Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA614702
`ESTTA Tracking number:
`07/09/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216258
`Defendant
`The Concept Law Group, P.A.
`SCOTT D SMILEY
`THE CONCEPT LAW GROUP PA
`200 S ANDREWS AVE STE 100
`FORT LAUDERDALE, FL 33301-2000
`UNITED STATES
`Info@ConceptLaw.com
`Opposition/Response to Motion
`Mark Woodruff
`Info@ConceptLaw.com
`/Mark Woodruff/
`07/09/2014
`Applicant's Response to Motion to Strike - Opposition 91216258.pdf(4408288
`bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Andrey Pinsky,
`Opposer,
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`The Concept Law Group, P.A.,
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`Applicant
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`____________________________________)
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`Opposition No. 91216258
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`Mark: THE CONCEPT LAW GROUP, P.A.
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`PATENTS COPYRIGHTS
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`TRADEMARKS (+ Design)
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`Serial No. 86/023,378
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`APPLICANT’S RESPONSE TO OPPOSER’S MOTION TO STRIKE
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`The Concept Law Group, P.A. (“Applicant”) hereby submits this response to the motion
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`filed by Andre Pinsky (“Opposer”) on July 1, 2014, to (1) strike Applicant’s Affirmative
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`Defenses Nos. 19-26 asserted in its Answer to Notice of Opposition; (2) remove interlocutory
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`attorney Elizabeth Dunn on the basis of lack of integrity; and (3) suspend the opposition pending
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`the outcome of a Canadian litigation matter. Applicant submits that all three requests should be
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`denied and states as follows:
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`1.
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`Initially, Applicant notes the Board has previously ruled that motions to strike are
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`not favored and a matter will not be stricken unless it clearly has no bearing upon the issues in
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`the case. See, e.g., Ohio State University v. Ohio University, 51 U.S.P.Q. 2d 1289, 1293
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`(T.T.A.B. 1999); Harsco Corp. v. Electrical Sciences Inc., 9 U.S.P.Q. 2d 1570 (T.T.A.B. 1988).
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`Each of Applicant’s affirmative defenses could defeat Opposer’s claims and/or serve as a basis
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`for disposing of this case in Applicant’s favor and do have a bearing upon the issues.
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`2.
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`In Paragraph 4 of Opposer’s Motion to Strike, Opposer argues that Paragraph 19
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`of Applicant’s Answer, which asserts that Opposer lacks standing, is “irrelevant, irresponsive,
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`and vague” because “Opposer’s occupation as a Canadian lawyer does not preclude his self-
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`Page 1 of 11
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`representation in this proceeding.” However, Applicant’s Affirmative Defense that Opposer
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`lacks standing has nothing to do with Opposer’s self-representation but rather asserts that
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`Opposer is not entitled to assert any U.S. trademark rights for the words “CONCEPT LAW” for
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`“legal services” in Class 045. Opposer, an alleged lawyer in Canada, is not licensed to practice
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`law in the United States. Because Opposer cannot offer legal services in the United States or
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`between the United States and Canada, Opposer cannot be damaged by the registration of
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`Applicant’s mark. See TBMP § 303.09 (plaintiff is only required to “allege facts sufficient to
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`show a ‘real interest’ in the proceeding and a ‘reasonable basis for its belief that it would suffer
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`some kind of damage if the mark is registered… To plead a ‘real interest,’ plaintiff must allege a
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`‘direct and personal stake’ in the outcome of the proceeding. The allegations in support of a
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`plaintiff’s belief of damage must have a reasonable ‘in fact’ ”).
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`3.
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`In Paragraph 5 of Opposer’s Motion to Strike, Opposer argues that Paragraph 24
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`of Applicant’s Answer, which asserts that Opposer is barred by the doctrine of laches, is
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`“irrelevant, irresponsive, and vague” because this Affirmative Defense is not available in an
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`opposition proceeding and that there were no laches in pursuing the Opposition. Contrary to
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`Opposer’s contention that the doctrine of laches is not available as an Affirmative Defense, this
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`defense is explicitly allowed in an answer to opposition. 37 C.F.R. § 2.106(b)(1) (2014).
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`Opposer does not state why the defense is believed to be “irrelevant, irresponsive, and vague,”
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`but is simply trying to prematurely argue the merits of his position. The primary purpose of
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`pleadings under the Federal Rules of Civil Procedure is to give fair notice of the claims or
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`defenses asserted. See, e.g., Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG, 36
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`U.S.P.Q. 2d 1221, 1223 (T.T.A.B. 1995) (amplification of applicant’s denial of opposer’s claims
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`Page 2 of 11
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`not stricken). Applicant has properly placed Opposer on notice. Opposer’s premature arguments
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`should be ignored and Opposer’s Motion to Strike denied.
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`4.
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`In Paragraph 6 of Opposer’s Motion to Strike, Opposer argues that Paragraph 25
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`of Applicant’s Answer, asserting that Opposer’s claims are barred by the doctrine of
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`acquiescence, is “irrelevant, irresponsive, and vague” because this Affirmative Defense is not
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`available in an opposition proceeding. Contrary to Opposer’s contention that the doctrine of
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`acquiescence laches is not available as an Affirmative Defense, this defense is explicitly allowed
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`in an answer to opposition. 37 C.F.R. § 2.106(b)(1). Opposer does not state why the defense is
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`believed to be “irrelevant, irresponsive, and vague,” but is simply trying to prematurely argue the
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`merits of his position. The primary purpose of pleadings under the Federal Rules of Civil
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`Procedure is to give fair notice of the claims or defenses asserted. See, e.g., Order of Sons of
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`Italy in Am., 36 U.S.P.Q. 2d at 1223. Applicant has properly placed Opposer on notice.
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`Opposer’s premature arguments should be ignored and Opposer’s Motion to Strike denied.
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`5.
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`In Paragraph 7 of Opposer’s Motion to Strike, Opposer argues that Paragraph 26
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`of Applicant’s Answer “irrelevant, irresponsive, and vague.” Opposer does not say why he
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`believes this to be so. Opposer states that Paragraph 26 of Applicant’s Answer alleges the
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`Affirmative Defense that “one or more of Opposer’s claims or issues may be barred under the
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`doctrines of collateral estoppel and/or res judicata.” However, Paragraph 26 of Applicant’s
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`Answer actually states “Opposer’s claims are barred because there is no likelihood of
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`confusion.” Applicant’s Affirmative Defense under the doctrines of collateral estoppel and/or
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`res judicata are in Paragraph 28 of Applicant’s Answer. In Paragraphs 8-13 of Opposer’s Motion
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`to Strike, Opposer argues that Applicant has failed to establish any of the grounds required for
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`operation of the doctrine of res judicata. Opposer does not state why the defense is believed to
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`Page 3 of 11
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`be “irrelevant, irresponsive, and vague,” but is simply trying to prematurely argue the merits of
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`his position. Moreover, pursuant to Opposer’s own averment in paragraph 6 of its Notice of
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`Opposition, there have been two previous cancellation proceedings that may have some bearing
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`and/or preclusive effect attributable to the Opposer. The primary purpose of pleadings under the
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`Federal Rules of Civil Procedure is to give fair notice of the claims or defenses asserted. See,
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`e.g., Order of Sons of Italy in Am., 36 U.S.P.Q. 2d at 1223 (amplification of applicant’s denial of
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`opposer’s claims not stricken). Applicant has properly placed Opposer on notice. Opposer’s
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`premature arguments should be ignored and Opposer’s Motion to Strike denied.
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`6.
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`In Paragraphs 14 and 15 of Opposer’s Motion to Strike, Opposer argues that
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`Paragraph 20 and 21 of Applicant’s Answer, which asserts that Opposer’s claims are barred by
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`the doctrine of unclean hands, are “irrelevant, irresponsive, and vague” because Opposer’s
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`application serial number 86/071,287 is not relevant to the Opposition. In Paragraph 20 of
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`Applicant’s Answer, Applicant asserts that Opposer’s claims are barred by the doctrine of
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`unclean hands because Opposer committed fraud on the U.S. Patent and Trademark Office by
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`filing application serial number 86/071,287 for “CONCEPT LAW” for “legal services” even
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`though Applicant is not legally capable of providing “legal services” in the United States. In
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`Paragraph 21 of Applicant’s Answer, Applicant asserts that Opposer’s claims are barred by the
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`doctrine of unclean hands because Opposer submitted a fraudulent specimen of use upon
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`receiving a rejection of trademark application serial number 86/071,287 for “CONCEPT LAW”
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`for “legal services.” In Opposer’s pending application serial number 86/071,287, Opposer
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`submitted an application for “CONCEPT LAW” in connection with “legal services.” In this
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`application, Opposer submitted a specimen showing Applicant actually provides legal services
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`under the name “PINSKY LAW,” not “CONCEPT LAW. See Exhibit A. The Examining
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`Page 4 of 11
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`attorney recognized that Opposer does not provide “legal services” under the name “CONCEPT
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`LAW” and issued a rejection on this ground. See Exhibit B (“In the present case, the specimen
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`shows the applied for mark CONCEPT LAW used in association with the provision of a
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`newsletter – not in association with the provision of any of the specific legal services as the
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`applicant has claimed.”). Opposer responded by altering his website—years after Applicant
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`adopted the mark CONCEPT LAW GROUP1—and fraudulently submitted the new specimen to
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`the USPTO swearing “[t]he substitute (or new, if appropriate) specimen(s) was/were in use in
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`commerce at least as early as the filing date of the application,” i.e., September 22, 2013. See
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`Exhibit C. Specifically, where Opposer used to offer “MANDATUS in-house counselling
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`programs,” he now claims to have been offering “CONCEPT LAW in-house counselling
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`programs.” Id. Prior to the instant Opposition, Applicant sent Opposer two communications on
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`this very issue. The first communication was a letter dated September 23, 2013, coincidentally,
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`one day after Opposer filed his application for “CONCEPT LAW,” explaining to Opposer that
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`he does not perform “legal services” under the name “CONCEPT LAW.” See Exhibit D. In a
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`subsequent letter, dated April 10, 2014, Applicant sent Opposer a letter identifying the chain of
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`events evidencing Opposer’s fraud on the USPTO. See Exhibit E. Clearly, Opposer’s
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`application to register “CONCEPT LAW” for legal services in Class 045 is relevant to his
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`opposition against a mark containing “CONCEPT LAW” for legal services in Class 045. The
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`USPTO’s statement that Opposer’s creation of a newsletter is not sufficient to substantiate a
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`claim of providing “legal services” is relevant to his opposition against a mark containing
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`“CONCEPT LAW” for legal services in Class 045. Further, if Opposer’s application for
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`1 Although Applicant claims a first date of use of October 24, 2012 for the instant LOGO mark,
`Applicant adopted the name THE CONCEPT LAW GROUP at least as earlier as January 2011.
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`Page 5 of 11
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`“CONCEPT LAW” is based on fraudulent claims, Opposer has no equitable right to deny
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`Applicant use of its allegedly confusingly similar mark. See Precision Instrument Mfg. Co. v.
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`Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945) (“It is a self-imposed ordinance that closes the
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`doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter to
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`which he seeks relief….”); see also Duffy-Mott Co. v. Cumberland Packing Co., 57 C.C.P.A.
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`1046, 1051 (C.C.P.A. 1970) (“Trademark rights under the statute are no longer divorced from
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`equitable principles…. It is a rule of equity that a plaintiff must come with clean hands, i.e., he
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`must be free from reproach in his conduct.”). As such, Opposer’s Motion to Strike should be
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`denied.
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`7.
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`In Paragraphs 16 and 17 of Opposer’s Motion to Strike, Opposer argues that
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`Paragraph 22 of Applicant’s answer is “irrelevant, irresponsive, and vague.” In Paragraph 22 of
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`Applicant’s Answer, Applicant asserted that Opposer’s claims are barred by Section
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`1301.01(a)(ii) of the Trademark Manual of Examining Procedure because Opposer only uses the
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`mark CONCEPT LAW in connection with a newsletter that advertises his own legal services
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`provided exclusively under the name PINSKY LAW, only in Canada, and, thus, does not serve
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`as a trademark in the United States or in commerce between the United States and Canada.”
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`TMEP Section 1301.01(a)(ii) states:
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`To be a service, an activity must be primarily for the benefit of someone other
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`than the applicant. While an advertising agency provides a service when it
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`promotes the goods or services of its clients, a company that promotes the sale of
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`its own goods or services is doing so for its own benefit rather than rendering a
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`service for others. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970).
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`Page 6 of 11
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`Applicant has pleaded with specificity the facts that would give rise to the allegation. As
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`such, Opposer’s Motion to Strike should be denied.
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`8.
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`In Paragraphs 18 and 19, Opposer argues that Paragraph 23 of Applicant’s
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`answer, which asserts that Opposer’s claims are barred because Applicant is the senior user with
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`regard to any mark that is alleged to have been confusingly similar to CONCEPT LAW, is
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`“irrelevant, irresponsive, and vague.” Applicant submits that “senior user” is a well-known term
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`and legal principle in trademark law, which does not require further specifics. The primary
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`purpose of pleadings under the Federal Rules of Civil Procedure is to give fair notice of the
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`claims or defenses asserted. See, e.g., Order of Sons of Italy in Am., 36 U.S.P.Q. 2d at 1223
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`(amplification of applicant’s denial of opposer’s claims not stricken). Applicant has properly
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`placed Opposer on notice. Opposer’s Motion to Strike should be denied.
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`9.
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`In Paragraphs 21-29, Opposer argues for the removal of Elizabeth Dunn as
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`interlocutory attorney on the basis of her supposed “lack of integrity,” “wilful blindness,” and
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`“clear bias” in Cancellation Proceeding No. 92054551. Specifically, and rather shockingly, in
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`Paragraph 28, Opposer states his personal belief that “Elizabeth Dunn’s lack of integrity is so
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`profound that she is unable to see the perversity of her involvement as the Board’s attorney
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`responsible for the current Opposition proceeding.” Such allegations by Opposer are nothing
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`short of outrageous, should be ignored, completely lack evidentiary support or good faith on
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`behalf of the Opposer, and can only be seen as being made for the purpose of harassing the
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`Board and causing unnecessary delay in the proceedings. Further, the record in Cancellation
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`Proceeding No. 9205455 shows nothing that even hints at a “lack of integrity” on the part of
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`attorney Dunn. The only thing evident in that record is that these types of unnecessary and
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`inflammatory statements are par for the course for Opposer and are, undoubtedly, the reason he
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`Page 7 of 11
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`was threatened with sanctions on multiple occasions. See [Cancellation Proceeding 92054551,
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`DE 42, at 2-3] (“we note that petitioner has repeatedly acted in contravention of specific Board
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`orders and the rules governing this proceeding. . . Petitioner’s opposition to the motion for
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`sanctions contains personal attacks on respondent which do nothing to advance the legal issues in
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`this proceeding. . . Petitioner’s inflammatory descriptions of respondent’s family and business in
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`his opposition to the motion for sanctions have no place in this proceeding, and were filed in
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`violation of the aforementioned Board order.”). Applicant asserts that, if Opposer were to
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`properly assert a ground for removal of Ms. Dunn, it would need to be based on the instant
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`matter and not a previous matter, which is not the case here. In addition to the denial of
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`Opposer’s Motion to Strike, Applicant also urges this Board to consider sanctioning Opposer sua
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`sponte for its conduct2 or, at the very least, caution Opposer that any future conduct will likely
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`arise to possible sanctions. See Giant Food, Inc. v. Standard Terry Mills, Inc., 231 U.S.P.Q. 626,
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`633 n.19 (T.T.A.B. 1986) (Rule 11 permits court to enter sanctions sua sponte); Fed. R. Civ. P.
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`11(b)(1), (b)(3), (c)(3); 37 C.F.R. § 2.116(a) (Rule 11 applies to pleadings, motions, and other
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`papers filed in an inter partes proceeding before the Board).
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`10.
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`In Paragraph 20, Opposer requests the instant proceeding be suspended pending
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`the outcome of Canadian litigation he instituted against Applicant. Such request must be denied,
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`as the Canadian litigation is based on a completely different set of facts and law and its outcome
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`has no bearing on the issues of the instant Opposition. Specifically, despite the fact that Scott
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`Smiley, owner of Applicant, has not been to Canada since he was 7 years old, despite the fact
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`that none of the attorneys employed by Applicant are licensed to practice law in Canada, despite
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`2 This Board should take note and act with a background of the well-documented litigation
`tactics employed by the Opposer in Cancellation Proceeding Nos. 9205455 and 92005455 in
`sanctioning, or at the very least admonishing Opposer.
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`Page 8 of 11
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`the fact that Applicant does not advertise its legal services in Canada, despite the fact that there is
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`already a law firm in Canada operating under the name “The Concept Law Group” for many
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`years (www.conceptlaw.ca), and despite the fact that Opposer practices law under the name
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`“Pinsky Law” and not “Concept Law,” Opposer has filed a frivolous suit based on fictitious
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`claims of trademark infringement. Such litigation is clearly an attempt to cause Applicant
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`expense and frustration. Even if Opposer were to prevail in Canada, which Applicant rejects as a
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`possible outcome, a determination that he provides “legal services” under a name in a country
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`where he actually is licensed to practice law is not evidence that he is able to provide “legal
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`services” in the United States, where he is not licensed to practice law. As such, Opposer’s
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`claims can only be seen as being made for the purpose of harassing the Applicant with
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`unsubstantiated and baseless claims and causing unnecessary delay in these proceedings, all in
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`violation of Rule 11 of the Rules of Civil Procedure. Therefore, in addition to the denial of
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`Opposer’s request to stay the instant proceeding, Applicant also respectfully urges this Board to
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`consider sanctioning Opposer sua sponte for its conduct or, at the very least, caution Opposer
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`that any future conduct will likely arise to possible sanctions. See Giant Food, Inc., 231
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`U.S.P.Q. at 633 n.19.
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`WHEREFORE, Applicant denies that Opposer is entitled to any relief, requests that the
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`Board dismiss the Motion to Strike, deny Opposer’s request to stay and remove interlocutory
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`attorney Elizabeth Dunn, and urge this Board to consider sanctioning Opposer sua sponte for its
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`above-describe actions.
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`Page 9 of 11
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`Dated: July 9, 2014
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`Respectfully submitted,
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`The Concept Law Group, P.A.
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`By:
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`/Scott D. Smiley/
`Scott D. Smiley
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`Museum Plaza
`200 South Andrews Avenue, Suite 100
`Fort Lauderdale, FL 33301
`Info@ConceptLaw.com
`(754) 300-1500
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`Attorney for Applicant,
`The Concept Law Group, P.A.
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`Page 10 of 11
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`Certificate of Mailing and Service
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` I
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` certify that on July 9, 2014, the foregoing RESPONSE TO MOTION TO STRIKE is
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`being served by mailing a copy thereof by U.S. mail to:
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`
`
`Andrey Pinsky
`Pinsky Law
`Suite 900 45 Sheppard Avenue East
`Toronto, ONT M2N5W9
`CANADA
`andrey@pinskylaw.ca
`(416) 221-2600
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`By:
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`/Scott D. Smiley/
`Scott D. Smiley
`Museum Plaza
`200 South Andrews Avenue
`Suite 100
`Fort Lauderdale, FL 33301
`Info@ConceptLaw.com
`(754) 300-1500
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`Attorney for Applicant,
`The Concept Law Group, P.A.
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`Page 11 of 11
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`

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`EXHIBIT A
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`Applicant’s Response to Opposer’s Motion to Strike
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`Opposition No. 91216258
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`

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`Business i‘.‘- intellectual Propcmr tail-'
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`CONCEPT LA w‘® Articles
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`technology and intellectual
`We rnalntaiii CONCEPT LAWG newsletter related to business,
`Dfoperty uoiicepts that advance the commercial and intellectual property value of a startup
`m°Vi|"|9 "3 l5ECh"0|0Q‘i' from concept, to Droducts. to customers,
`to cash flow. Distinct from
`the 53"“'lC€5 Pfiemd DY traditional business and intellectual property law fin'ns_. we provide
`MAND.iII‘l'US"“ in-house counselling programs serve as corporate general counsel on a
`Dart--tlrne basis for clients whose manogcrniitnt
`teams reuuirc dedicated.
`iii-liouse legal
`management and resources, but are not yet large enough to justify hiring Full-lime general
`CUl.|ll5EI. We advance our Clients ll'| a way that gives them the ltinowledge and ability neetied
`to iiiaximizu their CDI'|'IpaI'lICS' commercial and intellectual property value anti
`I'illilil'I'l|ZC
`fulurti legal defence costs.
`
`ix-iW® newsletter that were distributed in the years
`Below are the i!a'i_'l§lJ'E!.'a'v of tlic CONCL-Pl
`2005 - 2013. eMaiI to us if you WUUIII like to receive our news letter.
`
`DISCLAIMER ~ Please nolie that the information provided in the CONCEPT LAw""
`newsletter is of a general nature and may not apply on any specific or particular
`situation. It is not to he considered as a legal advice nor presumed to be
`indefinitely up to date.
`
`Patent Infringement and Freedom-to-Operate Opinion Letters 2
`Popular Patent Law Misconcentions 3
`Popular Trademark Law Misconceptions 3
`Staying out of Court While Staying in Business (She reholder & Patent Litigation)
`Business Contracts, Litigation, and Recovery of Damages
`Business Torts, Litigation, and Recovery of Damages
`Patent Infringement Litigation
`Tracleniark Infringement Litigation
`Legal Issues In a 5tart—uo. Part 6 - Exit Strategies
`Legal Issues in a Start—up. Part 5 - sale of Equity
`Legal Issues in a Start-up. Part 4 - Raising Capital
`Legal Issues in a Start-uo. Part 3 - Employees and Employment Law issues
`Legal Issues in a Start-up. Part 2 - Choice of Business Entity
`Legal Issues in a Start-up. Part 1 - Intellectual Property Protection
`Canadian Copyright Registration
`Intellectual Property Due Diligence Check List
`Action for Infringement of a Canadian Trademark
`Action for Infringement of a Canadian Patent
`Avoiding Mistakes in Intellectual Property Protection
`Trademark and Brand Name Creation, Main tenance, and Protection
`Trademark Infringement on the Internet
`Strategies for Keeoln o the Cost of IP Protection Down
`Building Patent Portfolios
`Etanaaiari Perspective for Dealing with Infringement in the U.S.A.
`Treatment of an Aircraft in Canadian Bankruptcy Proceedings
`Software Patent infringement and Litigation
`Impact of the Recent Pa tenL Law Cases
`Filing Foreign Patent Application
`Filing a USA Provisional Patent Application
`Understanding Term Sheets and Letter: or Intent‘
`Traden-iarks, Distinguishing Gulses, and Trade Names
`Development and Work for HI re Agreements
`Fillng U5 Design Patent Application
`
`0IOCII I
`
`ICIOIIICOQOOOOOIOIC
`
`

`
`Policing and Enforcing Trademarks
`Software Licensing in U.S.A.
`Canadian Patent Infringement issues 2
`Advertising Canadian Trademark for Opposition 2
`Canadian Novelty and Obvlousness Standards 2
`Filing Canadian Trademark Application 2
`starting and Structuring a Franchise Network
`Sale oi‘ a Business - The Forgotten intellectual Property Assets
`Interplay Between Trademarks and Domain Names
`Patent Portfolios and Protection of Business Assets
`Protecting lntellectuai Property Rights in China
`Technology Sta rtup - Teri Issues to Keep in Mind
`Protection of intellectual Property Through Employment Agreem ents
`Popular Startup Misconceptions
`Patent infringement and Freedornvto-Operate Opinion Letters
`Popular Patent Law Misconceptions 2
`Popular Trademark Law Misconceptions 2
`Stortup Companies and Licensing Agreements
`Filing a U.$. Provisional Patent Application - Advantages and Disadvantages 3
`How a Company Can Put its intellectual Property at Risii:
`After-Reoessioii iiiteiiectual Property Strategies for Starturis
`Startups. Venture Capital, and Intellectual Property Due Diligeiice
`Startups, Venture Capital, and Patent Protection
`Intellectual Property Ownership and Clearance
`Amending Canadian Patent Application
`Amending Canadian Trademark Application
`Financing a New venture - sale of Debt
`Filing and Prosecuting a U.S. Trademark Application
`Filing and Prosecuting a U.S. Patent Application
`Financing a New Venture - Sale of Equity
`Examination of a Canadian Patent Application
`Effect of Registration of a Canadian Trademark
`Assignment and Licence of a Canadian Patent
`Avpeals from Decisions of the Registrar of Trademarks
`Agroeriionts B(.‘tW(3t!ll Business Founders - issues for Founders and Siiareliolders
`intellectual Property Merchandise Program
`Trademarks and lnteriiei. Domain Names
`liiipeachmenl 0| 3 Canadian Pilleiit
`Tradeinark 0p|.1USIliUn Proceedings
`Managing and Protecting Trade Secrets 2
`Employment Issues in a Start-up Company 2
`Forming a Board — Issues for Founders and Shareholders
`Canadian Patent infringement issues 1
`Advertising Canadian Trademark for Opposition 1
`Canadian Novelty and Obviousness Standards 1
`Filing Canadian Trademark Application 1
`Capitalizing on Intellectual Property - Labelling, Packaging and Distribution 2
`Dealing with Patent Infringing Activities
`Popular Patent Law Misconceptions 1
`Popular Trademark Law Misconceptions 1
`Patent Infringement Remedies
`Trademark Infringement
`Filing a U.5. Provisional Patent Application - Advantages and Disadvantages 2
`New Hire Agreements - Labour and Eiiiployineiit Law Issues
`Understanding Franchise Agreements
`Protecting Intellectual Property Rights in Outsourcing Agreements
`Privacy on the Internet
`l:'i2l:l- Exchanges
`Contracting for Internet Related Services
`Managing Outsourcing Contracts
`Development 8i Work for Hire Agreements
`Understanding Term Sheets and Letters of intent
`Noii-disclosure Agreements in Venture Financing Transactions
`Stock Control Arrangements
`Patent Licensind
`iradcrnarit licensing iii Trademark Assigrirnent
`Policing and Eiifurcirig Ira demdrks
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`Software Licensing in the usn
`Filing a U.5. Design Patent Application
`Trademarks, Distinguishing Guise (Trade Dress) and Trade Names
`Actions for Trademark infringement
`Filing a U.5. Provisional Patent Application — Advantages and Disadvantages 1
`Selecting a Canadian Trademark
`Filing a Canadian Patent Application
`Trademarks - Packaging and Product Configurations 1
`Patents - Investigating Infringing Activities
`Filing a U.S. Trademark Application
`Filing a u.s. Patent Application
`Manufacturing Facilities: Purchase or Lease
`Manufacturer's Representative, Distributor and Dealer Arrangements
`Antitrust Issues
`Business Related Torts
`Unfair Competition
`Licensing of Intel iectual Property
`Trace Secret Protection 1
`Litigation and Disclosure of Electronic Documents
`Outsourcing — Uncl erstandlng and Managing Risks
`Trademark Application Flowchart
`Patent Application Flowchart
`Important Aspects of Mergers and Acquisition Process
`Exit Strategies for a Sta rt-up Company
`Ernplovrnent issues in a Start’ up Company 1
`Technology Taxation Issues
`Raising Debt Capital for a Start-up Corrlparlv
`Fillalicirig a Start—up Company
`Protection of Intellectual Properly in a StarI—ilp Company
`Choice of Business Entity for a Siari—up Colnpany
`Computer and lnrormation Technology Law Di.-vi.-Iopmenlzs
`Technology Law Dev&|0|.ii‘lleill£S
`ielecommunicatlons Law Developments
`Corporate and Commercial Law Developments
`corporate and Commercial Litigation Developments
`Corporate Taxation Law Developments
`Corporate Finance Law Developments
`Intellectual Property Law Developments
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`0 2012 Pinsky Law
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`Privacy Policy
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`Terms 8i Conditions
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`Disclaimer
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`PIN SKY LAW
`Brtsirtess Ev’ Irttcilectttnl Pt'oper't_1.-‘ Low
`
`Assignment and Licence of a Canadian Patent
`
`1. Assignment
`
`Unless Ire has assigned his rights. a parent will issue to t'l1eil1\-'eut01'..tJr
`if deceased. to his estate. There are three distinct rights wlrich are each
`capable of assigrnrrerrt at law. The first occurs the rnourent the inven-
`tion is made. when the right to apply for a patent comes into existence:
`the second is the right under an application once made: the third is the
`patent itselfonce granted.
`
`An application for a patent is assignable and the assignment must be in
`writing. Such il.l1£lSSlgJ1l.It€lJl may be varied by a subsequent oral age:-—
`rtrent. subject to equity, wlticlt may preclude an oral agreement on reas-
`signment or ctttingttislrirrg a right of reassigtnnent. Where an assign-
`tucrrt of an application is registered in the Patent Office. the applicaliott
`nray not be withdrawn without the consent of the assignee.
`
`A parent is assignable and the as-sigrnrrertt must he in writing and may
`be registered with the patent office. The Court will carefully ersarniue
`the wording of a document so as to determine ifthere was an assign-
`ment as opposed to a license or right to use. The Cotnt will not assume
`exclusivity in tlte absence of clear wording. An assigutttent ot‘ a patent
`is void as against a subserptent assignee unless the first assigttment is
`registered before the subsequent ntre. l'lowever. a sulrseqtrcttt rtssignec
`cart take tto interest in a patent iflrt: had actual knowledge as to a previ-
`ous assigrmierrt.
`
`Where an assigrnncnt of a patent or pending application has been regis-
`tered. the Federal Court has jruisdictiou to vary or expnrrge that regis-
`tration. ltmvever. the Federal C'o1n't has no jurisdiction to dt':l£'l“lll.l.l.'rC a
`question of ownership of a patent based only upon the interpretation of
`a contract. The Color will not make an amendment to title during the
`cotuse of a trial in llre absence I:-fa pleading reqrrestnrg such it relief. A
`co-owner can sell its interest in a patent to another \vh.ercl:ty the new
`purclJase1' becontes tr co-owrrcr. A patent is not mfiinged by‘ :1 co—owIrer
`who. withortt the consent of the other. makes or sells tlte iuvertliott itt
`Canada. A co-owner cannot grant a valid licence to a third party widt-
`orrt the consent of the coowner ~ such a licence is invalid and the
`would be licensee will be an infiiuger if it makes the patented invert-
`tiou. A co-owner of a patent cantrot :Issi.g:r.t a portion of its slime with-
`out the consent of the other co-owner.
`
`Where a patent has been assigtted prior to litigation and only the as-
`signor is party to Ilse litigation. not the ussigtmts.
`t.l.1t: assignor may be
`awarded datrttagcs but not the equitable remedies of prttfits or an irr-
`junction. An assignment made during the litigation may not carry with
`it the tight to claim arty rlattragcs that rnight be accrtrittg to a former
`owner. The point. however. has not l;Io'en fully litigated. It has been
`suggested that an tlssigtnncnl. nnrde for Ihe purpose of fostering litiga-
`tion. may constinttc an alntse of process for which relief tmrler section
`{S5 of the PtI'l‘t”lH‘ Act may be sought. however. a simple assigiment
`cannot. in itself. give rise to claim for cltamper-ty or mainterrance.
`
`The Fade.I'Hl Corn‘! of Appeal on a pnelirttittary issue ltas held that an
`assigntnent of patent rights. without any showing that there was an
`intention to lessen competition unduly. or any rnatter beyond the as-
`signment may be contrary to the Carrrpettriarr Act. The fact that an as-
`signor did not take an action for infiirrgernent is no defence to anttclion
`taken by an assignee. At cornntorr law a right in tort may not be as-
`sigted, therefore an assignment of a patent even with words purporting
`to rtssigtt any claim to past tlatuagca, does not convey any right to clttitn
`damages. I-lowever. if the inftingetnent occurs. in Quebec, then claims
`for past nrfringetrrent would appear to be assignable. The Federal Court
`may order that any entry as to title to a patent be varied or expunged.
`However. there must be first in existence a patent or patent application.
`The Federal Court has trojtuisdietiotl to ltear matters sitttply as to enti-
`tlement to an :t55ig:t.n.t1er1l of a patent. The Federal (‘out has the exclu-
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`Surrs 900
`45 St—:or=t>r\t:n A'\T:. E.-rs?
`TCIRONIU. ON-raaro
`CANADA. MEN SW9
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