1. Trademark Prosecution
Luncheon
March 2014

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

3. A TM Action May Have An Equal And
Opposite Cancellation Reaction
• 9th CA: No independent cause of action for
cancellation of a trademark registration:
– Section 37 of the Lanham Act gives a district
court power to order cancellation of a trademark
registration "in any action involving a registered
mark."
• Cancellation may be sought in federal court
only "if there is already an ongoing action that
involves a registered mark."
• Air Aromatics, LLC v. Victoria's Secret Stores Brand
Management, Inc., Appeal No. 12-55276 (9th Cir. February 28, 2014).

4. You Can’t Phone-In Your Specimen
• TTAB aff’d refusal to register the mark
TSUBAKI: THE CHOICE FOR CHAIN for
"industrial machine parts" - Applicant failed to
provide an acceptable specimen of use.
• Tsubaki submitted six catalogs in which
potential purchasers were invited to call the
company phone number to obtain information
and place an order.
• That was not sufficient to qualify as
acceptable specimens of trademark use.
• In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014)
[precedential].

5. You Write it – You’re Stuck With It
• Clark’s appealed the denial of a PI to enforce a non-
compete against former employee. Smith worked for
Clark’s for ~14 years before joining Ferguson.
• The trial court found the covenant to be overly broad
and restrictive:
– it prevents Smith from working directly or indirectly in
any capacity for any other entity that seeks to solicit
or provide services to any entity that was a customer
of Clark’s during the 14 years Smith worked there.
• Court declined to use the “blue pencil doctrine” –
Clark’s had a fair opportunity to draft a reasonable and
enforceable covenant yet failed to do so.
• Clark's Sales and Service, Inc v. John D. Smith and
Ferguson Enterprises, Inc., 49A02-1306-PL-552