Office will not register trademarks that
are “clearly” descriptive of the wares or
services associated with the trademark.
On the other hand, trademarks that are
“suggestive” of their wares and services
Here are two classic descriptiveness
cases to help you see the difference between a “suggestive trademark” and one
that is “clearly” descriptive.
In 1978, Wool Bureau of Canada Ltd.
attempted to register the trademark “su-
perwash.” The Registrar of Trademarks
rejected the mark based on descriptive-
ness; Wool Bureau appealed the decision
to the Federal Court, which upheld the
Registrar’s decision, stating: “It seems to
me the ordinary (consumer knows)…
that wool has traditionally been suscep-
tible to shrinkage when the garment is
washed. In my opinion, that notional
person…would conclude that ‘super-
wash’ applied to particular woolen goods,
described a garment that washed…with
little or no resultant shrinkage.”
On the other hand, many years ago, Kel-
logg Co. sought to register the trademark
“Gro-Pup” for use with dog food. The Reg-
istrar of Trademarks rejected that trade-
mark application as being descriptive and
the Exchequer Court reversed the Regis-
trar’s decision, stating: “I do not think that
the word ‘Gro-Pup’ is descriptive of…dog
food; it is at the utmost suggestive of the
result which it is liable to produce.”
Businesses often gravitate toward sug-
gestive trademarks since they sometimes
view them as advertisements in disguise.
However, while suggestive trademarks
are registrable, they are double-edged
swords since they are inherently weak
(due to their suggestiveness) and so are
often granted only a narrower range of
legal protection. The same principle
applies to common words in everyday
use—common words used as trade-
marks can be just as inherently weak.
Invented or coined words, such as the
words Kodak, Xerox or Exxon, are often
given a wider degree of protection because
of their inherent strength, since they are
invented or coined, they have no meaning
and so are not tinged with suggestiveness.
These principles of law were eloquently
articulated by Justice Rand in a classic 1949
Supreme Court decision that remains one
of the most cited cases in trademark law to
this day: “It comes in the end, I think, to no
— Eric Swetsky,
more than this, that where a trader adopts
words in common use for his [trademark],
some risk of confusion is inevitable…The
Court will accept comparatively small differences as sufficient to avert confusion.
[As well], a greater degree of discrimination may fairly be expected from the public
where a [trademark] consists wholly or in
part of words descriptive of the articles to
be sold or the services to be rendered.”
;;;; Walk-away lessons
poration to be important (it is the best
way to formally secure your rights to the
mark, and it is not overly expensive).
Second, prior to filing that application, conduct a trademark availability
search to determine if the trademark is
available for use.
Third, rely on the results of that
search—if the trademark does not appear to be available based on the search
results, move on to another trademark
as the risks to a corporation using a
trademark that is possibly unavailable
are simply not worth it.
There is of course a fourth lesson, the
one provided by the Office Deport case
discussed earlier. It had neglected to register its trademark in Canada until the
company decided to begin operations
here, at which point a competitor with
a similar mark had entered the system.
Each country has its own Trademark
Register, and trademarks must therefore
be registered on a country-by-country
basis. If there is a possibility (even theoretical) that your corporation could do
business outside of Canada, then serious
consideration should be given to registering the mark in those foreign countries as
soon as practical—a foreign trademark
application is far less expensive than attempting to assert rights in the foreign
jurisdiction after the fact. END
Even where in-house counsel lacks an
intimate familiarity with trademark law,
here are three basic rules of thumb to
keep in mind.
First, file a trademark application for a
trademark that is considered by the cor-
Eric Swetsky is a Toronto lawyer
who practices advertising, marketing,
copyright and trademark law. His
website is at www.advertisinglawyer.ca.