The Lawyers Weekly - In House Counsel, Spring 2012

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 are registrable.

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,
lawyer

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