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Inspiring Tomorrow

Jeremy Ben-David, Founder, Managing Partner

 

It was forty years ago that I first unscrewed the cap of my drafting pen (possibly a Rotring® brand pen) and first touched its tip to the sheet of “pergament” paper positioned securely on my drafting table, on which I was to create my first patent drawing. That was the very beginning of my foray into the world of intellectual property. I have never looked back. Within two years I received my Israeli Patent Attorney license, and within ten years I went solo, hanging up my shingle on the auspicious Hebrew calendar date of “Lag BaOmer”, May 14, 1995. Within a few months, my father, Dr. Stanley Davis, joined forces with me, and I was privileged to work together with him until his passing in January 2010.

 

Based on the above information, you will conclude that we at JMB Davis Ben-David have just marked our 30th year in business. This is indeed a major milestone.

 

There is an ancient Jewish teaching in the “Ethics of the Fathers”, dating back to about 200 C.E., “know from where you came and where you are going”. While I do not consider myself an overly nostalgic person, I also do not believe in ignoring the past. The current series of events in the Middle East teaches us nothing, if not that. History is an integral part of us; it is essentially the anchor of our identity, and only by consideration of history can we more fully appreciate the present. Hopefully, it also inspires us to look forward to “where we are going”. 

 

This applies equally to the professional world as to all other parts of our lives. Over the years we have assisted myriad inventors, businesses, academic and other institutions in securing valuable IP rights, in many countries and in many different fields. This was unquestionably a team effort, spearheaded by our paralegals, our attorneys and agents and, not least, my partners Mike Hammer and Avraham Hermon.

 

In this first newsletter of our 4th decade, I start with a piece based on 25 year old reminiscences from within our file archive. In a more serious vein, Ivan Lipshitz manages to combine domain names, Canadian patriotism, Trump politics, and the thorny question of slogans. There’s certainly nothing nostalgic about any of those topics, especially when rolled into a single article(!)

 

There’s really nothing much more forward looking than children. This month’s podcast is a discussion that took place recently between Avraham and Rinat Hitelman. Rinat is the Co-Founder and Clinical Director of Wide Therapy, an innovative online platform designed to help neurodiverse children practice and master essential life skills. The platform uses personalized digital simulations to prepare children for real-life situations, such as potty training, transitions, and medical checkups.

The More Things Change, the More They Stay the Same

by Jeremy Ben-David, Founder, Managing Partner

I’m reminded of a day some time ago, a short time after we successfully entered the 21st century without suffering from the 2 missing digits at the beginning of the year notation in databases and operating systems built way back in the late 20th century. The affectionately known “Y2K bug” had not caused any of the major catastrophes that so many were worried about as we moved into the year 2000. At that time, the Iconic Twin Towers of the World Trade Center still towered above New York – all 110 floors of them.

 

Our firm, still in its infancy – still relied heavily on archaic things such as paper, snail mail with postage stamps, and faxes. Email had already been going for a number of years, and the internet was just taking its first faltering steps. My go-to browser was Netscape Navigator, acquired by AOL in 1999, the same year that Amazon obtained its One-Click patent, U.S. Patent No. 5,960,411, covering technology allowing customers to make online purchases with a single click, using previously stored payment and shipping information. The main competitor to Netscape was Microsoft’s Internet Explorer. I suspect that, like me, many preferred Netscape because it wasn’t Microsoft. That prejudice has long since been forgotten (by me at least).

 

On that particular day, I found myself wandering into our file archive. These days all such wandering is digital; but back then, our archive was this immense room with wall-to-wall shelves and paper files.  One of our trademark paralegals was entering a docket for an Israeli trademark renewal for a date way ahead in the future.

 

Just as most things were still done manually by writing with a pen or pencil on real paper, which had real holes punched in the margin so that it could be placed in a ring binder, so too was our docketing system; it consisted of preprinted pages, each for a certain period of time, with spaces for entering the relevant file and docket details. Next to each entry, of course, there were spaces for entering the date on which the entry had been made, and the initials of the person making the entry.

Moreover, inherent in that specific docket entry, namely, for a renewal date in 2014, (yes, 14 years(!) after the current renewal) was the state of the Trademark Law in Israel at that time. For in the year 2000, a trademark was initially registered for…

Lessons to Be Learnt – An Occasional Review of Recent UDRP Decisions:

by Ivan Lipshitz, Adv., JMB Davis Ben-David

Political Slogans and Domain Name Abuse: Can a Political Slogan Function as a Trademark for Purposes of Standing in UDRP Proceedings?

 

Jackpine Dynamic Branding Inc. v. Asadallah Kassam

CIIDRC Case No. 24696-CDRP

 

Asserted Trademarks: CANADA IS NOT FOR SALE” and its French equivalent “LE CANADA N’EST PAS À VENDRE” 

Domain Names at Issue: <CANADAISNOTFORSALEHAT.CA>and <CANADANOTFORSALEHATS.CA> (the “disputed domain name”)

Presiding Panelist: Nathalie Dreyfus; Panelists: Neil Brown, Brian Gray 

COMPLAINT DENIED

 

This case is a decision from the Canadian International Internet Dispute Resolution Centre (CIIDRC) under the Canadian Dispute Resolution Policy (“CDRP” or “the Policy “) regarding a domain name dispute between Jackpine Dynamic Branding Inc as Complainant over the two domain names  <CANADAISNOTFORSALEHAT.CA> and <CANADANOTFORSALEHATS.CA> registered by Asadallah Kassam, as registrant. 

 

The CDRP is the equivalent of the Uniform Domain-Name Dispute Resolution Policy ( the “UDRP”) for .ca ccTLD`s with minor variations. 

 

Relevant Facts: The Complainant claimed rights in the common law trademark “CANADA IS NOT FOR SALE” and its French equivalent “LE CANADA N’EST PAS À VENDRE” (together, the “Marks”) in association with hats, apparel, stickers, and signage (the “Goods”) which it created in response to President Trump’s statements to the effect that Canada should become the 51st state of the United States.

 

The Complainant is also the owner of the domain name <canadaisnotforsalehat.com> registered on January 16, 2025, which redirects to the Complainant’s website at https://strongandfreehat.ca/. On the same date, the Complainant filed a Canadian trademark application for “CANADA IS NOT FOR SALE” No. 2374770 in class 25 covering headwear, apparel, and accessories, but it had not been registered by the time the Complaint was filed. 

 

The Complainant alleged that the Registrant, who runs a business in Ontario, that sells merchandise, primarily hats and hoodies, bearing the phrase “CANADA IS NOT FOR SALE” and its French equivalent, was using the disputed domain names <canadaisnotforsalehat.ca> and <canadanotforsalehats.ca> to sell counterfeit versions of Complainant`s Goods. The Complainant claimed that the Registrant’s websites imitated the Complainant’s merchandise and marketing materials, and that this activity had misled consumers into believing there is an affiliation between the parties. 

 

The Panel was of the view that the entirety of the evidence pointed to the fact that the expression, “CANADA IS NOT FOR SALE” has been used by the Complainant as a slogan and exhortation rather than as a trademark. 

 

This case is important as it addresses the question whether a political slogan can function as a trademark for purposes of standing in UDRP proceedings. 

 

A key takeaway from this case is that when deciding to adopt trending political or social slogans as part of your branding strategy, consider if the slogan is capable of acquiring distinctive meaning as a source identifier to claim trademark exclusivity. If not, it cannot function as a trademark in connection with its use on your goods and products despite the popularity of such mark by the broader public and civil society, and you will not obtain exclusivity and trademark protection against third party infringement. As such, it will remain a mere expression  or message supporting a political idea or cause and its use on your product or goods will from a legal perspective be viewed as merely ornamental or decorative.

 

Rinat Hitelman is the Co-Founder of Wide Therapy an online platform that empowers neurodiverse children to practice and master life skills—like potty training, transitions, or medical checkups—by seeing themselves succeed in personalized digital simulations before applying those behaviors in real life.

 

Avraham sat down with Rinat in the offices of JMB Davis Ben-David to discuss how she came up with the idea, how she met her co-founder, got funded, the challenges she has faced, tips for startup founders and much more.

Patents

The JMB Davis Ben-David patent services team helps companies and individuals secure and leverage their patent rights for products in the US, Israel, and globally.

Trademarks

The JMB Davis Ben-David trademark services team works with leading international brands seeking to merchandize their products in the US, Israel and the rest of the world.

Designs

For 25 years, the JMB Davis Ben-David team has successfully assisted clients in registering design patents that protect their original designs for products ranging from medical devices to diamonds. 

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We started JMB Davis Ben-David with one goal in mind: to help our clients navigate the challenges of securing rights to their IP. This includes patents, designs and trademarks.  Since 1995 we have been working with partners around the world so as to secure our clients’ IP rights.  We’re here for you.

Managing Partner
JMB Davis Ben-David