothies, widely advertised on television and sports magazines are sold in fanciful yellow banana-shaped bottles. It adopted this very unusual banana-shaped bottle ten (10) months ago. The shape is also depicted on the label attached to the bottle. It has already used the bottle in the United States and in Mexico and intends to use it in Canada as well.

Your client seeks your advice as to how it can protect its intellectual property in Canada. In point form, advise your client. (15 marks)

Answer
  • Distinguishing guise:
    • In order to obtain a TM registration of the fanciful bottle shape it is necessary to establish that, at the date of application, the bottle had already been used in association with the wares and had become distinctive in Canada (S. 13 and S. 32). (4 pts)
    • Since the product has not yet been launched in Canada, distinctiveness cannot be established. (1 pt) (extensive advertisement could lead to distinctiveness though)
    • Advertisement alone would not be considered "use". Unlike services, in the case of wares, there has to be actual sales of the product. (1 pt)
    • Could recommend that an extensive advertising campaign, referring to the banana bottle design, be launched specifically in Canada. However, achieving distinctiveness, as of the date of application, will likely require a reasonable period of time and proof of extensive sales by way of documentary evidence by way of duly sworn Affidavit (or Declaration). (3 pts)
  • Industrial Design:
    • The bottle Design could be protected as an Industrial Design provided the Canadian Industrial Design application is filed within one year after first publication. Since the bottle has been in use for ten (10) months already, it is imperative to get exact date of first disclosure and file for protection as an ID before upcoming deadline. (2 pts)
  • Regular Trademark:
    • In the meantime, a regular trademark application could also be prepared and filed to protect the 2-dimensional fanciful banana design mark as depicted on the label, provided it does not contravene S. 12(1)(b) "clearly descriptive". (2 pts)
  • Copyright in fanciful design:
    • Copyright protection is automatic in the 2-dimensional fanciful design or we could also obtain a copyright registration of the said design. (2 pts)

Question 14

Your client, the State of California, operates the Winery Association of California and wishes to protect the standard CALIFORNIA in Canada for wines. The mark is used and registered in the U.S. to identify wares that are produced in accordance with the standards published in California Wine Regulation no. 1816.

Can the mark be protected in Canada? Based on the facts above, briefly describe the best option available for protection of this mark in Canada. (4 marks)

Answer
  • If the Regulation no. 1816 establishes a standard of production, the applicant could file a certification mark
  • The standard would have to be described in a meaningful way
  • Although clearly descriptive of place of origin of the wares, the mark is registrable if the applicant is the administrative authority of a country, state, province or municipality including or forming part of the area indicated by the mark, or is a commercial association having an office or representative in that area
  • Must ensure that the applicant is not engaged in the manufacture, sale, leasing or hiring of the wares in association with which the mark is used

Question 15

  1. Your client instructed you to file an application for registration of the trademark BREATHE FREE for use in association with scent-free soaps and shampoos. By virtue of a clerical error in your office, the application was filed with the trademark shown as BREATH FREE. You notice the mistake upon receipt of the Filing Certificate two days after the filing date. Can you amend the application and under what section of the Act or Regulations? (2 marks)
  2. In the same situation, you do not notice the error until the trademark has been advertised in the Trademarks Journal. Can you amend the application and what Section of the Act or Regulations are applicable? (2 marks)
Answer
  1. Yes, under R 31(b) on satisfying the Registrar that the change does not alter its distinctive character or affect the identity of the TM.
  2. No pursuant to R32(a).

Question 16

You receive instructions from your client, an associate in Australia, to file an application on that day in order to save a priority claim which the associate believes will be necessary in order to address a competitor using a similar trademark. The Australian associate has provided you with the necessary information to support a claim pursuant to Section 16(2) and has advised you that the trademark has been used in Canada but was not able to provide you with an accurate date of first use. Thus, the associate advised you to use the same date of first use as that in Australia, namely January 2007.

You have received an Office Action requesting a certified copy of the Australian registration which you have duly reported to your client.

  1. With her instructions, the Australian associate has confirmed that the client had not actually used the trademark in Canada prior to the filing date of the Canadian application. Please advise the Australian associate what can be done to correct the application in this situation and note the sections of the Act and/or Regulations that are applicable. (4 marks)
  2. With her instructions, the Australian associate confirms that the trademark has actually been used in Canada since March 15, 2006. Please advise the Australian associate what can be done to correct the error and cite the applicable sections of the Act and/or Regulations. (3 marks)
  3. After filing the response and the certified copy of the Australian registration, the application is approved and duly advertised. On seeing the advertisement in the Trademarks Journal, the Australian associate advises that its client has used the trademark in Canada since January 2008. Please advise the Australian associate what can be done to correct the application, again noting the appropriate sections of the Act and/or Regulations. (3 marks)
Answer
    • Amend the application from 16(1) to 16(3) (2pts)
    • Rules 30 and 31 (2 pts)
    • File amended application with evidence to prove that facts justify the change (1.5 pts)
    • Rule 31(c) (1.5 pts.)
    • Nothing. (1.5 pt)
    • Cannot change per Rule 32. (1.5 pt.)

Question 17

You filed an application for registration of the trademark MAPLE LEAF TREATS for use in association with ice skates.

In a first Office Action, the Examiner has requested a disclaimer of the depiction of the maple leaf pursuant to Section 35 of the Trade-marks Act. Please advise your client whether the Examiner's request is proper and how you can respond. (2 marks)

Answer

Request is proper under Section 35 and Order-in-Council PC 1965 re 11-pointed maple leaf – file amended application including disclaimer.

Question 18

You have filed an application for registration of the trademark FROM HERE AND AWAY on behalf of your client, for use in association with its restaurant services, based on use of the trademark since at least as early as January 2002.

You receive a first Office Action from the Trademarks Office in which the Examiner has cited Newfoundland Registration 12345 for the trademark FROM HERE AND AWAY for use in association with restaurant services. Briefly advise your client on how you can respond to the Office Action. (2 marks)

Answer
  • Can respond by disclaiming Newfoundland & Labrador from your eventual registration – Section 67 TMA
  • Cannot expunge NFLD registration (but with Court order possible)
  • Find/Contact owner to transfer registration or voluntarily cancel

Question 19

You filed, on behalf of Glamour Inc, an application for the registration of the trademark BLING used and registered in the U.S. under registration number 786341 in association with jewellery. The examiner has raised an objection pursuant to paragraph 12(1)(b) of the Trade-marks Act on the ground that the word bling clearly describes that the wares are expensive pieces of jewellery. The examiner cited the following dictionary definition as found in the Canadian Oxford Dictionary: "slang for flashy and expensive clothing or jewellery."

Briefly advise how you can respond to the Office action. (6 marks)

Answer
  • Check the Register for other BLING trademarks – argue if possible
  • File certified copy of US registration
  • claim the benefit of s. 14 of the Trade-marks Act
  • the applicant will have to file evidence, in the form of affidavit, to demonstrate that the mark is not without distinctive character in Canada
  • abandon the application if there is not sufficient evidence
  • re-file with distinctive element

(May have enough sales to show distinctiveness under S. 12(2) ) (no points)

Question 20

You represent Pete's Photography Inc. which has a pending application 1,123,444 for the registration of "GEOBO" based on use in association with greeting cards and fine art lithographs. The Examiner issued an Office Action wherein an objection based on paragraph 12(1)(d) is raised on the basis that the mark is considered confusing with the registered mark "GEOBO & Design" (TMA 456,789), owned by Pete's Photo Ltd., for use in association with fine art lithographs. Your client informs you that Pete's Photo Ltd. is affiliated with Pete's Photography Inc. Advise the client. (6 marks)

Answer
  • The two marks, considered confusingly similar, would have to be owned by the same legal entity if they are to coexist on register.(2 pts.)
  • Thus, if abandonment not an option, to avoid dilution and overcome 12(1)(d) objection, regis. TMA 456,789, or the application, would have to be transferred to the other party. (2 pts.)
  • Use of the mark could then be licensed to the affiliate pursuant to S.50. (2 pts.)

(Pursuant to S.15, would be considered associated marks)

Question 21

Paragraph 30(a) of the Trade-marks Act stipulates that an applicant must file an application containing a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used. What are the fundamental principles for determining the acceptability of wares and services? (3 marks)

Answer
  • Are the wares/services sufficiently specific so that it is possible to assess whether Section 12(1)(b) of the Trade-marks Act applies?
  • Are the wares/services sufficiently specific so that it is possible to assess confusion?
  • Are the wares/services sufficiently specific so as to ensure that the applicant will not have an unreasonably wide ambit of protection [e.g.: approving wares described as computer software, without further specification, would give the applicant an unreasonably wide ambit of protection]?

Question 22

  1. On behalf of your client, you are requesting a first extension of time to respond to the examination report, wherein an objection was raised pursuant to s. 30(a) and 12(1)(b), since you are unable to receive instructions from the associate agent. Will the Office grant the extension? (2 marks)
  2. You now have received instructions and therefore file a revised application wherein the wares have been redefined in order to address the 30(a) objection. However you have omitted to respond to the registrability objection. Will the Office grant an extension? (3 marks)
Answer
  1. Yes. First request does not require exceptional circumstances. Practice Notice on extension of time.
  2. No. A notice of default will issue as this would be considered a partial response. Practice Notice Extension of the deadline for responding to examination reports.

Question 23

In 2004 Sweet Sugar Inc. transferred its rights to the registered trademark choco-melts to Sweet Confectionary Inc. This transfer was never recorded with the Canadian Intellectual Property Office. Your client, Candy Candy Corporation is now the rightful owner of the said mark. What requirements must be met for the Trademarks Office to record the transfer? (4 marks)

Answer
  • Section 48(3) (1 pt.)
  • The prescribed fee (1 pt.)
  • A name and mailing address in Canada of the new owner (s.30(g) of the TMA) (1 pt.)
  • Evidence that the mark has been transferred, including chain in title; the Office does accept photocopies of documents or relevant excerpts from transfers; transfer document should be signed by the owner/applicant (1 pt.)

(1) Computer software for organizing the user's communications (including incoming and outgoing e-mail, facsimile and voice messages) on a personal computer, and for accessing such communications remotely via devices that access the Internet.

(2) Personal communication devices

(3) Social networking website

(4) Pre-recorded audio and video cassettes dealing with religion; printed publications namely, books, pamphlets and magazines dealing with religion.

(5) Series of religious television programs.

(6) Telephone calling cards,

(7) Provision of consumer telecommunication services namely prepaid long distance and local telephone services.

(8) Electronic apparatus and computer peripherals for recording and editing sounds and noises, in particular music, namely hardware-based control units for connecting to electronic data processing equipment for activating software-controlled MIDI and/or audio sequencers.

(9) Telecommunications equipment, namely cellular telephones, pagers, terminals and mobile radio systems and equipment.

(10) Telecommunications software and equipment for assisting deaf and hard-of-hearing persons in communication via the telephone, the Internet and related communication media.

(11) Electronic paging equipment; cellular telephones; personal entertainment devices

(12) Sales, rental and lease and service for electronic paging equipment, satellite paging and related telecommunication services.


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