Partner

Stephanie Chong

About

Stephanie Chong practices exclusively in the area of intellectual property law, with an emphasis on the strategic acquisition, management and enforcement of trademark and other IP rights. Stephanie advises entities ranging from small-and medium-sized enterprises to large multi-nationals. She represents clients in proceedings before the Trademarks Opposition Board, as well as the Ontario and Federal Courts. Stephanie is also a registered trademark agent. In addition to her years of experience in private practice, Stephanie also had the opportunity to serve as Interim Counsel, Patents and Trademarks, for one of Canada’s largest pharmaceutical companies.

Stephanie serves in leadership positions in various professional organizations. She was the first racialized person to be elected as President of the Intellectual Property Institute of Canada (IPIC), the leading national organization for IP professionals. Stephanie has been appointed as the sole Canadian member of the inaugural Diversity, Equity and Inclusion Council of the International Trademark Association (INTA). She is frequently invited to speak on various IP topics, and has written many articles and academic papers for both national and international publications including authoring a chapter for a textbook on IP litigation. One of Stephanie’s papers was cited with approval by the Supreme Court of Canada in the Harvard Mouse case, Harvard College v. Canada (Commissioner of Patents), [2004] 4 S.C.R. 45. The results of her research for her Masters of Law degree were published in The Trademark Reporter.

When not practicing law, Stephanie volunteers for various community initiatives and actively mentors young lawyers and law students.

Listed Individual – 2024 World Trademark Review 1000: The World’s Leading Trademark Professionals (Gold Tier: Prosecution & Strategy)

Listed Individual – 2023 World IP Review (WIPR) Global Leaders in Trademarks

Listed Individual – 2023 World Trademark Review 1000: The World’s Leading Trademark Professionals (Gold Tier: Prosecution & Strategy)

Recognized by Lexpert 2023 (Intellectual Property Law)

Experience

Strategic brand management; domestic and international trademark portfolio management; trademark opposition and cancellation proceedings; IP litigation (including trademark litigation); selection and clearance of trademarks; trademark prosecution; trademarks and copyright on the Internet; patent infringement evaluation; IP due diligence, including IP audits.

Intellectual Property Institute of Canada (IPIC) – Past President; Past Chair (inaugural) and current member of Indigenous IP Committee; Past Chair of Continuing Education Committee; Member of Trademark Practice Committee

International Trademark Association (INTA) – Member of DEI Council; Member of Trademarks Office Practice Committee (Madrid Systems Subcommittee)

Canadian Bar Association (CBA) – Member and former Chair of National Intellectual Property Law Section

Federation of Asian Canadian Lawyers – Member

Recognized, 2024 Canadian Legal Lexpert Directory (March 5, 2024)

Recognized, 2024 World Trademark Review 1000: The World’s Leading Trademark Professionals (Gold Tier: Prosecution & Strategy)

Co-Speaker, “Hot Topics in Trademark and IP Protection”, 22nd Annual OBA Franchise Law Conference (Toronto, November 28, 2023)

Attended, International Trademark Association Leadership Meeting (Houston, November 2023)

Recognized, The Best Lawyers In Canada, 2024 Edition, as a leader in Intellectual Property Law

Co-Author, “Franchise Laws and Regulations, Canada 2024”, ICLG.com (October 2023)

Attended, Intellectual Property Institute of Canada Annual Conference (Winnipeg, October 2023)

Speaker, “Recent Topics In Franchise Trademark And Intellectual Property Protection”, Mondaq (May 31, 2023)

Attended, International Trademark Association Annual Meeting (Singapore, May 2023)

Co-Speaker, “Brands on the Run”, Law Society of Ontario Entertainment & Media Law Symposium (May 3, 2023)

Co-Speaker, “Hot Topics in Franchise Trademark and Intellectual Property Protection”, Ontario Bar Association (April 12, 2023)

Co-Author, “Franchise Laws and Regulations, Canada 2023”, ICLG.com (October 2022)

Moderator, “Lessons Towards Understanding how Indigenous Communities Protect Indigenous Knowledge”, Intellectual Property Institute of Canada Annual Conference (Whistler, September 2022)

Attended, Intellectual Property Institute of Canada Annual Conference (Whistler, September 2022)

Co-speaker, “Franchise 101 Stream: Intellectual Property Primer”, 20th Annual OBA Franchise Law Conference (Toronto, December 9, 2021)

Speaker, “Trademarks Overview”, Presentation to Ontario Government Lawyers (Toronto, October 26, 2021)

Quoted, “Indigenous artist calls out U.S. e-commerce site for taking her design for T-shirt”, Victoria Times-Colonist (September 18, 2021)

Speaker, “Trademarks Update”, Law Society of Ontario IP Year in Review (January 20, 2021)

Guest Lecturer, “Filing Trademark Applications in Canada”, McMaster University course in Intellectual Property, Department of Communication Studies and Multimedia (November 4, 2020)

Moderator, “Indigenous IP: Is it Possible to Square the Circle?”, Intellectual Property Institute of Canada Annual Meeting (October 1, 2020)

Elected, President, Intellectual Property Institute of Canada (September 25, 2020)

Co-Speaker, “Canadian Trademark Law & Practice”, Ontario Government Lawyers (Toronto, October 8, 2019)

Elected, Vice President of Intellectual Property Institute of Canada (September 26, 2019)

Attended, Intellectual Property Institute of Canada Annual Meeting (Gatineau, September 25-27, 2019)

Moderator, “The new USPTO Rule for Foreign Applications, Practical Implications”, Intellectual Property Institute of Canada (August 15, 2019)

Attended, International Trademark Association Annual Meeting (Boston, May 18-22, 2019)

Attended, World IP Day Reception, Intellectual Property Institute of Canada (Ottawa, April 9, 2019)

Attended, Information Sharing Workshop on “Recognizing, Promoting and Protecting Traditional Knowledge and Tradtional Cultral Expressions”, Centre for International Governance Innovation and Innovation, Science and Economic Development Canada (Toronto, March 1, 2019)

Co-Speaker, “Introduction to Traditional Knowledge & Traditional Cultural Expressions”, Intellectual Property Institute of Canada Webinar (November 27, 2018)

Attended, Intellectual Trademark Association Leadership Meeting (New Orleans, November 6-9, 2018)

Elected, Secretary, Intellectual Property Institute of Canada (October 12, 2018)

Attended, Intellectual Property Institute of Canada Annual Meeting (Vancouver, October 10-12, 2018)

Attended, International Trademark Association Annual Meeting (Seattle, May 19-23, 2018)

Attended, World IP Day Reception hosted by Intellectual Property Institute of Canada on Parliament Hill (Ottawa, April 24, 2018)

Co-Speaker, “IP Without Tears: An Intellectual Property Law Update for the Uninitiated”, Federation of Asian Canadian Lawyers Annual Conference (Toronto, November 18, 2017)

Attended, Intellectual Trademark Association Leadership Meeting (Washington, November 7-10, 2017)

Elected, Treasurer, Intellectual Property Institute of Canada (October 12, 2017)

Co-Speaker, “Who’s Offended? – A Review of the Laws on Obscene, Scandalous and Immoral Marks in Canada, the US and EU”, Intellectual Property Institute of Canada 91st  Annual Meeting (Niagara Falls, October 11-13, 2017)

Attended, Intellectual Property Institute of Canada Annual Meeting (Niagara Falls, October 11-13, 2017)

Mentioned, “Man who trademarked name of his own county hands it over to council”, The Brandon Sun (August 4, 2017)

Co-speaker, “Action Not Aspiration: Concrete Steps Toward Diversity and Inclusion”, Intellectual Property Institute of Canada Women in IP Networking Group Webinar (June 21, 2017)

Attended, International Trademark Association Annual Meeting (Barcelona, May 20-24, 2017)

Interviewed, “Are interlocutory orders making a comeback in IP?”, Law Times (Vol. 28, No. 11) (March 27, 2017)

Co-speaker, “Tactical Considerations in Bringing Motions before the Federal Court”, Ontario Bar Association program on Intellectual Property Litigation (Toronto, November 22, 2016)

Attended, International Trademark Association Leadership Meeting (Florida, November 15-18, 2016)

Attended, Federation of Asian Canadian Lawyers Annual Conference (Toronto, October 29, 2016)

Attended, Intellectual Property Institute of Canada Annual Meeting (Quebec City, September 28-30, 2016)

Author, “Is Your System Ready? 5 Things a franchisor can do now to prepare for key changes to Canada’s Trademarks Act (plus 1 bonus item to consider for the future)”, The Franchise Voice, Volume 17, Issue 2 (Spring 2016)

Attended, International Trademark Association Annual Meeting (Orlando, May 21-25, 2016)

Author, “Trade-mark Appeals”, chapter in “Intellectual Property Litigation – Forms and Precedents” (LexisNexis, April 2016)

Co-Speaker, “Cross Border Professionalism Issues for every IP Practitioner to Consider”, Law Society of Upper Canada IP Year in Review (Toronto, January 21, 2016)

Attended, Intellectual Property Institute of Canada Annual Meeting (Banff, October 2015)

Attended, International Trademark Association Annual Meeting (San Diego, May 2-6, 2015)

Author, “Changes to the Canadian Trade-marks Act”, Franchise and Distribution, Volume XVII, No. 4, Spring 2015 (Federated Press)

Attended, Canadian Franchise Association National Convention (Niagara Falls, April 12-14, 2015)

Co-speaker, “The Marketing Minefield – Tips, Tricks and Traps for the Unwary”, Canadian Franchise Association Law Day (Toronto, January 29, 2015)

Co-speaker, “Intellectual Property – Tips, Tricks & Traps for the General Practitioner”, Toronto Lawyers Association Nutshell Program (January 27, 2015)

Co-speaker, “Dangers & Opportunities – How Changes to the Trade-marks Act will Affect your Brand”, Canadian Franchise Association Webinar (December 4, 2014)

Moderator, “It’s Official: Prohibited Marks Still Rule” and Chair, Forums and Seminars Committee, Intellectual Property Institute of Canada Annual Meeting (Halifax, October 15-17, 2014)

Attended, International Trademark Association Annual Meeting (Hong Kong, May 2014)

Attended, Canadian Franchise Association National Convention (Niagara Falls, April 2014)

Attended, Canadian Franchise Association Law Day (Toronto, January 2014)

Attended, International Trademark Association Leadership Meeting (Miami, November 13-15, 2013)

Moderator, “Intellectual Property vs. Cultural Property: From Colonization to Co-existence” and Vice Chair, Forums and Seminars Committee, Intellectual Property Institute of Canada Annual Meeting (Gatineau, September 25-27, 2013)

Attended, International Trademark Association Annual Meeting (Dallas, May 4-8, 2013)

Moderator, “Update on European Patent and Trade-marks Laws”, Intellectual Property Institute of Canada Annual Meeting (Vancouver, October 12, 2012)

Moderator, “Brand Expansion in Foreign Markets”, Intellectual Property Institute of Canada Annual Meeting (Vancouver, October 11, 2012)

Moderator, “Helping Your Client Protect its IP”, Canadian Bar Association Canadian Legal Conference (Vancouver, August 14, 2012)

Moderator, “Initial Interest Confusion”, International Trademark Association Annual Meeting (Washington, D.C., May 5, 2012)

Moderator, “Trademarks in a Virtual World”, International Trademark Association Annual Meeting (San Francisco, May 18, 2011)

Moderator, “IP in a Virtual World”, Intellectual Property Institute of Canada Annual General Meeting (Quebec City, October 15, 2010)

Attended, International Trademark Association Annual Meeting (Seattle, May 2009)

Co-speaker, “Intellectual Property for Engineers”, Educational Program Innovations Center (Toronto, December 15, 2008)

Speaker, “Cross-Border Licensing: Key Differences Between Canadian and U.S. Trade-mark and Copyright Law”, Osgoode Professional Development Program – The Intensive Course in Intellectual Property License Agreements (Toronto, June 2, 2008)

Author, “Chalk & Cheese – What’s the Connection?”, Canadian Intellectual Property Review, Vol. 24, No. 1 (June 2008) (an analysis of the Canadian law on trade-mark dilution in view of the Supreme Court of Canada decisions involving VEUVE CLICQUOT and BARBIE)

Attended, International Trademark Association Annual Meeting (Berlin, May 2008)

Speaker, “Communications with Expert Witnesses and Issues of Privilege”, Canadian Bar Association Program on Advocacy Before the Federal Court in Intellectual Property Matters – Expert Witnesses (Ottawa, May 8, 2008)

Co-speaker, “Intellectual Property for Engineers”, Educational Program Innovations Center (Toronto, April 15, 2008)

Speaker, “Intellectual Property for Government Engineers”, Professional Engineers of the Government of Ontario Annual General Meeting (Toronto, April 2, 2008)

Co-speaker, “The Top 10 Things Every Lawyer Should Know about Intellectual Property Law”, Toronto Lawyers Association (Toronto, November 21, 2007)

Speaker, “Solicitors’ Affidavits – The impact and consequences of the Cross-Canada Auto Body case; are there any exceptions?”, Canadian Bar Association Program on Advocacy Before the Federal Court in Intellectual Property Matters – Documentary Evidence (Ottawa, May 17, 2007)

Speaker, “Cross-Border Licensing: Key Differences Between Canadian and U.S. Trade-mark and Copyright Law”, Osgoode Professional Development Program – The Intensive Course in Intellectual Property License Agreements (Toronto, April 19, 2007)

Author, “Top 10 Differences Between Canadian and U.S. Trademark and Copyright Laws”, Canadian International Lawyer, Vol. 7, No. 2 (2007)

Speaker, “Barbie & Bubbly – What the Supreme Court had to say about Famous Trade-marks”, Meeting of the Patent and Trade-mark Association of British Columbia (Vancouver, November 14, 2006)

Speaker, “Chalk & Cheese – What’s the Connection?”, IPIC Annual General Meeting (St. Andrews by the Sea, New Brunswick, September 28, 2006)

Speaker, “Cross-Border Licensing: Key Differences Between Canadian and U.S. Trade-mark and Copyright Law”, Osgoode Professional Development Program – The Intensive Course in Intellectual Property License Agreements (Toronto, May 26, 2006)

Author, “Protection of Famous Trademarks Against Use for Unrelated Goods and Services: A Comparative Analysis of the Law in the United States, the United Kingdom and Canada and Recommendations for Canadian Law Reform”, The Trademark Reporter, Vol. 95, No. 3 (May–June 2005)

Co-speaker, “What Every Engineer Should Know about Intellectual Property”, Professional Engineers of Ontario (Toronto, March 23, 2005)

Contributor to “Position Paper on the Adoption of Markman style Hearings to Federal Court Patent Litigation in Canada”, IPIC Litigation Committee (2005)

Contributor to Canadian position paper, “Punitive Damages as a Contentious Issue of IP Rights”, AIPPI (2005)

Speaker, “Protection of Famous Trademarks”, Infonex Intellectual Property Summit 2003 (Toronto, January 22, 2003)

Speaker, “Recent Developments in Copyright and Trade-marks Law”, IPIC Annual General Meeting (Huntsville, Ontario, October 5, 2002)

Co-speaker, “Websites for the General Practitioner”, Metropolitan Toronto Lawyers Association (Toronto, January 17, 2001)

Contributor, “E-Commerce Law: Legal Compliance in Cyberspace”, Lang Michener (October 2000)

Author, “Trade Marks Case Law Update, or Liquor, Cars, Drugs, and Cigars: Lifestyles of the Beautiful and Famous”, Canadian Intellectual Property Review, Vol. 17 (October 2000)

Speaker, “Trade Marks Case Law Update”, IPIC Spring Meeting (Ottawa, March 21, 2000)

Author, Case Comment on 1267623 Ontario Inc. v. Nexx Online Inc., Canadian International Lawyer, Vol. 3, No. 4 (1999)

Author, “Internet Meta-tags and Trade Mark Issues”, European Intellectual Property Review, Vol. 20, Issue 7 (July 1998)

Speaker, “Trade Marks, Domain Names and the Internet”, Canadian Institute Seminar on International Trade Mark Protection (Toronto, September 15, 1997)

Speaker, “Internet Domain Names and Trade Marks”, AIPPI Canadian Group Annual Meeting (Toronto, November 26, 1996)

Speaker, “A Brief Introduction to Intellectual Property”, Educational Program Innovations Centre Inc. (EPIC) Seminar (Toronto, November 13, 1996)

Author, “The Relevancy of Ethical Concerns in the Patenting of Life Forms”, Canadian Intellectual Property Review, Vol. 10, No. 1 (September 1993); cited by the Supreme Court of Canada in the Harvard Mouse Case, Harvard College v. Canada (Commissioner of Patents), [2004] 4 S.C.R. 45

LL.M. (Intellectual Property Law), Osgoode Hall Law School, 2004
LL.B., University of British Columbia, 1992
B.Sc. (Microbiology), University of Toronto, 1989

Ontario, 1994

English
French

Request consultation

Ready to get started with Hoffer Adler LLP? Get in touch with a member of our team that can help you today.