From Maple Leaves to Eagles: How Descriptive Trademarks Differ in Canada and the U.S.

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In almost all jurisdictions, local trademark law will prevent applicants from registering trademarks which clearly describe the associated goods or services along with other inherent registrability issues (which may include merely a surname, failure to function as a source indicator/non-distinctive or geographically descriptive). Although most trademark attorneys are familiar with these prohibitions in their own jurisdiction, seasoned trademark attorneys looking to advise clients with their international portfolios may find it helpful to understand the differences between the examination standards in various countries, especially when providing international filing advice. Nowhere is this distinction clearer than when comparing how descriptive trademarks are treated in the U.S. and Canada: despite being neighbors, these countries have divergent approaches on the interpretation and application of similar prohibitions.

United States

In the U.S. the standard for refusing a mark based on descriptiveness in examination is that the mark merely describes “an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.”¹ This standard is not limited to word marks and may also apply to trademarks comprised of two or more terms (aka combined terms), stylized font, and even design marks.²

Avoiding a Refusal for Descriptiveness

When an attorney opines that a mark may be refused for descriptiveness, one strategy that can avoid this refusal is to add either a design element and/or a stylized font to the proposed trademark. The design element should have a measure of creativity beyond merely a simple shape or illustration of the goods.³ Similarly, any font should also be more than a basic or minimally stylized font.⁴ There is no specific requirement under U.S. law as to the size or proportion of the design accompanying the descriptive wording. For the stylization to preclude a descriptiveness refusal due to the word portion of the mark, the mark in its entirety must create “a separate commercial impression” apart from the word portion of the mark itself.⁵

Receiving a Refusal for Descriptiveness

Even in cases where the mark is refused registration due to descriptiveness, U.S. trademark law has several options to pave the way to a registration.⁶ These include:

1. Submitting legal arguments;
2. Requesting registration based on Acquired Distinctiveness (Section 2(f)); or
3. Requesting registration on the Supplemental Register

A U.S. attorney may employ one or more of these strategies to ultimately secure a trademark registration.

1. Arguing that the mark is Suggestive / Incongruous / a Double Entendre / or a Word Pattern

In many cases, the first line response against a descriptiveness refusal is to present legal arguments against descriptiveness, generally that the mark has a separate commercial meaning apart from its individual or descriptive meaning.⁷ A common argument is that the mark is not descriptive but rather is suggestive. Rather than describing the goods, a suggestive trademark “requires some imagination, thought or perception of the mark as related to the goods.”⁸ Other arguments include incongruity (not in harmony – URBAN SAFARI), double entendre (capable of more than one interpretation – SHEER ELEGANCE), or a word pattern (SMELL REPEL).⁹

2. Making a Claim for Acquired Distinctiveness under Section 2(f) either for the goods/services or in association with related goods

Acquired distinctiveness (a.k.a. secondary meaning) is, in essence, an admission that a trademark is descriptive, but due to long term use that is substantially exclusive and continuous, has ‘acquired’ the ability to be distinguished from the goods/services of others.¹⁰

If an applicant has been using a trademark in U.S. commerce for at least five years, they may request registration on the Principal Register based on a claim of acquired distinctiveness.¹¹ A U.S. Trademark Office Examiner may accept the claim as is, but in some cases may require additional evidence to support the claim (this may depend on how descriptive the trademark is, or on how familiar the Examiner is themselves with the trademark).¹² The supporting material may be in the form of a declaration or affidavit with supporting exhibits. Examples of evidence include an explanation of long-term use, advertising expenditures, third party declarations/affidavits recognizing the mark as a source indicator,¹³ survey evidence, consumer studies, or that the mark is a part of an existing ‘family of marks.’¹⁴

A basic claim of acquired distinctiveness is easy to make, and is in essence, a declaration within the initial application, or in response to an office action.

U.S. law also allows for acquired distinctiveness to extend to related goods, even if the related goods do not have 5 years of use in commerce.¹⁵ In this case, the attorney should present arguments to establish the relatedness of the goods or services.

3. Supplemental Register

A unique feature of the U.S. trademark system is that there are two separate trademark registers. These are the Principal Register, which is a Register for inherently distinctive trademarks, or those that have acquired distinctiveness, and the Supplemental Register for those marks that have not, but are capable of doing so.

For trademarks that cannot meet the requirements for acquired distinctiveness, either because they have not yet secured the requisite five years of use in commerce or because the Examiner maintains that they continue to be descriptive notwithstanding five years of use in commerce, the trademark may be registered on the Supplemental Register.

Securing protection on the Supplemental Register can be done at the outset of filing, or in response to an Office Action. However, to secure registration on the Supplemental Register, U.S.-based trademark applicants must have used the mark in U.S. commerce. Trademarks based on a foreign registration basis (Section 44 (e)) do not have this requirement.¹⁶ Madrid extensions of protection to the U.S. are also not eligible for registration on the Supplemental Register.¹⁷

Some additional information regarding the Supplemental Register

Like a registration on the Principal Register, a registration on the Supplemental Register affords the owner of the mark the following: nationwide notice of ownership and trademark rights; the registrant may use the ® symbol; the registrant may bring a trademark infringement suit in federal court, along with a claim of unfair competition; and a U.S. Trademark Office Examiner may cite the mark in a refusal against a later-filed application as being confusingly similar.

However, unlike a registration on the Principal Register, a registration on the Supplemental Register does not convey the presumptions of validity, ownership and exclusive rights to use the mark. Although not presumed, validity, ownership and exclusive rights can still be proven with evidence. Finally, a Supplemental Registration can never become incontestable. After five years of use and registration on the Supplemental Register, an applicant may file a new application for the mark on the Principal Register and may request registration based on acquired distinctiveness in view of the long-term usage. There is no way to ‘transform’ the existing registration from Supplemental Register to Principal Register. Additionally, an identical trademark may coexist on both the Supplemental and the Principal Register.

Additional Considerations: Generic and Failure to Function

U.S. law prohibits registration of generic trademarks and proposed trademarks that fail to function as a source indicator. A generic trademark is one that is the generic terminology for the product (i.e., BEER brand BEER or MEDICAL brand MEDICAL services). Generic trademarks are not registrable because it would be anticompetitive to allow registration of a term that is commonly used by all businesses in an industry.

A trademark that fails to function (also known as having a lack of distinctiveness) is not registrable as it is not an indicator of source. For example, the phrase MAMA BEAR¹⁸ failed to function as a source indicator because it is a common phrase used on the front of t-shirts sold by a variety of brands.

Canada

In Canada, each trademark application is examined to determine whether the relevant terms are clearly descriptive or deceptively misdescriptive, in English or French, as applied to the character or quality, place of origin, conditions of, or persons employed in the production of the associated goods or the performance of the services.¹⁹ The word “clearly” is not used in the sense of “accurately”, but rather of “easy to understand…evident, plain.”²⁰ Examiners may consult dictionaries and other public sources, such as internet search results, to determine whether a mark is clearly descriptive within a specific field.

Composite Marks

As in the United States, one option for overcoming a clearly descriptive objection is to apply for a composite mark, one featuring both words and design elements. Although the test for descriptiveness is assessed with a view to the mark as sounded,²¹ in certain instances, marks containing terms that are clearly descriptive may be registrable if the descriptive elements are not the dominant feature of the trademark.²²  As such, merely placing the terms of a descriptive trademark into a fanciful script is unlikely to circumvent the objection. Rather, Examiners are to look at the mark in its totality and compare the visual impressions left by the word elements and the design elements. Factors which an Examiner will consider when assessing what is the dominant element are:

• size of the words and the size of the design;
• the font, style, color and layout of the lettering of the words; and
• the inherent distinctiveness of the design element.

In practice, the dominant element test creates a higher standard to registrability than in the U.S., where all that is required is a separate commercial impression.

Responding to a Clearly Descriptive Objection

The options for responding to an objection based on descriptiveness are similar to those in the United States. However, unfortunately, the options are more limited, and unlike in the U.S., Canada does not have a “Supplemental Register.” As such, the requirements for securing protection of a Clearly Descriptive trademark in Canada are significantly more onerous for applicants.

1. Legal Arguments

The easiest and most cost-effective way to overcome any objection is to try to convince the Examiner the trademark is not descriptive through legal argument. It is rare that an applied-for mark is so obviously descriptive that there is no avenue for arguing that the mark is highly suggestive rather than clearly descriptive. Often an applicant can point to a secondary meaning (e.g. MISO GOOD – a mark with multiple meanings) or that the mark is not grammatically correct, as the words do not create a grammatically sound word or phrase (e.g. AUDITCOMPUTER or READYDRY) to demonstrate that as a matter of first impression, the mark is not clearly descriptive of the associated goods and services. Another option is to point to recent existing registrations which use a term in the same suggestive manner; however, the Examiner is not obligated to continue past mistakes or be bound by prior decisions and may not give much weight to prior registrations, particularly if they were registered years or decades ago.

2. Acquired Distinctiveness

If an applicant is unable to overcome a clearly descriptive objection through argument, the only other option for registering the trademark is to provide evidence of acquired distinctiveness (i.e., secondary meaning). As opposed to the U.S., where five years of continuous use may be sufficient upon request for an application to enter the Principal Register, in Canada, the only way to demonstrate acquired distinctiveness is to prepare and file an affidavit, setting out sales and advertising spend by province or territory, with the goal of demonstrating use in each province and territory if desiring Canada-wide protection, as well as other evidence of an acquired reputation (e.g. advertising budget and related engagement/views, press releases or media attention). If the applicant cannot demonstrate sales and advertising in a specific province, the application may be denied in that province, while being registered in others. Should a registered mark only be granted in certain provinces, an additional application would have to be filed to extend those rights to the other provinces and territories at a later date. While the Canadian Intellectual Property Office has not set a specific amount of time which an applicant must have previously used its mark in order to demonstrate acquired distinctiveness, it is unlikely that a business would be able to meet the high burden without at least five years of significant use in any relevant provinces. As such, the barrier to registration of a descriptive mark is high, even in cases where there has been sustained and Canada-wide use by an applicant.

Additional Considerations – Non-Distinctiveness

In 2019, Canada implemented significant changes to the Trade-marks Act, adopting the Nice classification system and Madrid Protocol. In addition, amendments to the Act granted Examiners the ability to conduct common law internet searches to determine whether a mark is non-distinctive (aka fails to function as a source indicator). As a matter of practice, any objection based on inherent registrability (i.e. descriptiveness, surnames) will also receive a non-distinctiveness objection. An Examiner may point to significant concurrent use of similar terms or marks by third-parties to demonstrate that a mark is non-distinctive. Since its introduction, this objection has been applied inconsistently regarding third-party use; however, it is still possible that a mark which is not clearly descriptive would be objected to on the basis that it is incapable of distinguishing the goods and services of one trader from another. For example, the Canadian Intellectual Property Office has issued objections where a slogan follows a common pattern (e.g. CANADA’ S HOME FOR [descriptive term]).

Best Practices – Anticipating a Refusal for Descriptiveness

In advance of filing internationally, it is best practice to work with local counsel who can advise on how best to proceed. Often, an experienced trademark attorney in the U.S. or Canada can anticipate a descriptiveness / non distinctiveness refusal and how their respective offices will treat different marks. In instances where the mark is not obviously descriptive (perhaps due to the nature of the industry or product) the easiest way for the attorney to anticipate a descriptiveness refusal is to conduct a comprehensive search for the mark.²³ In addition to helping determine if a likelihood of confusion refusal is likely or other potential objections from third parties, a search can be informative on whether the trademark is descriptive in the marketplace and/or as to the specific good or service.²⁴ While a search is not necessarily conclusive (for example, a mark can be descriptive even if it doesn’t already ‘exist’ in the marketplace such as when the brand owner is the first and only user,^{25, 26}), searches can help to educate an attorney on esoteric terms of art, common terms known within a specific industry, or slang terms that have developed around a specific field, so that they can best advise the client.

Local counsel is uniquely positioned to provide valuable filing advice and will have established partnerships with experienced practitioners that can assist to help anticipate and resolve refusals for descriptiveness. For example, in the U.S., the strategy may be registering a descriptive trademark on the Supplement Register with a view to refiling on the Principal Register after five years of use or preparing evidence to support acquired distinctiveness. In Canada, where use is not required to secure trademark protection, it may be best to file for a design mark with the goal of opening the door at a later date to secure of the word mark.

Footnotes

1. T.M.E.P. §1209.01(b)
2. T.M.E.P. §1209.01(c), §1209.01(d), §1209.03(w), §1202.11
3. T.M.E.P. §1209.03(f)
4. T.M.E.P. §1209.03(w)
5. Id.
6. As long as the trademark is not generic or fails to function (i.e. non-distinctive), a descriptive mark can be registered.
7. T.M.E.P. 1209.01(a)
8. Id.
9. T.M.E.P. 1213.05(c)(d)(e)
10. T.M.E.P. 1212
11. T.M.E.P. 1212.06
12. Id.
13. The value of these statements depends on the statement and the identity of the affiant/declarant T.M.E.P. 1212.06(C).
14. Id.
15. T.M.E.P. 1212.04, 1212.09(a).
16. T.M.E.P. 1009
17. T.M.E.P. 1904.02(a)
18. In re Sarah Marie Duncan d/b/a Loved by Hannah and Eli, Inc., Serial No. 86923714 (February 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).
19. CIPO Trademarks Examination Manual, 4.4.1
20. Thorold Concrete Products Ltd. v. Registrar of Trade Marks, (1961), 37 C.P.R. 166 at 172
21. A trademark which consists of a miss-spelled word can contravene the descriptiveness prohibitions if it would be pronounced the same as a clearly descriptive word (e.g. THOR-O-MIX for ready-made concrete)
22. Best Canadian Motor Inns Ltd. v. Best Western International, Inc., (2004), 30 C.P.R. (4th) 481 finding that the phrase BEST CANADIAN MOTOR INNS was the dominant element of the mark despite the inclusion of a maple leaf and minor stylistic elements, the mark was therefore descriptive.
23. In Canada and the U.S., if a mark is in a foreign language it will be translated according to the doctrine of foreign equivalents, and may also be refused as being descriptive (Section 12(1)(c); T.M.E.P. 809.02). In Canada, French is an official language and there is no requirement to translate a French language mark with the Canadian Trademarks Office.
24. Searches can also help to determine if a mark may be non-distinctive or ‘fail to function as a trademark’
25. T.M.E.P. §1209.03(c)
26. CIPO Trademarks Examination Manual, 4.9.4

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