One of the most important steps in the trade-mark registration
process is "Opposition". Anyone who opposes registration
of a trade-mark may file a Statement of Opposition based on one of
the following grounds:
the application does not conform to the requirements of the
the trade-mark is not registrable;
the applicant is not the person entitled to registration of the
the trade-mark is not distinctive.
If a trade-mark is opposed, the Trade-mark Opposition Board
(TMOB) will either allow the trade-mark to be registered, or refuse
registration, based upon submissions and evidence from both the
applicant and the opponent. A simple task? You be the judge.
MIND TO MUSCLE vs. MIND TO MUSCLE
Trainer's Choice Inc. v. Vision Tek
Vision Tek Inc. applied to register the mark MIND TO MUSCLE
based on its use since June 1, 1999, in association with athletic
clothing and exercise equipment as well as services such as sports
injury assessment, massage, acupuncture and fitness instruction.
Trainer's Choice Inc. filed an opposition on the grounds that
Vision Tek knew it was not entitled to use the mark, since
Trainer's Choice had offered identical wares and services in
association with the mark MINDTOMUSCLEsince 2001. Identical mark,
identical products, with two different owners.
Years before Vision Tek filed the application for registration,
the owners of the competing companies were friends and jointly
operated a business using the mark MIND TO MUSCLE. There was no
formal agreement as to which party owned the trade-mark, and both
had subsequently used the trade-mark in association with separate,
competing entities. When Trainer's Choice saw that Vision Tek
had applied for the mark, Trainer's Choice opposed registration
of the mark. The TMOB decided that the interests of Trainer's
Choice prevailed, as the trade-mark was not distinctive of Vision
Tek's products as it had become known for the products of
Trainer's Choice. The opposition was successful and the
application for registration in the name of Vision Tek was
Central City U-Lock vs. U Lock
JCM Professional Mini-Storage Management Ltd. v. Central City
This dispute pits two competing self-storage companies against
each other. Both marks featured the term U-LOCK, but with different
designs, and both companies opposed the application of the other.
The TMOB decided that the term U-LOCK (the phonetic equivalent of
"you lock") is simply not a trade-mark that can be given
a broad scope of protection given its ordinary meaning in
association with self-storage facilities. In this case, the CENTRAL
CITYU-LOCKdesign was permitted, since it contained other
distinctive design elements, particularly the dominant positioning
of the words CENTRAL CITY. JCM's U-LOCK design mark was
refused, as it was found to be clearly descriptive of self-storage
ESURANCE vs. ESURANCE
Lofaro v. Esurance Inc.
A well-established U.S. online insurance company (Esurance Inc.)
applied to register its U.S. trade-mark ESURANCEin Canada. A
Canadian insurance consultant (Ms. Lofaro) opposed the application
based on her own use of the mark ESURANCE for similar services, and
her ownership of the domain name ESURANCE. CA. Identical mark,
similar services, and a well-funded U.S. company against a lone
Canadian insurance professional.
Despite Ms. Lofaro's best attempts to persuade the TMOB that
her use of the mark should prevent the U.S. competitor from
registering its mark in Canada, the TMOB remained unconvinced that
Ms. Lofaro had used the mark ESURANCE as a trade-mark such that it
was distinctive of her services. The opposition failed and the
application for registration in the name of Esurance Inc. was
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The amendments will increase uncertainty, and will result in costly investigations associated with trademark clearance searches as well as risk analysis relating to opposition proceedings and infringement actions.