Trademarks
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A brand starts with a single mark and can become one of the most valuable assets of your business. Trusting us with your brand is a responsibility we take very seriously. By combining trademark advice with practical business advice, we support your brand management as an essential part of your IP strategy.

With experience handling trademark registration and disputes before both the Canadian and US trademark offices, we have a team of seven registered trademark agents who provide a full range of services:

  • Canadian and US trade-mark screening and selection
  • Practical advice on brand protection
  • Trademark registration including oppositions (unlike many firms, we handle your Canada and US trademarks ourselves)
  • Trademark-watch services
  • Trademark oppositions, infringement prosecution and defence, seizure orders and injunctions
  • Oversee registration of trademarks all over the world through our closely-maintained network, and
  • Advising on strategies for brand protection and competitive intelligence

No matter the size of your business or the industry sector, contact Neil Kathol at nkathol@fieldlaw.com or 403-260-8564 or Laura McFarlane at lmacfarlane@fieldlaw.com or 403-260-8577 to discuss your brand management and trademark needs and get an initial assessment of your IP strategy.

College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449
Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law, 2010 FC 73
Community Credit Union Ltd. v. Canada (Registrar of Trade Marks), 2006 FC 1119
Credit Union Central of Canada v. Community Credit Union Ltd., 2005 CanLII 78195
March 14, 2019
Buzz Kill: Additional Considerations When Advising Clients on Their Cannabis-Related Trademarks
Presentations
Canadian Bar Association - Intellectual Property + Technology Section
March 6, 2019
Beer®: Trademark Protection & Legal Quality Control for the Long Haul
Presentations
Alberta Craft Brewing Convention
December 2018
Pour a Glass of Trademarks
In time for the holidays, this is a tale of competing brands sloshing around the marketplace. Please enjoy responsibly. Diageo North America, Inc. is purveyor of some of the world’s best-known brands of spirits and beer, some of which are probab...
October 2018
#Hashmarks: Can a Hashtag be a Trademark?
The Medium
Through its automatic web of connections, the humble hashtag has been repurposed: it’s now associated with the cachet of internet fame.  In social media platforms the hashtag brings users from one descriptor to thousands of associated result...
October 2018
To Serve and Protect: The Many Reasons for a Trademark Registration
The Medium
A trademark is the consistently used brand identifier of tens of thousands of consumer products and services you regularly see – the Apple “Apple”, the Microsoft “Window”, the Nike “Swoosh”, the Google Chrome, ...
August 2018
Flippin' to the B-Side
Craft Beer Trademarks
In 2015, an Ontario craft brewer, Beau’s All Natural Brewing Company (Beau’s) applied for a trademark for B-SIDE BREWING LABEL, for use in association with Ontario craft beers. The “B-Side Brewing Label” is an innovative promoti...
June 2018
Standing Out: Branding and Trademark Issues for Cannabis Companies
Countdown to Cannabis Legislation
With the anticipation surrounding the upcoming legalization of cannabis in Canada, it comes as no surprise that companies have been quick to take advantage of this budding industry. More than 70 corporations have been issued licenses from Health Canada...
May 2018
Trolls on the Bridge to Your Brand
The Medium
Canada’s Trade-marks Act has been radically amended, with those changes announced by the Canadian government to come into effect in “early 2019”.  But the effect of those upcoming changes for brand owners is already happening, an...
February 2018
Goodbye Floppy Disk, Hello Streaming Video: Trademark Evolution, Part 2
The Medium
Technology certainly evolves. Can a trademark do the same?In the world of intellectual property rights, a registered trademark can live on for a hundred years or more. If you registered a trademark in the 1800s, it could still be valid today. But will ...
June 2017
“I googled it”: Generic Words and Trademark Rights
The Medium
A registered trademark can suffer "genericide" if it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service.In a very interesting decision from the US Ninth Circu...
November 2014
Canada's New Trademark Law and What it Means for Business
The Medium
Through sweeping legislation smuggled in by means of an omnibus budget bill, Canada’s trademark registration regime will be changed more dramatically than at any time in the last 50 years. The changes are giving trademark agen...
May 2014
Mommas, Don’t Let Your Babies Grow Up To Be CDAs
The Problem With Trade Marking Professional Designations and Their Acronyms
We all regularly rely on knowing another person’s qualifications by the letters after their name: C.A., P. Eng., R.N., M.D., etc. But these well­-known acronyms belong to regulated professions – where government legislation control...
February 2014
New Weapons to Combat Counterfeit Products
Brand owners face the ever growing problem of counterfeit products imported into and sold in Canada. Compared to the “real thing”, counterfeit products are often inferior in quality and may even pose a potential health or safety hazard...
November 2013
Getting Your Application Through the USPTO - Expedited Examination Options
The Medium
You’ve developed your new technology, taken care to keep it confidential and are planning to file for patent protection at the US Patent and Trademark Office (USPTO). Everything looks good. Until your patent agent tells you it may be 3 or mo...
June 2013
New Domain Name Deadlines for Trademark Owners
The world’s domain name system is about to expand from 22 gTLDs (generic Top Level Domains, like .com) to over 1,500 gTLDs. The new gTLDs include domain suffixes descriptive of many businesses such as: .construction, .realestate, a...
June 2013
Insane in the Do-main: The New gTLDs and the Trademark Clearinghouse
The Medium
ICANN (the entity that essentially controls the worldwide domain name system) is in the final stages of processing approximately 1,900 applications for new gTLDs (generic Top Level Domains – like ".com") many of which are expe...
March 2013
Trademark Rights: Across the Border and On the Web
The Medium
Here are three concepts that are not new: trade­marks, borders and the internet. But the courts are still trying to work out how to handle the three when they collide, as they did in the case of HomeAway.com, Inc. v. Hrdlicka. In this interest...
April 2012
Intellectual Property Issues in Corporate-Commercial Transactions
The Medium
Winter 2012
Display of a Trade-mark on a Website
TSA Stores Inc. v. Registrar of Trade-marksIn this recent decision, the impugned trademark registrations were registered solely for retail store services. The registered owner had previously used the impugned marks in association with bricks ...
Spring 2011
You Be the Judge: Canadian Trademark Battles
One of the most important steps in the trademark registration process is “Opposition”. Anyone who opposes registration of a trademark may file a Statement of Opposition based on one of the following grounds: the ap...

Textile trademark infringement claim defeated

Our Client: A manufacturer and retailer of textiles for the bedding industry based in Western Canada.
Where we began: Our client was facing a trademark infringement claim for millions of dollars in damages as well as demands that our client stop using the trademark.
Our approach: Neil Kathol argued his client had named its product using ordinary words common to the bedding industry. When the other side stubbornly dug in its heels, Neil created a 17-volume affidavit that documented over 500 references to the industry's use of the words in question. "We put the affidavit on the doorstep of the courthouse for entering into the public realm where, if the matter didn't resolve, all others in the industry also using those words could rely on that same evidence."
The result: The plaintiff agreed to mediation, which reversed the "who-pays-who" dynamic and led to a very favorable outcome for our client. As Neil put it, "A creative, strategic, team approach and hard work meant that our client obtained an outstanding settlement, so favourable that the other side required it be kept confidential lest other competitors find out."