Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA449016
`ESTTA Tracking number:
`12/30/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054551
`Plaintiff
`Andrey Pinsky
`ANDREY PINSKY
`PINSKY LAW
`45 SHEPPARD AVE EAST SUITE 900
`TORONTO, ON M2N 5W9
`CANADA
`andrey@pinskylaw.ca
`Other Motions/Papers
`Andrey Pinsky
`andrey@pinskylaw.ca
`/Andrey Pinsky/
`12/30/2011
`2011-12-30 (Declaration of Petitioner dated 2011-12-29).pdf ( 97 pages
`)(4211611 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of mark Registration No. 3981394
`For the mark:
`KONCEPT
`
`Date of First Use:
`Date of Registration:
`
`June 12, 2010
`June 21, 2011
`
`ANDREY PINSKY,
`
`Petitioner,
`
`V.
`
`DOUGLAS BURDA
`
`Re gistrant.
`
`Cancellation No. 92054551
`
`DECLARATION OF ANDREY PINSKY
`
`I, Andrey Pinsky, of Toronto, Ontario, Canada, HEREBY DECLARE THAT:
`
`1.
`
`I am the Petitioner in this cancellation proceeding. Therefore, I have knowledge
`
`of matters to which I hereafter depose except where I expressly state that my
`
`knowledge is based on information and belief.
`
`In such circumstances I will
`
`identify the basis of my information and belief.
`
`2.
`
`I am an intellectual property and business lawyer licensed to practice in Ontario,
`
`Canada.
`
`I am admitted to practice before Canadian Intellectual Property Office
`
`and the United States Patent and Trademark Office (USPTO).
`
`I provide my
`
`Page 1 of 9
`
`

`
`intellectual property and business law services to residents of Canada, to residents
`
`of the United States of America, and to international clients.
`
`Since January 27, 2010,
`
`I have been advertising my intellectual property and
`
`business law services in the United States of America via my newsletter titled
`
`CONCEPT LAW. I used the newsletter to demonstrate my expertise in Canadian
`
`intellectual property and business law and to advertise and offer my intellectual
`
`property and business law services to the residents of the United States of
`
`America in association with the trademark CONCEPT LAW. I have attached to
`
`this Declaration (Exhibit
`
`1
`
`through Exhibit 9) documents that demonstrate
`
`samples of advertisements distributed in association with the trademark
`
`CONCEPT LAW and that also demonstrate the date of first use (January 27,
`
`2010) of the trademark CONCEPT LAW in the United States of America.
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit4
`
`Exhibit5
`
`Copy of the advertisement of legal services distributed in the United
`States of America in January 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in February 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in March 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of the advertisement of legal services distributed in the United
`States of America in April 2010 in association with the trademark
`CONCEPT LAW.
`
`Copy of an announcement email accompanying advertisement of
`legal services in the United States of America in association with the
`
`Page 2 of 9
`
`

`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`trademark CONCEPT LAW. The email provided a hyperlink back to
`the website www.pinskylaw.ca.
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.archive.org and www.wa1backmachine.com on
`February 11, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`Copy of the page titled News of the website www.pinskylaw.ca
`archived by www.archive.org and www.waybackmachine.com on
`April 12, 2010, showing a sample of the CONCEPT LAW trademark.
`
`Copy of the page titled Sitemap of the website www.pinsl<ylaw.ca
`archived by www.archiVe.org and www.waybackmachine.com on
`February 11, 2010, showing a sample of the CONCEPT LAW
`trademark.
`
`in
`to attorney Reggie Borkum on January 25, 2010,
`Email sent
`relation to legal services provided to his client and copies of
`advertisement of legal
`services
`sent
`to him and his client
`in
`association with the trademark CONCEPT LAW.
`
`4.
`
`I clearly marked CONCEPT LAW as my trademark in the advertisements of legal
`
`services distributed in the United States of America and in the emails with which
`
`the advertisements were distributed.
`
`1 used the trademark CONCEPT LAW to
`
`identify my intellectual property and business law services offered, distributed,
`
`and sold to the residents of the United States of America.
`
`5.
`
`I used the trademark CONCEPT LAW in association with advertisement,
`
`offering, and sale of my intellectual property and business law services in the
`
`form exhibited in the samples below:
`
`Page 3 of 9
`
`

`
`CONCEPT LAW TM
`
`c°“cEP-E :0;
`
`6.
`
`Between January 27, 2010 and June ll, 2010, I sold my intellectual property and
`
`business law services in association with the trademark CONCEPT LAW to the
`
`residents of the United States of America.
`
`7.
`
`Since January 27, 2010, and to date, on a continuous basis, I have been adverting,
`
`offering, and selling my intellectual property and business law services in
`
`association with the trademark CONCEPT LAW to the residents of the United
`
`States of America.
`
`8.
`
`I have attached to this Declaration affidavits and declarations (Exhibit 10 through
`
`Exhibit 25) provided by the United States of America patent and trademark
`
`attorneys, which evidence my date of first use (January 27, 2010) of the
`
`trademark CONCEPT LAW in the United States of America and which support
`
`my Petition to Cancel registration of the trademark KONCEPT (Registration No.
`
`3981394). All declarations and all affidavits listed below will be filed with the
`
`Trademark Trial and Appeal Board separately from my declaration.
`
`Exhibit 10
`
`Declaration of Elliot C. Alderman, copyright and trademark attorney
`and partner of Alderman Law, Washington, DC. Telephone number
`(202)973-0188.
`
`Page 4 of 9
`
`

`
`Exhibit 1 1
`
`Exhibit 12
`
`Exhibit 13
`
`Exhibit 14
`
`Exhibit 15
`
`Exhibit 16
`
`Exhibit 17
`
`Exhibit 18
`
`Exhibit 19
`
`Exhibit 20
`
`Exhibit 21
`
`Exhibit 22
`
`Affidavit of Grady K. Bergen, patent and trademark attorney and
`partner of Griggs Bergen LLP, Dallas, TX. Telephone number (214)
`665-9568.
`
`Declaration of D. Whitlow Bivens, intellectual property attorney and
`partner of Musick Peeler, San Diego, CA. Telephone number (619)
`525-2553.
`
`Affidavit of William M. Borchard, intellectual property attorney and
`partner of Cowan, Liebowitz, Latman, New York, NY. Telephone
`number (212) 790-9290.
`
`Affidavit of Jonathan M. D’Silva, patent and trademark attorney and
`associate of law firm MacDonald Illig, Erie, PA. Telephone number
`(814) 870-7715.
`
`Affidavit of Aaron A. Fishman, patent and trademark attorney and
`partner of law firm Pearne Gordon LLP, Cleveland, OH. Telephone
`number (216) 579-1700.
`
`Affidavit of Thomas D. Foster, patent and trademark attorney and
`president of law firm Foster & Associates, San Diego, CA. Telephone
`number (858) 922-2170.
`
`Affidavit of Richard J. Gurak, patent and trademark attorney and
`partner of law firm Husch Blackwell LLP, Chicago, IL. Telephone
`number (312) 526-1574.
`
`Affidavit of Erik J. Heels, patent and trademark attorney and partner
`of law firm Clock Tower Law Group, Maynard, MA. Telephone
`number (978) 823-0008.
`
`Affidavit of Scott H. Kaliko, patent and trademark attorney and
`partner of law firm Kaliko & Associates LLC, Ramsey, NJ.
`Telephone number (201) 962-3570.
`
`Affidavit of Marvin H. Kleinberg, patent and trademark attorney and
`partner of law firm Kleinberg & Lerner LLP, Los Angeles, CA.
`Telephone number (310) 557-1511 x 3017.
`
`Declaration of Bert P. Krages H, patent and trademark attorney
`practicing as a sole practitioner, Portland, OR. Telephone number
`(503) 597-2525.
`
`Affidavit of Mark H. Miller, patent and trademark attorney and
`partner of law firm Jackson Walker LLP, San Antonio, TX.
`
`Page 5 of 9
`
`

`
`Exhibit 23
`
`Exhibit 24
`
`Exhibit 25
`
`Telephone number (210) 978-7751.
`
`Affidavit of James J. Murphy, patent and trademark attorney and
`counsel
`to law firm Thompson Knight, Dallas, TX. Telephone
`number (214) 969-1749.
`
`Affidavit of Joel D. Skinner, patent and trademark attorney and
`member of law firm Skinner & Associates, Hudson, WI. Telephone
`number (715) 386-5800.
`
`Affidavit of Miguel Villarreal Jr., patent and trademark attorney and
`member of law firm Gunn, Lee & Cave P.C., San Antonio, TX.
`Telephone number (210) 886-9500.
`
`9.
`
`1 have attached to this Declaration a copy of my letter to Douglas Burda (Exhibit
`
`26), the Registrant in the current cancellation proceeding, in which I advised Mr.
`
`Burda not to register his trademark KONCEPT (Registration No. 3981394). I sent
`
`my letter to Mr. Burda on June 15, 2011, six days prior to registration of his
`
`trademark. I also sent a copy of my letter to Mr. Burda to Ms. Caryn Glasser, the
`
`attorney in charge of Mr. Burda’s trademark application at the USPTO (Exhibit
`
`27).
`
`Exhibit 26
`
`Exhibit 27
`
`Letter dated June 15, 2011, sent to Douglas Burda, the Registrant in
`the current cancellation proceeding, in respect of his application for
`the trademark KONCEPT.
`
`Letter dated June 15, 2011, sent to Caryn Glasser, the attorney in
`charge of Mr. Burda’s trademark application at
`the USPTO,
`in
`respect of Douglas Burda’s application for the trademark KONCEPT.
`
`10.
`
`1 have attached to this Declaration a printout copy of the office action (Exhibit 28)
`
`issued by Mr. Frank Lattuca, attorney at the USPTO, in respect of a trademark
`
`application for
`
`the trademark THE CONCEPT LAW GROUP.
`
`It
`
`is my
`
`information and belief, based on review of the USPTO website, that in the office
`
`Page 6 of 9
`
`

`
`action, Mr. Lattuca advised the applicant that the trademark THE CONCEPT
`
`LAW GROUP would not be allowed due to likelihood of confusion with the
`
`pending application for Mr. Burda’s trademark KONCEPT. I have also attached a
`
`printout copy of Notice of Abandonment (Exhibit 29) issued in respect of the
`
`trademark THE CONCEPT LAW GROUP by the USPTO.
`
`Exhibit 28
`
`Exhibit 29
`
`Copy of the office action issued by Frank J. Lattuca, attorney at the
`USPTO, on May 3, 2011, in respect of trademark application for the
`trademark
`THE
`CONCEPT
`LAW GROUP
`(Application
`No.85230890).
`
`Copy of Notice of Abandonment issued by the USPTO on November
`29, 2011, in respect of trademark application for the trademark THE
`CONCEPT LAW GROUP (Application No.85230890).
`
`11.
`
`I
`
`have
`
`attached to
`
`this Declaration a printout
`
`copy of
`
`the website
`
`www.pandalawf1rm.com and trademark PANDA & Design (Exhibit 30). Based
`
`on the information provided on the website, it is my belief that Panda Law Firm is
`
`located in Las Vegas, Nevada, and is providing bankruptcy related legal services.
`
`Based on the information provided on the website www.pandalaw1irm.com, it is
`
`my belief that the attorneys of the law firm are Xenophon M. Peters, Judah
`
`Zakalik, and Jennifer Rigdon. Based on the information obtained from the
`
`website,
`
`the Panda Law Firm operated its website wwwpandalawform.com at
`
`least as early as May 27, 2010.
`
`12.
`
`I have attached to this Declaration a printout copy of the trademark registration
`
`issued by the U SPTO to Douglas Burda (Exhibit 31), the Registrant in the current
`
`cancellation proceeding,
`
`in respect of the trademark Panda which upon
`
`Page 7 of 9
`
`

`
`information and belief, based on my review of the USPTO website, Mr. Burda
`
`registered in his own name. Mr. Burda declared March 18, 2011, as the date of
`
`first use of his trademark. Based on my review of the information on the Panda
`
`Law Firm’s website www.pandalawfirm.com, it is my belief that l\/lr. Burda never
`
`had any affiliation with the Panda Law Firm.
`
`Exhibit 30
`
`Exhibit 31
`
`Copy of the website www.pandalawf1rm.com and trademark PANDA
`& Design. The law firm is located in Las Vegas, Nevada, and is
`providing bankruptcy legal services. The attorneys of the firm are
`Xenophon M. Peters, Judah Zakalik, and Jennifer Rigdon. Operated
`as early as May 27, 2010.
`
`Copy of trademark registration (No. 4041945) for the trademark
`Panda
`issued to Douglas Burda, Respondent
`in
`the
`current
`cancellation proceeding, in October 2011. Date of first use claimed
`by Douglas Burda was March 18, 2011.
`
`13.
`
`I have included in this Declaration a link to YouTube videos advertising legal
`
`services provided by the Panda Law Firm in association with the trademark
`
`PANDA (littp://www.youtube.com/watch?v=DzJmg3rLufw). Based
`
`on my
`
`review of the YouTube website, it is my belief that the videos were uploaded on
`
`YouTube on August 24, 2010, that is seven months prior to March 18, 2011, the
`
`date of the first use declared by Douglas Burda for his trademark Panda.
`
`1 have
`
`also attached to this Declaration printouts of screenshot of the YouTube videos
`
`uploaded by the Panda Law Firm on August 24, 2010 (Exhibits 32 and Exhibit
`
`33), demonstrating advertisement of its legal services in association with the
`
`trademark PANDA.
`
`Exhibit 32
`
`Printout of a screenshot of video advertising Panda Law Firm legal
`services in association with the trademark PANDA.
`
`Exhibit 33
`
`Printout of a screenshot of video advertising Panda Law Firm legal
`
`Page 8 of 9
`
`

`
`services in association with the trademark PANDA.
`
`14.
`
`Based on the abovementioned information,
`
`it
`
`is my belief that Douglas Burda
`
`prior to flinging of his trademark application for the trademark Panda had, or, as a
`
`trademark lawyer, ought
`
`to have, knowledge that
`
`the Panda Law Firm was
`
`advertising, offering, and selling its legal services in Las Vegas in association
`
`with the trademark PANDA long before Douglas Burda adopted his trademark
`
`Panda. It is also my belief, that Douglas Burda willfully and knowingly mislead,
`
`deceived, and defrauded the USPTO by applying for his trademark Panda and
`
`registering it with the USPTO, as he also did in the case of his application for and
`
`registration of the trademark KONCEPT.
`
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`Andrey Pinsky
`
`Date
`
`Page 9 of 9
`
`

`
`THIS IS EXHIBIT *1’ TO THE DECLARATION
`
`OF ANDREY PINSKY OF TORONTO, ONTARIO, CANADA
`
`

`
`?TN%E{¥ LAW
`
`Business 8* [nie//ec'Iz(a/ Property Law
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`CANADIAN NOVELTY AND OBVIOUSNESS STANDARDS
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`Canadian St-aii(lai'(I of Novelty
`
`By statute, Patent Act. R.S.t' T985. c. P-4. as amended R.S.C.
`I985. c. 33. s. 28 2. no patent iiia_v be valid it‘:
`
`I.
`
`2.
`
`3.
`
`4.
`
`The subject matter was disclosed in an application filed by a
`third person which has a “liliiig date" prior to the “claim date“
`ol‘ the application in question;
`The subject matter was disclosed in an application filed by a
`third party after the "claim date“ but has claimed a “filing
`date“ before the claim date by reason of conventional priority;
`The subject matter \vas disclosed in an application liled by a
`third party before the “claim date“;
`The subject matter was disclosed in an application filed by the
`applicant, or someone deriving knowledge from the applicant,
`more than one year before the filing date,
`in such a manner
`that it became available to the public.
`
`The requirements 1 and 2 above create a first to file system in Can-
`ada. wliercby the first applicant. or one claiming earliest coiiveii-
`tion priority. will get the patent. Applicatioiis will be made avail-
`able lior public inspection 18 months after filing, thus permitting a
`subsequent applicant the opportunity to consider what disclosures
`are made by a prior application and to attempt to make such dis-
`tinctions zi may be necessary.
`
`The requirements 3 and 4 above establish a principle ol‘ absolute
`novelty. /\ public disclosure of the invention by a third party. who
`has not derived it from the applicant at any time prior to the tiling
`date (or deemed tiling date it‘ the application claims convention
`priority). will
`invalidate the patent. whereas the applicant has a
`grace period of‘ one year prior to the filing date during which pe-
`riod the applicant. or someone deriving the information form the
`applicant. may make a public disclosure.
`
`Pursuant to s. 28.2 of the Patent /\ct. a person is not entitled to a
`patent itta) the invention was known or used by others in Canada,
`or patented or described in a printed publication in Canada or a
`loreign country. before the invention thereof by the applicant for
`patent. To prove invalidity under s. 28.2 of the Patent Act. a clial—
`lenger must show
`9'
`'
`J " j‘ ’
`)
`’
`'
`'
`'
`i
`
`
`
`
`The Supreme Court of Canada in a decision given on November 6.
`2008.
`in the case .~lpoIe.\' Inc. v.
`.S‘anofi—_S‘Vnf/ie/abo Canada Inc.
`[2008] S.C..l. No. 63, gave throtigli consideration of the issue of
`novelty which. with appropriate adjustments as to whether one
`looks at prior patents. printed publications and Canadian uses or
`sales. or simply at disclosures. can be said to be applicable to all
`issues ofnovelty. This requires that the prior material both disclose
`and enable the claimed invention wherein two questions intist be
`answered:
`
`I. What constitutes disclosure at
`iiovelty‘?
`How much trial and error is permitted in respect oli what
`disclosed‘?
`
`l\)
`
`the first stage ol‘ the test for
`
`is
`
`in mind that. if the claim is disclosed to special
`lt intist be kept
`advaiitages that a claimed iiivciition possesses. the prior disclosure
`must be read so as to determine whether that special advantage
`would have been disclosed to a person skilled iti
`the art without
`trial or error.
`ll‘ trial and error or experimentation is required, the
`
`second question is how much. A iion—exliaustive test has been pro-
`posed by the Supreme Court of Canada in .—lpoIe.\‘ Inc: v. St/iw/‘i-
`.S:l'l7f/76'/£lb() Cumidu Inc. [2008] S.C..l. No.
`()3.
`to be applied and
`adjusted according to evidence.
`
`1.
`
`2.
`
`3.
`
`4.
`
`Ennoblenient is to be assessed having regard to the prior pat-
`ent as wliole. including the specilicatioii and the claims:
`The skilled person may use his or her common general knowl-
`edge to supplement information contained in the prior patent;
`The prior patent must provide enough inforiiiation to allow
`the subsequently claimed iiiveiition to be perlortned without
`undue burden:
`
`Obvious errors or omissions in the prior art will not prevent
`enableineiit il‘i'easoiiablc skill and knowledge in the art could
`readily correct the error or lind what was omitted.
`
`Canadian Standard of Obviousiiess
`
`s. 28.3. liiveiition must not be obvious — The subject matter deliiied
`by a claim in an application for a patent in Canada must be subject-
`mattci‘ that would not have been obvious on the "claim date“ to a
`person skilled in the art or science to which it pertains, having re-
`gard to:
`
`(ii)
`
`iiiloriiiatioii disclosed more than one year bclore the "filing
`date“ by the applicant. or by a person who obtained knowl-
`edge. directly or indirectly from the applicant in such a main-
`iier that
`the information became available to the public in
`Canada or elsewliere: and
`
`(b)
`
`information disclosed before the "claim date“ by a person not
`mentioned in paragraph (a) in such a manner that the informa-
`tion became available to the public in Cziiizidit or elsewhere.
`
`The Supreme Court of‘ Canada in .~lpoIe.\' Inc. v. Sana/’i-.\fi‘nl/re/ubu
`Canada Inc. T2008} S.C.J. No. 63. November 6. 2008. has set forth
`the following approach to the issue ofobviotisiicss:
`
`l(by).ldentify the "notional person skilled in the art“;
`l(b).ldentify the relevant common general knowledge of
`person:
`Identify the inventive concept of the claim in question or.
`that cannot readily be done. construe it;
`Identify what.
`if any differences exist between the matter
`cited as forniing part of the “state of the art“ and the inventive
`concept ofthe claim or the claim as construed;
`Viewed \vitliout any knowledge oll the alleged invention as
`claimed, do those dil‘l‘crences constitute steps which would
`have been obvious to the person skilled in the art or do they
`require any degree of‘ inveiitioiii’
`
`that
`
`if‘
`
`2.
`
`3.
`
`4.
`
`lfan "obvious to try” test is warraiited. then the Court sliotild apply
`a number of factors. including as non-exliaustive list"
`
`l.
`
`is it more or less sell‘—evideiit that what is being tried ought to
`work‘? Are there a liiiite nuinber ofidentilied predictable solu-
`tions known to persons skilled in the art‘?
`2. What
`is the extent. nature and amount ol‘ ellort required to
`achieve the iiiventioii‘.’
`
`3.
`
`ls there a motive prov ided in the prior art to find the solution
`the patent addresses.’
`
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`FILING A CANADIAN TRADEMARK APPLICATION
`
`Filing Procedure
`
`Registration is obtained by the filing of an application in proper
`form and submitting the appropriate fee. No application is
`awarded a frlirig date until the fee is paid. Each application must
`only refer to one trtrdernark. /\n application is next searched. and
`then examined by examiners in the Trademark Office. Applica-
`tions arc examined in chronological order of filing date, unless an
`applicant requests and the Office agrees to expedite. lfapproved.
`the application is advertised for opposition and. if unopposed or
`not successfully opposed.
`the trademark is registered.
`It
`is un-
`usual. but not unknown. that more than one application may be
`filed to register the satire trademar'k.
`
`An application to register a trademark must be filed by the appli-
`cant or a duly qualified trademark agent acting on the applicarrfs
`behalf.
`If the applicant is not a Canadian resident. a Canadian
`person or firm must be nominated to receive all correspondence
`and service of legal papers in respect of the application. The ap-
`plication is to be drafted in accordance with a form published by
`the Registrar. or in any other form so long as the same infor'ma-
`tion is included therein. The format of the application is governed
`by the Tr‘adernar‘k Regulations. The application can contain any
`number of wares and/or services. but cannot attempt
`to cover
`more than one trademark. or format of the trademark. contrary to
`the practices in some other countries. The Trademarks Office
`publishes a ll/amt‘ cmcl Se/‘v/'ce.s'
`.l/[IIllI(l/.' User Guide which out-
`lines the policy ofthe Office with examples as to acceptable ways
`in \v|rich wares and services may be expressed in an application.
`The application should be filed along with a prescribed filing fee.
`
`All applications are given an initial examination by the Formali-
`ties Section to ensure that the form and content are correct. at
`which time an application number and filing date being the actual
`date of filing. are assigned. Thereafter. the file is open for public
`inspection and will be examined by an examiner in the Trade-
`mark Uffice. Accelerated examination of tr‘adernar‘k applications
`may be possible is a proper request
`is made to the Trademark
`Office outlining the facts that would justify advancement. Cur‘-
`rently. because of the large backlog in the Trademark Office. it is
`diffictrlt to convince the Office to expedite an application. absent
`possible litigation and/or domain name issues.
`
`The examination by the 'l‘r‘ademark Office is first directed to en-
`sure compliance with the formal requirements as to the applica-
`tion. then the substance ofthe application is examined as to regis-
`trability of the tr'ademar'k and as to confusion with any other co-
`pending application. The examiner. ifobjections are to be raised.
`will correspond with the applicant or his or her agent. who will be
`gi\cn an opportunity to make one or more written responses. The
`examiner will set a deadline to file a response. If no response is
`provided.
`the examiner can consider the tratlernark to be aban-
`cloned.
`
`lfthere are no objections. or if they are overcome. the application
`will be advertised in the Truc/en):/r/t Journal for opposition by
`any interested party and. if trnopposed or unsuccessfully opposed.
`be allowed for registration and subsequently registered if the ap-
`plication is completed by fulfilling the technical requirements of
`the Act. If the examiner refuses to allow the application to be
`advertised. the applicant may ask for a review of the decision by
`the Registrar of Trademarks. who may also refuse to allow the
`trademark to be advertised. lfthe Registrar docs refuse. an appeal
`lies to the Federal Court. In cases where there is doubt. the regis-
`trar may give notice to the owner of a registered trademark. with
`which the application may be alleged to be confusing. of his in-
`tent to advertise in case such owner‘ may wish to oppose. Allow-
`ance of an application for advertisernent does not indicate that the
`Registrar has decided that the trademark is r'egistr'able, but rather
`that he is not satisfied that it is not rcgistrable.
`
`A final fee is payable upon the mark being allowed for r'egistra-
`tion. In addition. if the application is based upon proposed use. a
`declaration attesting to commencement of use must be filed be-
`fore the application will be processcd to registration.
`in that re-
`gard. the Trademarks Office issued a practice notice in l998 sig-
`nalling a significant change in the ability of an applicant to obtain
`extensions of time to file a declaration of use. The Tr‘ademar‘ks
`Office does not send out a default notice for failure to file a decla-
`ration of use.
`
`Form of Application
`
`/\n application to register a trademark rntrst be in the prescribed
`form which is required to include the following:
`
`(a)
`(b)
`
`(C)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`(h)
`
`(i)
`
`Full and proper name ofthe applicant:
`The trademark. and in the case where the trademark is a
`design. a drawing ofthe design in the proper format;
`A statement in ordinary commercial terms ofthe wares or
`services:
`In the case of application based on use in Canada the date
`of first use:
`
`In the case of an application based on making known in
`Canada the date on which the trademark was first made
`known;
`
`In the case an application based on an application (which
`matures into a registration) or a registration. and use in a
`foreign country. particulars thereof;
`In the case of an application based on proposed use in
`Canada. a statement that the applicant intends to use the
`mark in Canada:
`
`A statement that the applicant is satisfied that he is enti-
`tled to use the tr‘ademar'l\'
`in Canada in association with
`the wares or ser\ ices described: and
`
`In the case of certification mark. the standards defined by
`the applicant are required.
`
`All correspondence to the Office in respect of the application
`shall include the name of the applicant. the application number. if
`one has been assigned. and the trademark. The Registrar requires
`the applicant to provide a translation into English and French of
`any words in any other language appearing in the trademark. The
`Registrar requires a trrrnsliteration of matter expressed in charac-
`ters. other than the Latin characters or numerals. into Latin char-
`acters or Arabic numerals as the case may be.
`
`In the case where the applicant's trademark agent does not reside
`in Canada. an appointment of an associate agent who is resident
`in Canada. as a r‘epr‘esentative for service in Canada. mrrst be in-
`cluded.
`In appropriate cases. a claim to priority based upon a
`previously filed application in a country of the Union may be
`tirade. This claim usually gives the applicant an effective earlier
`filing date in Canada. It is not a basis for registration itself. Such
`claim should be made at the time ofthe filing of the application
`
`

`
`THIS IS EXHIBIT ‘2’ TO THE DECLARATION
`
`OF ANDREY PINSKY OF TORONTO, ONTARIO, CANADA
`
`

`
`?TN%E<Y EAW
`b’r.rsr'nes.i' 8 /l7f€//eL‘flI(I/ Property Law
`
`CANADIAN PATENT INFRINGEMENT LAW
`
`1. General
`
`it
`The Canadian l’(//en/ .~lt-I does not define infringement. Instead,
`states that any act. which interferes with the ftrll enjoyment of the
`riioriopoly granted to the patentee. is an infringement. The monopoly
`is the exclusive right of making. constructing. using, vending and
`importing the invention. subject
`to adjudication. The question of
`infringement is a mixed question of fact and law. The construction
`and scope of the patent is a matter of law. Whether the defendant‘s
`activities fall \vithin the scope of the patent is a question of fact. On
`appeal. the standard of review is that of palpable and overriding er-
`ror.
`
`2. Construction ofthe Claims
`
`The first task of a Court is to construe the claims. The language in
`which a patentee has cast her claims has been referred as protection
`from trespass — a fence within which she claims and outside of
`which others are free to roam.
`lnfriiigement is defined by reference
`to the claims. not to the specification ofthe preferred embodiment. A
`mere tinding ofsimilarity is iiisuflicient to support a finding of in-
`fringement. There is infringcinent ifthe article includes all the essen-
`tial elements of at least one patent claim‘. the question is essentially
`one of fact. The burden is on the patcntee to prove on the balance of
`probabilities that the infringeinent has occurred.
`
`3. Intention is Immaterial
`
`Intention is not material to finding ofinfringement. To do other\vise
`would destroy the eflicac_\ of a patent because very few people are
`aware of the contents of a patent
`llowever the nature ofthe remedy.
`such as punitive damages. may be affected by whether or not there
`was knowledge and rriterit. Whether or not
`iiifringer has property
`rights in the infringing material is irrelevant -- property ownership is
`not a defence to patent
`iiitriiigeinerit. An alleged infringer cannot
`rely on its own later issued patent as a defence to intringeinent ifit is
`insufficiently different from the patent at issue.
`
`4. Infringement of Iisseritial Elements
`
`The Supreme Cotrr't of Canada in Free l'l"0r/c/ Trtrsr V. Electra Szmle
`Inc. (2000) SCJ No. (>7. 9 CPR (-1"‘) provided instruction concerning
`division
`on
`“litei'al“
`infringement
`and
`infringement of
`the
`"substance“. The Cotirt stated the division is unnecessary provided
`that the Court first properl_v constrired the claims to determine the
`“essential” elements of the claims as intended by the inventor. There
`is a single issue to consider — have the “essential”‘ elements of the
`claims been taken‘? The onus is on the patentee to show that,
`to a
`skilled reader. it claimed feature ofthe invention was obviously sub-
`stitutable. The essential eleinent may be distinguished from a non-
`essential elcinent by asking. as of the date the patent was made pub-
`lie: (l) Would the variant have a material effect on the way the in-
`vention \\or'ks‘.’ lfyes. the variant is outside the claim: (2) Would the
`fact that the variant would ha\e no material effect have been obvious
`as ofthat date‘? (3) As of that date. would the reader skilled in the art
`have understood that strict compliance was intended‘?
`
`The Federal Court of Appeal. prior‘ to the Supreme Court decision in
`Free lforltl '/‘rust. adopted a doctrine ofequiyalence when consider-
`ing infringement. stating that there is equiyalenee when strbstittrting
`device “performs substantially the same way to obtain the same re-
`sult” .-lpu/ex I/re \'. .\/err/r /-r'r).x'/ Cami:/tr //1c. (2000) FCJ N0. 1028.
`8 CPR Hm)
`In considering inlrrngcincnt by taking of the substance
`of an invention. one is considered to liave infringed even if one‘s act
`does not
`in c\'er_v respect fall within the express terms of the claim
`
`— Tr-:i.- t-tlo) 221 — 2600
`
`Sr IITF. 000
`45 Sr ll£l‘l’.-\l‘\D Ave. E.-\ST
`’t"or\or\=’ro, ONT.-xruo
`C,-\N.~\DA, MZN 5\X/9
`
`PINSKY
`lnierictrual Propcrry la .14
`
`l3.»\.\': (410) 221 - Z040
`r
`\\ \\"\V.PlNSKYl ,-\\‘(’.CA
`
`defining the invention. lt does not matter whether one omits a future
`hat is not essential or substitutes an equivalent for it.
`l-lowever. the
`oatentee can resort to a doctrine of equivalency only in respect of a
`eature of an invention not essential to it. An element is essential ifit
`'s required for the device to work as contcinplated and claimed by
`he inventor.
`it
`is non—essential if it may be substituted or omitted
`without having a material effect on either the structure or the opera-
`ion of the invention described in the claims. If it
`is not obvious at
`he date of the patent publication that the substituted member has no
`material effect upon the way the invention works. then there is no
`nfriiigeinent.
`
`5. What is “Use of the Invention”?
`
`Jse has been conside