Selected Publications & Presentations

Photo by Marcel van der Sluis

MECC: The Risk of Improper Trade-mark Licensing

     -    article published in Business & The Law, June 1992 issue

 

Recent Amendments to the Canadian Trade-marks Act

 - talk given at the Trademark Law Committee Meeting at the American Intellectual Property Law Association Annual Meeting in Washington, DC in October 1993

 

Trade-mark Oppositions: The Evidentiary Stage

- paper presented at The Canadian Institute conference on Trade-mark Opositions and Litigation held in Toronto, ON in November 1993

 

Post Park Avenue: Relevant Dates in Trade-mark Oppositions Revisited

- paper presented at the 1992 Annual General Meeting of IPIC and subsequently published in 9 C.I.P.R. 207, an IPIC publication

 

Copyright Protection in Canada: The Basics

-  talk presented at the 5th Annual Canadian Meeting & Incentive Travel Symposium in Toronto in August 1995

 

The Elephant, the Mouse, the Trade-marks and their Knell

-   article published in Volume 1, Issue 3, October 1995 of CATA-LAW magazine

 

Trade Dress Protection in Canada

- presented talk on trade dress protection in Canada at meeting of Trademark and Unfair Competition Committee at AIPLA Annual Meeting in Washington, DC in October 1995

 

Protecting the Franchisor’s Intangible Assets

- co-chaired workshop and paper prepared for and included in binder of materials for attendees of Sixth Annual Convention of Canadian Franchise Association in Toronto, ON in November 1995

 

Trade-marks, Trade-names and Internet Related Issues: What’s in a Name?

- presented paper at Third Annual Montebello Solicitors’ Conference of the County of Carleton Law Association in November 1995

 

IP Practice Tips and Trends

- organized and chaired day-long CLE program for CBA National Intellectual Property Section held on June 14, 1996 in Ottawa, ON

 

Commercializing and Protecting Intellectual Property in the Pacific Rim

- organized and chaired afternoon CLE program for CBA National IP Section on August 27, 1996, CBA 1996 Annual Meeting, Vancouver, BC

 

Evidence Required to Obtain and to Maintain Certain Trade-mark Registrations:

     Sections 12(2), 14 and 45

- paper presented at the 1997 Spring Meeting of IPIC in Ottawa, ON

 

Comparative Advertising and the Law of Copyright in Canada - An Overview

- talk presented at luncheon to Chinese Canadian Advertising, Marketing and Media Association on August 14, 1997 in Toronto, ON

 

High Tech - High Stakes! (Intellectual Property Issues in the High Technology Industry)

- co-organized and co-chaired morning CLE program for CBA National IP Section on August 26, 1997, CBA 1997 Annual Meeting, Ottawa, ON

 

Identifying Goods and Services in Trade-mark Applications: International Considerations

- paper presented on September 15, 1997 at The Canadian Institute seminar on International Trade-mark Protection in Toronto, ON

 

Protecting Your Corporate Intangible Assets

- talk presented on October 23, 1997 at Small Business Week - Technology Forum 1997 (sponsored by Business Development Bank of Canada and others) in North York, ON

 

Current Canadian and United States Trade-marks Practice - A Comparative Overview

     (June 13, 1998; June 25, 1999)

-  paper presented on August 19, 1998 at IPIC-McGill Advanced Trade-marks Course

-  paper presented on August 17, 1999 at IPIC-McGill Advanced Trade-marks Course

 

The Debate About Three-dimensional Trade-marks

- paper presented on September 23, 1999 at IPIC AGM (One Day Add-on Seminar)


Intellectual Property Essentials

- participated as organizer and speaker (trade-marks, trade-names and domain names) in afternoon National IP Section CLE program on August 22, 2000, CBA 2000 Annual Conference & Trade Show, Halifax, NS

 

Intellectual Property Law: The Year in Review

- one of three organizers and co-chairs of annual Law Society of Upper Canada program (January 12 and 19, 2001 and several years following until about January 2007)

 

Business Names, Domain Names and Trade-marks: What’s in a Name?

- presentation given on May 9, 2001 at the International Association of Corporation Administrators 2001 Conference in Victoria, BC

 

Current Trade-mark Issues in Protecting and Commercializing Intellectual Property Assets

-  presentation given on May 30, 2001 at Federal Partners in Technology Transfer Conference - Current Practices and Issues in Managing and Exploiting Intellectual Property in Aylmer, Québec

 

The Draft Intellectual Property Security Act Revisited

- commentary (and paper) given on November 16, 2001 at Leveraging Knowledge Assets: Security Interests in Intellectual Property conference in London, Ontario presented by Richard Ivey School of Business, Law Commission of Canada and Faculty of Law, The University of Western Ontario

 paper became Chapter 5 of text, Security Interests in Intellectual Property, Edited by Howard P. Knopf (Toronto: Thomson Carswell, 2002)

 

In-house Expectations of Outside Counsel and Vice Versa

luncheon table topic co-presented on May 19, 2002 at the INTA 124th Annual Meeting in Washington, DC

 

Trademark Administrators Conference 2002 (October 6-9, 2002, Washington, D.C.)

- moderated sessions on International Licensing (Advanced), International Intellectual Property Treaties, and Business Transactions and Due Diligence

 

Registrability Under Section 12(1)(b) [of the Trade-marks Act]

- presentation given on October 28, 2002 (and July 2, 2002, June 18, 2001 and November 1, 2000) to the new examiners at the Canadian Intellectual Property Office – Trade-marks Office about the issue of whether a trade-mark is “clearly descriptive” or “deceptively misdescriptive”

 

The Healthy Tension Between Traditional Trade-mark Laws and their Applicability to the Internet

 presentation given at AIPLA Mid-winter Institute at Marco Island, Florida, January 22-25, 2003

- based on major paper submitted December 2002 to complete LL.M. in e-Business

 

An Intellectual Property Orientation: What Your Clients Need to Know

- presentation given on September 16, 2003 in Halifax, NS at the Law Technology Institute of Dalhousie University

 

Trade-mark Protection in Canada for the Appearance of Pharmaceutical Products:

Get Up and Go

- paper presented on October 13, 2005 at IPIC AGM in Mont Tremblant, QC; subsequently published in C.I.P.R., Vol 23, No. 1, November 2006 at pages 77-98.

 

Contributor to Chapter 4 on Canada of looseleaf publication:  International Pharmaceutical Law and Practice (Matthew Bender & Company, Inc., a member of the LexisNexis Group, 2006)

 

Evidentiary Issues in Opposition and Non-use Cancellation Proceedings in Canada

- paper produced in connection with panel presentation on “NON-USE/NON-SENSE: A Comparative Analysis of Opposition and Cancellation proceedings in the U.S. and Canada,” at INTA Annual Meeting, Toronto, ON, on Tuesday, May 9, 2006

 

Trade-mark Hot Spots

- paper presented on December 6, 2006 in Toronto, ON at OBA CLE program on “IP: The Dangers of Dabbling”

 

Intellectual Property Law Primer:  Focus on Trade-marks: Trade-marks as Business Assets

     (Assignments, Licensing, Security Interests)

-  presentation at LSUC program in Toronto, ON on June 5, 2008 based on Chapter 11 of IP Benchbook on Trade-mark Law (contributing author)

- The IP Benchbook Project produced in 2006-2007 three books on Canadian Patent Law, Trade-mark Law and Copyright Law, available in electronic form to Canadian judges through the National Judicial Institute (“NJI”) and in hard copy form to attendees of continuing legal education programs of the Law Society of Upper Canada (“LSUC”)

- IP Trade-mark Benchbook to be published by Carswell, a Division of Thomson Reuters Canada Limited (2012?)

 

Intellectual Property Issues for Charities

- presentation on June 18, 2008 in Ottawa, ON at Joint CLE program (OBA, CCLA, LSUC and University of Ottawa): A Danger to Dabble – Charity Law Hot Spots

 

Getting the Deal Through – Copyright 2008 and 2009: Law Business Research Ltd., London, UK

- contributing author to chapter on Canada

 

Non-traditional Trade-mark Filings: Global Options for Filing and Protecting

     Non-traditional Marks

- paper and presentation on October 14, 2008 at INTA Trademark Administrators Conference in Arlington, VA

 

The Role of Attitude

- presentation at Women in Law Conference: Confronting the Challenges (Femmes de Carrière en Interaction FCI • CWI Career Women Interaction) on March 24, 2009 in Ottawa, ON

 

Written Arguments: The Do’s and Don’ts; and

Do’s and Don’ts of Oral Advocacy Before the Trade-marks Opposition Board

- IPIC/McGill Summer Course in Intellectual Property: Managing Trade-marks Disputes (formerly The Trade-marks Practitioner)

- papers originally prepared by Elizabeth G. Elliott and John S. Macera, Macera & Jarzyna LLP; updated and presented in Montréal, Québec by Janet M. Fuhrer, Ridout & Maybee LLP – August 12, 2010, August 9, 2011 and August 9, 2012 (scheduled)

 

IPIC 83rd Annual Meeting: Trade-marks Office Roundtable

- moderator of discussion with Trade-marks Office and Opposition Board officials regarding practice developments on September 24, 2009 @2:00 pm in St. John’s, NL

 

IPIC 84th Annual Meeting: Trade-marks Office Roundtable

- moderator of discussion with Trade-marks Office and Opposition Board officials regarding practice developments on October 14, 2010 @2:00 pm in Québec City

- incoming IPIC President

 

Opposition Update: Noteworthy Developments and Practice Tips and Update: IPIC Activities

- presentation on January 20, 2011 at IPIC Kitchener-Waterloo Intellectual Property Group meeting in Waterloo, ON

 

IPIC Council Updates on Recent and Upcoming Changes in IP

- panel presentation on January 20, 2011 at Toronto Intellectual Property Group meeting in Toronto, ON

 

Opposition Update: Noteworthy Developments and Practice Tips and Update: IPIC Activities

- presentation on March 1, 2011 at IP luncheon meeting in Winnipeg, MN

- presentation on March 2, 2011 at IPIC Calgary Informals Group meeting in Calgary, AB

- presentation on March 3, 2011 at IPIC Edmonton Informals Group meeting in Edmonton, AB

- presentation on March 4, 2011 at Vancouver Intellectual Property Group meeting in Vancouver, BC

 

What Every Content Creator Needs to Know about Copyright Protection in Canada

- presentation at Content Strategy Ottawa Meetup on March 14, 2011 in Ottawa ON

- promotional video for session located at: http://www.youtube.com/watch?v=ScDvI8sbvSI

 

The Case for Traditional Knowledge: Forget-me not!

- paper prepared (with Joanna Pitkin of Ridout & Maybee LLP) for and presented at The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) 2011 Annual Conference, April 7, 2011, Yulara, Northern Territory

 

Functionality v. Acquired or Inherent Distinctiveness: Maximizing the Commercial Life of Certain

     Products

- presentation on May 6, 2011 at Chartered Institute of Patent Attorneys meeting in London, UK

 

Opposition Update: Noteworthy Developments and Practice Tips

- presentation on June 16, 2011 at joint IPIC Ottawa Informals Group and Licensing Executives Society (U.S.A. and Canada) meeting in Ottawa, ON

 

The Life Cycle of a Trade-mark: Tips and Tricksand IPIC Update

- presentation on June 21, 2011 at IPIC Halifax Informals Group meeting in Dartmouth, ON

 

A Closer Look at Recent Changes in Canadian and U.S. Oppositions Practice

-       panelist at American Bar Association Section of Intellectual Property Law session on Friday, August 5, 2011 in Toronto, ON

 

IPIC 85th Annual Meeting, September 14-16, 2011, Chicago, IL

- presided over meeting as outgoing IPIC President

- moderator of panel: United States Trademark Office (PTO) & Trademark Trial and Appeal Board (TTAB) Roundtable, Friday, September 16, 2011 @13:45 pm

 

IP Goes Digital – How the Internet Has Changed the Way We Look at IP

- panelist at The Law Society of Upper Canada 16th Annual Intellectual Property Law The Year in Review on January 13, 2012, Ottawa, ON

 

Considerations When Drafting and Negotiating Coexistence Agreements from Both Sides of the Border 

– Panel (March 22, 2012 @ 1:45 pm)

- Trade-mark Co-existence Agreements: To Co-exist or Not – A Canadian Perspective - Paper

- Texas State Bar 25th Annual Intellectual Property Law Course, March 22-23, 2012, Houston, TX