IN THE MATTER OF AN OPPOSITION
by Michael Curb and Curb Records, Inc. to
application No. 1,203,780 for the trade-mark
CURB CULTURE filed by Philobar Design
Canada Ltd.
On January 21, 2004, the applicant, Philobar Design Canada Ltd., filed an application to register the trade-mark CURB CULTURE based on proposed use in Canada with the following wares:
ladies', men's, girls', boys' and children's clothing, namely T‑shirts, polo shirts, sweaters, shirts, blouses, pants, overalls, shorts, skirts, coats, jackets, vests, turtlenecks, undergarments, sleepwear and robes; blankets and pillows.
The application was advertised for opposition purposes on August 10, 2004.
On October 15, 2004, Michael Curb filed a statement of opposition, a copy of which was forwarded to the applicant on November 16, 2004. On December 12, 2005, leave was granted to add Curb Records, Inc. as a joint opponent.
The first ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Trade-marks Act because, as of the applicant’s filing date, the applied for mark was confusing with the trade-marks CURB and CURB RECORDS previously used in Canada by the opponents in association with the following wares:
audio and audio‑visual recordings; printed materials namely posters; clothing namely t‑shirts and caps
and with the following services:
entertainment services provided by pre‑recorded and live music; and the production, publishing and distribution of audio and audio‑visual recordings.
The second ground is one of prior entitlement pursuant to Section 16(3)(c) of the Act based on prior use of the trade-names Curb and Curb Records.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with the first opponent’s trade-mark CURB RECORDS registered under No. 521,953 for the wares and services noted above. The fourth ground is that the applied for trade-mark is not distinctive because it is confusing with the previously used trade-marks CURB and CURB RECORDS. The fifth ground is that the applicant’s application does not conform to the requirements of Section 30(i) of the Act because the applicant could not have been satisfied that it was entitled to use its mark CURB CULTURE in Canada given that it knew of the opponents’ prior rights in their trade-marks and trade-names.
The applicant filed and served a counter statement. As their evidence, the opponents submitted the affidavits of Tracy Moore and Meghan Dillon. As its evidence, the applicant submitted the affidavits of Antoinette Fanizza and Melissa H. Yoon. Both sides filed a written argument and an oral hearing was conducted at which the opponents and the applicant were represented.
The Opponents’ Evidence
In her affidavit, Tracy Moore identifies herself as Senior Vice President, Business and Legal Affairs at Curb Records, Inc. Ms. Moore states that Michael Curb is the Chairman of Curb Records, Inc. and then details the history of that company going back to the 1970s when Mr. Curb first formed a record company in the United States. According to Ms. Moore, Curb Records, Inc. and its predecessors have used the trade-marks and trade-names CURB and CURB RECORDS in the U. S. and Canada for over thirty years.
Since 1990, Curb Records, Inc. has distributed its record albums in Canada through Capitol Records-EMI of Canada, a division of TEMI Canada Inc. which is now known as EMI Music Canada, a division of EMI Group Canada Inc. Each CD and DVD distributed in Canada is marked with the trade-mark or trade-name CURB and/or CURB RECORDS. These products are sold in Canada through record stores, chain department stores and web sites. According to Ms. Moore, record sales in Canada by her company for the period 2000-2004 were in excess of $24 million. During that same period, EMI Music Canada spent more than $548,000 on co-op advertising for Curb Records products in Canada.
Ms. Moore states that her company or its distributors have distributed posters, t-shirts, shirts and caps marked with the trade-mark CURB or CURB RECORDS in the U. S. “and/or” Canada. However, there is no indication that these items were sold to consumers and Ms. Moore fails to indicate when and how many of these items were distributed in this country. Furthermore, from a review of the photographs of sample items appended as Exhibit C-2 to her affidavit, the trade-mark CURB or CURB RECORDS is prominently displayed on the items. Thus, it appears that these goods were distributed as promotional items only.
Ms. Moore states that it is very common for record companies to distribute clothing and household items for promotional purposes. However, she fails to provide examples. Ms. Moore also states that, from 1980 to date, the opponents have sponsored NASCAR racing cars and drivers. However, she gives no indication as to the Canadian exposure for such sponsorship.
The Dillon affidavit evidences various Internet investigations carried out by Ms. Dillon. She located a number of record companies that offer for sale such items as t-shirts, caps and other clothing items. It appears that such sales are also effected for promotional purposes. There is no evidence that any such sales have been made in Canada or that Canadians are aware of such wares.
Ms. Dillon also searched the NASCAR web site which includes examples of sponsorship by various companies. Ms. Dillon searched the web sites of some of these companies which reveal that they, in turn, sell various sponsored products such as t-shirts, sweatshirts, caps, jackets, mugs, glasses, etc. However, there is no evidence of any sales of these items in Canada or any reputation in Canada for these sponsored goods. Furthermore, it does not appear that these items are sold through the typical retail channels of trade for clothing.
The Applicant’s Evidence
In her affidavit, Ms. Fanizza identifies herself as Director of Operations of the applicant. She states that the applicant has sold men’s and boys’ clothing in association with the trade-mark CURB CULTURE in Canada since February of 2004. The applicant sells directly to retail clothing stores including chain stores. According to Ms. Fanizza, sales of CURB CULTURE clothing since February, 2004 have been approximately $525,000. Further, she states that she is the person who would be informed of any mistaken connection between her company’s wares and the opponents’ wares and services and that she is unaware of any such incidents.
The Yoon affidavit evidences the results of Ms. Yoon’s Internet searches for trade-marks or web sites incorporating the word CURB in association with music. She details a number of sites which have that word in their domain name and which direct visitors to various music sites. However, those CURB sites are not music sites themselves but rather are portal sites which direct visitors to all manner of shopping sites including music sites. Ms. Yoon also located two sites for bands whose names include the word CURBS. There is no evidence that these bands have any reputation in Canada.
The Grounds Of Opposition
The fifth ground does not raise a proper ground of opposition. The mere fact that the applicant may have known of the opponents’ prior rights in the trade-marks and trade-names CURB and CURB RECORDS does not, by itself, preclude the applicant from honestly making the statement in its application required by Section 30(i) of the Act. Thus, the fifth ground is unsuccessful.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
As for Section 6(5)(a) of the Act, the registered trade-mark CURB RECORDS is inherently weak since it comprises the opponent Michael Curb’s surname and the non-distinctive word RECORDS. Ms. Moore has evidenced sales of recorded products in Canada in association with the mark CURB RECORDS by the opponent Curb Records, Inc. through its Canadian distributor. However, the registered mark stands in the name of the opponent Michael Curb and there is no evidence that Mr. Curb has licensed Curb Records, Inc. to use his mark or that he exercises control over the character or quality of any of the wares sold.
The opponents contend that Ms. Moore identified Mr. Curb as the sole shareholder of Curb Records, Inc. and that, consequently, there is an implied license to use the registered mark. However, the Moore affidavit contains no such statement. Mr. Curb’s status as Chairman of Curb Records, Inc. does not by itself imply the existence of a trade-mark license. Presumably it would have been a simple matter for Ms. Moore to state that there was a license (whether oral or written) from Mr. Curb to Curb Records, Inc. to use the mark CURB RECORDS. However, Ms. Moore did not do so. Thus, the use of the mark by Curb Records, Inc. in Canada did not inure to the benefit of Mr. Curb and I am unable to conclude that the mark CURB RECORDS has become known to any extent in Canada in the hands of the registered owner.
The opponents also contend that the mark CURB RECORDS has acquired a reputation in association with t-shirts, caps and the like. However, as noted, Ms. Moore failed to evidence any sales or distribution of such items in Canada. In any event, it appears that any use of the mark in association with such wares has been for promotional purposes only. Thus, the opponents have failed to establish any reputation in Canada for the mark CURB RECORDS for t-shirts, caps and the like.
The applicant’s mark CURB CULTURE is inherently distinctive in relation to the applied for clothing items. In the context of the applicant’s mark, the word CURB refers to an edge for a sidewalk and the phrase CURB CULTURE therefore suggests an outdoor or youth-oriented product or activity, perhaps related to skateboarding, cycling or basketball. In view of the sales attested to by Ms. Fanizza, the applicant has established that its mark has become known in Canada to at least some extent.
As for Section 6(5)(b) of the Act, in view of the opponents failure to evidence a trade-mark license from Mr. Curb to Curb Records, Inc., the length of time the marks have been in use favors the applicant who has evidenced use of its mark since February of 2004. As for Sections 6(5)(c) and 6(5)(d) of the Act, it is the applicant’s statement of wares and the statement of wares in the first opponent’s registration that govern: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.). However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).
The opponents’ business is the production, distribution and sale of record albums. The applicant is in the clothing business. Although the first opponent’s trade-mark registration also covers t-shirts and caps, the Moore affidavit establishes that these wares are distributed as promotional items. Furthermore, there is no evidence that any such wares have been distributed in Canada, much less sold in Canada.
The Moore affidavit establishes that Curb Records, Inc. does sell record albums through its Canadian distributor to record stores and retail chain department stores. The applicant’s wares are sold through clothing stores including retail chain clothing stores although presumably they could also be sold through retail chain department stores. However, given the different natures of those wares, they would not be sold through the same section or department of such stores. Thus, there is, at most, a minimal overlap in the channels of trade of the parties.
As for Section 6(5)(e) of the Act, there is some resemblance between the marks CURB CULTURE and CURB RECORDS visually and phonetically since they both commence with the word CURB. However, the marks suggest distinctly different ideas. The registered mark suggests a record company or store owned by someone named Curb. The applicant’s mark, on the other hand, suggests a youth-oriented pastime or activity.
As an additional surrounding circumstance, I have considered that the marks at issue have coexisted in Canada, at least to a limited extent, with no incidents of actual confusion having arisen. This provides some limited evidence suggesting that confusion is unlikely.
Both parties relied on Internet searches to support their case. However, as discussed, the results of those searches do little to establish what the parties intended them to show. For the most part, the Dillon and Yoon affidavits are irrelevant in assessing the issue of confusion between the marks in Canada.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. The onus or legal burden is on the applicant to show no reasonable likelihood of confusion on a balance of probabilities. That means that if the probabilities favor neither side, I must resolve the issue against the applicant. In view of my conclusions above, and particularly in view of the inherent weakness of the registered mark, the absence of any reputation for that mark in Canada, the differences between the wares and trades of the parties and the limited coextensive use of the marks without evidence of actual confusion, I find that the applicant has established on a balance of probabilities that its trade-mark CURB CULTURE is not confusing with the opponent’s registered mark CURB RECORDS. Thus, the third ground of opposition is also unsuccessful. It should be noted that even if the existence of a trade-mark license had been established, it would not likely have changed my conclusion respecting this ground.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - October 15, 2004): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponents to prove the allegations of fact in support of their ground of non-distinctiveness.
The fourth ground of opposition essentially turns on the issue of confusion between the applicant’s proposed mark and the opponents’ marks CURB and CURB RECORDS. For the most part, my conclusions respecting the third ground of opposition also apply to the fourth ground. Thus, I find, on a balance of probabilities, that the applicant’s mark is not confusing with the opponents’ marks as of the filing of the opposition. Thus, the fourth ground is also unsuccessful.
As for the first and second grounds of opposition, as discussed, the first opponent, Michael Curb, failed to evidence use of any mark or name in Canada at any time. Thus, insofar as those two grounds rely on prior use by Mr. Curb in Canada, they are unsuccessful.
The second opponent, on the other hand, has evidenced use of the trade-marks and trade-names CURB and CURB RECORDS prior to the applicant’s filing date and non-abandonment of those marks and names as of the applicant’s advertisement date. Thus, those two grounds remain to be decided on the issue of confusion as of the applicant’s filing date.
For the most part, my conclusions respecting the third ground are also applicable to the first two grounds. One difference of note is that, given that the use by Curb Records, Inc. enures to its own benefit, I am able to conclude that the marks and names CURB and CURB RECORDS have acquired at least some reputation in Canada. As for the evidence of coextensive use of the marks in Canada without actual confusion having occurred, that evidence arose after the material time. However, it arose shortly after that time and I am therefore prepared to conclude that such evidence is also representative of the state of affairs as of the earlier date. In summary, I find that the applicant’s mark was not confusing with any of the previously used marks or names as of the applicant’s filing date. Thus, insofar as the first and second grounds rely on prior use by the opponent Curb Records, Inc., I consider that they, too, are unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponents’ opposition.
DATED AT GATINEAU, QUEBEC, THIS 31st DAY OF MARCH, 2008.
David J. Martin,
Member,
Trade Marks Opposition Board.