Janet Fuhrer’s Publications & Speaking Engagements

Small Business, Big IP: Intellectual Property Law Issues For the Non-IP Lawyer
-Presentation at CBA-PEI Branch AGM on June 24, 2016

Solicitor-Client Privilege: The State of the Law
IP Refresher for the Solicitor

-Presentations at CCLA 22nd East Region Solicitors Conference 2016 on May 13 and 14, 2016

Round Table on Artificial Intelligence in the Legal Profession
-Participated by Skype on panel of Queen’s law alumni moderated by Professor Arthur Cockfield, Queen’s Law on May 27, 2015

The Winds of Change: Major Amendments to Canada’s Trade-marks Act
-Paper presented at American Intellectual Property Law Spring Meeting 2015 on April 30, 2015, Los Angeles, CA
-Also presented to Toronto Intellectual Property Group on April 15, 2015, Toronto, ON

Update on Trademark Protection Under New gTLD Rollout
-Paper presented at PLI Advanced Trademark Law Annual Review 2015 on March 24, 2015, New York, NY

Trademark Protection and the Franchise
-Paper presented by live webcast on January 23, 2015 for The Commons Institute Program, “220 Minutes on Franchise Law”, Ottawa, ON

The changing landscape of trademarks law and practice
-Article published in Canadian Lawyer Inhouse magazine, June 2014

Protecting Your “.brand” against gTLD Objections Based on String Confusion, Legal Rights, Community Opposition, and Public Interest
Paper presented at American Intellectual Property Law Spring Meeting 2014 on May 16, 2014, Philadelphia, PA

Take a Trip to Nice, Madrid and Singapore
-Presentation to Toronto Intellectual Property Group on March 19, 2014, Toronto, ON

A Canadian approach to combating counterfeits
-Article published in Canadian Lawyer Inhouse magazine, vol. 8, issue 3, June 2013

Practical Strategies for International Coexistence and Consent Agreements Across Borders: United States, Canada and Mexico
-Co-hosted table topic brunch presentation at INTA 135th Annual Meeting on May 5, 2013, Dallas, TX (with panelists at Texas State Bar course mentioned next)

Canadian Trade-mark Benchbook, published by Carswell, a Division of Thomson Reuters Canada Limited (2012)
-Contributing author

Considerations When Drafting and Negotiating Coexistence Agreements from Both Sides of the Border
–Panel (March 22, 2012 at 1:45 pm)

Trade-mark Co-existence Agreements: To Co-exist or Not A Canadian Perspective
-Paper prepared for panel at Texas State Bar 25th Annual Intellectual Property Law Course, March 22-23, 2012, Houston, TX

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

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 at 1:45 pm

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

The Life Cycle of a Trade-mark: Tips and Tricks and IPIC Update
-Presentation on June 21, 2011 at IPIC Halifax Informals Group meeting in Dartmouth, ON

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

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

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
-Also presented at meetings of CBA-Nunavut Branch and CBA-Yukon Branch meetings in November 2012, Iqaluit, NU and Whitehorse, YT

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
-View the promotional video for this session

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

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

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 at 2:00 pm in Québec City
-Incoming IPIC President

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 at 2:00 pm in St. John’s, NL

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

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

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

Getting the Deal Through
–Copyright 2008 and 2009: Law Business Research Ltd., London, UK
-Contributing author to chapter on Canada

Intellectual Property Issues for Charities
-Presentation on June 18, 2008 in Ottawa, ON at Joint CLE program (OBA, CCLA, LSO and University of Ottawa): A Danger to Dabble – Charity Law Hot Spots

Intellectual Property Law Primer: Focus on Trade-marks: Trade-marks as Business Assets (Assignments, Licensing, Security Interests)
-Presentation at LSO 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 Ontario (“LSO”)
-Followed by Canadian Trade-mark Benchbook published by Carswell, a Division of Thomson Reuters Canada Limited (2012)

Trade-mark Hot Spots
-Paper presented on December 6, 2006 in Toronto, ON at OBA CLE program on “IP: The Dangers of Dabbling”

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

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) 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

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

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

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”

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

In-house Expectations of Outside Counsel and Vice Versa
-Co-presented luncheon table topic on May 19, 2002 at the INTA 124th Annual Meeting in Washington, DC

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)

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

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

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)

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

The Debate About Three-dimensional Trade-marks
-Paper presented on September 23, 1999 at IPIC AGM (One Day Add-on Seminar)

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

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

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

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

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

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

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

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

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

Protecting the Franchisor’s Intangible Asset
-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 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

The Elephant, the Mouse, the Trade-marks and their Knell
-Article published in Volume 1, Issue 3, October 1995 of CATA-LAW magazine

Copyright Protection in Canada: The Basics
-Talk presented at the 5th Annual Canadian Meeting & Incentive Travel Symposium in Toronto in August 1995

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

Trade-mark Oppositions: The Evidentiary Stage
-Paper presented at The Canadian Institute conference on Trade-mark Oppositions and Litigation held in Toronto, ON in November 1993

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

zMECC: The Risk of Improper Trade-mark Licensing
-Article published in Business & The Law, June 1992 issue