IN THE MATTER OF AN OPPOSITION
by Undercoverwear, Inc. to application No. 731,814
for the trade-mark UNDER COVER filed by
Patricia M. O’Beirn doing business as Under Cover
On June 28, 1993, the applicant, Patricia M. O’Beirn doing business as Under Cover, filed an application to register the trade-mark UNDER COVER based on use in Canada since November 21, 1991 for the following services:
bookstore services; operation of a retail business dealing in books, antiquarian books, games, greeting cards, calendars, magazines, maps, pre-recorded audio tapes, compact discs, computer games, computer game accessories; rental of books, pre-recorded audio tapes and compact discs, computer games and computer game supplies.
The application was advertised for opposition purposes on April 13, 1994. On March 24, 1998, an amended application was accepted which deleted all of the above services except “bookstore services.”
The opponent, Undercoverwear, Inc., filed a statement of opposition on June 13, 1994, a copy of which was forwarded to the applicant on August 17, 1994. By letter dated May 18, 1995, the opponent sought leave to amend its statement of opposition. That request was apparently overlooked and, since the applicant had no objection to that request, I granted it at the oral hearing held on February 5, 1999.
The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(a) of the Trade-marks Act because the statement of services is not in ordinary commercial terms. The second ground is that the applicant’s application does not conform to the requirements of Section 30(b) of the Act because the applicant had not used her applied for mark since the date claimed. The third ground is that the applicant’s application does not conform with the requirements of Section 30(i) of the Act because the applicant could not have been satisfied that she was entitled to use the applied for mark.
The fourth 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 opponent’s trade-mark UNDERCOVER registered under No. 241,312 for “ladies’ panty hose and ladies’ hosiery” and
with the opponent’s trade-mark UNDERCOVERWEAR registered under No. 376,938 with the following wares:
(1) women’s clothing namely robes, bathrobes, pyjamas, loungewear, lingerie, jumpsuits, gowns, hostess gowns, undergarments, stockings and slippers, printed brochures, forms and training publications for supply to independent sales persons;
(2) men’s clothing namely undergarments, pyjamas, loungewear and bathrobes
and with the following services:
providing advice and assistance to independent sales persons concerning the organizing of home parties and entertainments at which clothing is sold.
The fifth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1) of the Act because, as of the applicant’s claimed date of first use, the applied for mark was confusing with the trade-marks UNDERCOVER and UNDERCOVERWEAR and the trade-names Undercoverwear, Inc. and Undercoverwear Ltd. previously used in Canada by the opponent and its licensee. The sixth ground is that the applicant’s trade-mark is not distinctive because it is confusing with the trade-marks and trade-names used by the opponent and its licensee and because the applicant failed to give notice that use of her mark was by a licensee.
The applicant filed and served a counter statement. The opponent’s evidence comprises certified copies of its two trade-mark registrations; two affidavits of its President, Walter J. Jamitkowski; two affidavits of Tyler R. Preston and the affidavits of the following individuals:
William McLaughlin Julie Kirsh
Jennifer Barry Robert Mark Gould
Sunita Poonai Michael J. Taylor Bruce A. Raymond Cheryle Heaney Donald George Gaudet
The applicant was granted an order to cross-examine Messrs. Jamitkowski and McLaughlin. Since Mr. McLaughlin was not available, the opponent filed a third affidavit of Mr. Jamitkowski in which he adopted the contents of Mr. McLaughlin’s affidavit. Mr. Jamitkowski was then cross-examined on all three of his affidavits and the transcript of that
cross-examination and the replies to undertakings given form part of the record of the present proceeding.
The applicant’s evidence consists of an affidavit of Patricia M. O’Beirn. Ms. O’Beirn was cross-examined on her affidavit and the transcript of that cross-examination forms part of the record of this opposition. As evidence in reply, the opponent submitted an affidavit of Anne Lannan. Only the opponent filed a written argument but an oral hearing was conducted at which both parties were represented.
At the oral hearing, the agent for the applicant submitted the exhibits from the Jamitkowski cross-examination which had inadvertently not been filed earlier. As conceded by the applicant’s agent, most of those exhibits are inadmissible, in any event.
The Applicant’s Evidence
In her affidavit, Mr. O’Beirn identifies herself as a sole proprietor operating a bookstore in Haliburton, Ontario. The store has been operating under the trade-mark UNDER COVER since November 21, 1991. The store has a prominent outside sign featuring the trade-mark UNDER COVER. A design version of the mark is used on book marks given to customers with book purchases, in advertising materials and on membership cards for customers who use the applicant’s book rental service.
The applicant’s bookstore sells books, magazines, calendars, greeting cards, tapes and CDS. On cross-examination, Ms. O’Beirn stated that this range of goods was typical of most bookstores (see page six of the O’Beirn transcript). Ms. O’Beirn also provides a mail order service through her store using a 1-800 telephone number. Finally, she states that her store does not sell lingerie or undergarments and that no customer has ever asked her for such items.
The Opponent’s Evidence
Mr. Jamitkowski is the President, CEO and co-founder of the opponent, Undercoverwear, Inc. Since April of 1977, the opponent has been a “multi-level marketer” of lingerie, wearing apparel and fashion accessories sold primarily through the “home party” method of merchandising. The opponent engages independent sales agents who arrange for individuals to host parties at their homes where an agent will take orders for the opponent’s products bearing its trade-marks and receive a commission on those sales. Agents who recruit new agents receive a supplemental commission based on the sales of the new agents.
Mr. Jamitkowski is also the President and CEO of Undercoverwear Ltd. which is the Canadian arm of the opponent and a licensed user of the opponent’s two registered trade-marks. Appended to Mr. Jamitkowski’s affidavits are exhibits illustrating the manner in which the opponent’s trade-mark UNDERCOVERWEAR is advertised and the manner in which it appears on labels and hang tags for the goods. The trade-mark UNDERCOVERWEAR is most commonly used in a one-word fanciful script form with the letters U and W being capitalized.
It should be noted that Mr. Jamitkowski failed to evidence any use in Canada of his company’s registered mark UNDERCOVER. The opponent referred to several instances in the Jamitkowski exhibits where the word Undercover by itself appears. However, in none of those instances is the word Undercover used as a trade-mark to distinguish the opponent’s wares or services.
The opponent further submitted that use of the fanciful script form of the trade-mark UNDERCOVERWEAR also constitutes use of the mark UNDERCOVER. I disagree. The component UNDERCOVER does not stand out from the additional material in the script form of the mark UNDERCOVERWEAR which always appears as one word. Furthermore, the component WEAR in the context of that mark would not be viewed purely as descriptive matter. Rather, it would be viewed as part of the coinage of the mark which has been derived from the words “undercover” and “underwear.” The public would not, as a matter of first impression, perceive use of the script form of UNDERCOVERWEAR to also constitute use of the mark UNDERCOVER ‘per se’: see Nightingale Interloc v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 at 538 (T.M.O.B.).
According to Mr. Jamitkowski, Canadian sales of the opponent’s products for the period 1985 to 1994 totalled in excess of $100 million. In the five year period prior to the date of Mr. Jamitkowski’s first affidavit (i.e. - May 17, 1995), about 20,000 Canadian sales agents were recruited. As of the date of his affidavit, there were about 2,000 active agents including several in the area of Haliburton, Ontario. In 1991, about 57,000 home fashion shows were held across Canada. Undercoverwear Ltd. also operates a single retail location during the Christmas shopping period.
Appended as exhibits to Mr. Jamitkowski’s affidavits are product catalogues illustrating the type of wares sold by the opponent. Also appended as exhibits are training materials used to train new sales agents. Also appended are sales materials and flyers that are sent to agents. Mr. Jamitkowski states that both the opponent and its Canadian licensee use a “spy theme” in these materials although such materials are apparently only circulated within the organization and not to potential customers.
Mr. Jamitkowski also evidenced some publicity for his company’s trade-mark UNDERCOVERWEAR and the trade-names of the opponent and its Canadian licensee by virtue of one article appearing in The Toronto Sun on March 14, 1985 and another article appearing in The Globe and Mail on May 13, 1985. According to Mr. Jamitkowski, he and his company were also featured on four different American television shows. Much of the balance of the opponent’s evidence serves to evidence the circulation of the two Canadian newspapers noted above and to establish that the four episodes referred to were broadcast in Canada by a handful of Canadian television stations.
The Grounds Of Opposition
The first three grounds of opposition are based on Sections 30(a), 30(b) and 30(i) of the Trade-marks Act. While the legal burden is on the applicant to show that her application conforms to the requirements of Section 30 of the Act, there is an initial evidential burden on the opponent to establish the facts relied on in support of its Section 30 grounds: see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325, at 329-330 (T.M.O.B.) and John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). The material time for considering the circumstances respecting the issues of non-conformance with Section 30 of the Act is the filing date of the application.
The first ground is based on Section 30(a) of the Act, the opponent alleging that the applicant’s statement of services is not described in ordinary commercial terms and that it does not accurately describe the specific services with which the mark is alleged to have been used. As for the test to be applied under Section 30(a), the former Registrar of Trade-marks stated in Dubiner and National Yo-Yo and Bo-Lo Ltd. v. Heede Int'l Ltd. (1975), 23 C.P.R. (2d) 128 that an applicant in his application “....must clearly set forth wares or services as they are customarily referred to in the trade.” While a statement of services may be more difficult to define in terms of the specific services than is the case with a statement of wares, Section 30(a) of the Act does require a measure of specificity where it is reasonable to expect that a specific statement of services in ordinary commercial terms can be provided by an applicant: see Sentinel Aluminum Products Co. Ltd. v. Sentinel Pacific Equities Ltd. (1983), 80 C.P.R. (2d) 201 (T.M.O.B). In McDonald's Corporation and McDonald's Restaurants of Canada Ltd. v. M. A. Comacho-Saldana International Trading Ltd. (1984), 1 C.P.R. (3d) 101 at 104 (T.M.O.B.), it was held that it was only necessary for the opponents to present sufficient argument in order to meet their initial burden in respect of a Section 30(a) ground of opposition.
The opponent contended that the application as advertised listed three separate classes or descriptions of services, the first being “bookstore services.” The opponent further contended that since the second description did list the specific services performed by the applicant as detailed in her affidavit, the first description (i.e. - “bookstore services”) must refer to something different. I disagree. There is nothing precluding an applicant from providing alternative descriptions of his services which may, or may not, overlap. In the present case, it would appear that the second description (and probably the third description as well) falls within the scope of the first description “bookstore services.”
In the alternative, the opponent contended that the deletion of the second description in the statement of services means that those specific services must also be considered as having been removed from the first description “bookstore services.” The opponent contended that it is now impossible to determine what services beyond the second description, if any, fall within the first description. Again, I disagree. The deletion of the second description has no effect on the scope of the first description.
Finally, the opponent contended that the applicant’s statement of services is overly broad and too imprecise. I disagree. Although the phrase “bookstore services” is perhaps not as precise as the phrase “the operation of a retail bookstore” and is arguably broader in scope, I consider that the average consumer would understand the former phrase to generally refer to the operation of a bookstore. Consumers would also readily understand that a bookstore typically sells not only books but also such items as calendars, greeting cards, magazines and audio tapes (see page six of the O’Beirn transcript). By way of contrast, the opponent has failed to submit evidence suggesting that “bookstore services” would not be understood in this fashion by consumers or that it is not customarily used in the trade. Thus, the first ground of opposition is unsuccessful.
As for the opponent's second ground of opposition, as before, there is an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed: see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
In the present case, the opponent has failed to submit evidence which would cast doubt on the applicant’s claim to have used her mark since November 21, 1991. Furthermore, nothing in the O’Beirn affidavit is inconsistent with that claim. The opponent contended that the deletion of the second and third descriptions from the advertised statement of services is an admission that the applicant had not used its trade-mark for all of the specific services as of the date claimed. Even if that is true, it has no effect on the validity of the applicant’s claimed date of first use for the more general first description “bookstore services.” Thus, the opponent has failed to meet its evidential burden respecting the second ground of opposition and it is therefore unsuccessful.
As for the third ground of opposition, it does not raise a proper ground since the opponent did not allege that its marks were confusing with the applicant’s mark or that the applicant was aware of such confusion. Thus, the third ground is unsuccessful. If I am wrong in this conclusion, then the success or failure of the third ground is contingent on a finding of confusion between the marks at issue.
As for the fourth 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.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, 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 applicant’s mark UNDER COVER is inherently distinctive although it does have a slight suggestive connotation pointing to books. The O’Beirn affidavit and cross-examination suggest that any reputation the applicant’s mark has acquired is limited to the area of Haliburton, Ontario. Ms. O’Beirn states that summer visitors to the region also shop at her store but she was unable to provide any particulars.
The opponent’s registered mark UNDER COVER is also inherently distinctive although it, too, has a slight suggestive connotation in relation to lingerie, sleepwear and the like. As discussed, there is no evidence of any use of that mark in Canada by the opponent or its Canadian licensee. Thus, I must conclude that it has not become known at all in this country.
As for the registered mark UNDERCOVERWEAR, it, too, is inherently distinctive. However, it is not an inherently strong mark since it has a more obvious suggestive connotation pointing to underwear, lingerie and the like. Mr. Jamitkowski himself recognized the inherent weakness of his company’s mark (see page 29 of the Jamitkowski transcript). Given the sales of UNDERCOVERWEAR clothing items in Canada, the number of annual home fashion shows conducted and the number of active independent sales agents, I can conclude that the opponent’s mark UNDERCOVERWEAR has become known to a fair number of Canadians in relation to the opponent’s wares and its home party method of sale. Given the sporadic operation of a single retail outlet in Canada by the opponent’s licensee, little reputation can be accorded the mark in association with typical retail store channels. The publicity for the mark generated by the two newspaper articles and the handful of television shows adds very little to the mark’s reputation since that publicity was somewhat limited and, for the most part, occurred more than ten years ago.
The length of time the marks have been in use favors the opponent. As for the services, wares and trades of the parties, it is the applicant’s statement of services and the opponent’s statements of wares and services in its two registrations 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.).
As for registration No. 241,312 for the mark UNDER COVER, ladies’ pantyhose and hosiery are entirely different from bookstore services. Even if those wares were sold by the opponent through ordinary retail stores (which has not been evidenced), there would be no overlap with the applicant’s trade as a retail bookseller. The trades appear to be mutually exclusive.
As for registration No. 376,938 for the mark UNDERCOVERWEAR, the clothing wares listed are entirely different from the applicant’s services. The “printed brochures, forms and training publications” listed in the registration are also different from the applicant’s services since they are “for supply to [the opponent’s] independent sales persons.” Such items appear to be administrative and marketing materials used internally within the organization with no distribution to consumers. The opponent’s services also differ from the applicant’s, the opponent’s registered services being narrowly directed to its force of independent sales agents.
The trades of the parties are also disparate. A fair reading of the statements of wares and services suggests that the opponent’s trade is through the marketing mechanism of home parties. The evidence confirms that conclusion. That trade is completely different from the trade associated with the operation of a retail bookstore. Even in the limited circumstance where the opponent operates a retail outlet on a seasonal basis, the trades of the parties differ since consumers would not expect the applicant’s store and the opponent’s retail outlet to stock similar items.
As for Section 6(5)(e) of the Act, the applicant’s mark is virtually identical to the opponent’s registered mark UNDER COVER. There is a fairly high degree of resemblance with the opponent’s registered mark UNDERCOVERWEAR since the first part of the opponent’s mark comprises the entirety of the applicant’s mark. However, the ideas suggested by the two marks differ somewhat since the opponent’s mark suggests clothing to be worn under other clothing whereas the applicant’s mark suggests the more general concept of something being covered up or of spying activities.
The opponent submitted that the resemblance between the marks is underscored by the opponent’s emphasis on a spy or secret agent theme in some of its marketing materials. I disagree. Although the applicant does use a design version of its mark which includes what appears to be a male spy or secret agent, the primary connotation of the applicant’s mark in the context of its business points to books - i.e. - what’s under the cover. Furthermore, as discussed, the spy or secret agent theme evidenced by the opponent is restricted to its own sales force and is thus internal to the organization. Most consumers are unaware of the opponent’s use of that theme.
One additional relevant surrounding circumstance is the absence of incidents of actual confusion notwithstanding longstanding contemporaneous use of the two marks. As evidenced by the opponent, its Canadian licensee has a number of sales agents in the area of Haliburton, Ontario who have conducted home parties. Despite the presence of sales agents in the area, the opponent was unable to evidence any instances where consumers were confused. As noted, Ms. O’Beirn has never been asked if her store sells lingerie or undergarments.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the differences between the wares, services and trades of the parties and the absence of evidence of actual confusion and notwithstanding the resemblance between the marks at issue and the reputation associated with the opponent’s second registered mark, I find that the applicant’s trade-mark UNDER COVER for “bookstore services” is not confusing with either of the registered marks UNDER COVER and UNDERCOVERWEAR. The fourth ground is therefore also unsuccessful.
As for the fifth ground of opposition, the opponent has failed to evidence any use of its trade-mark UNDER COVER prior to the applicant’s claimed date of first use. Thus, that aspect of the fifth ground is unsuccessful.
As for the remaining aspects of the fifth ground, the opponent has met its initial burdens by evidencing use of its trade-mark UNDERCOVERWEAR and the two trade-names Undercoverwear, Inc. and Undercoverwear Ltd. prior to the applicant’s date of first use and showing non-abandonment of that mark and those names as of the applicant’s advertisement date. Those aspects of the fifth ground therefore remain to be decided on the issue of confusion between the opponent’s mark and names and the applicant’s mark as of the applicant’s claimed date of first use.
My conclusions respecting the fourth ground are, for the most part, also applicable here. Although the applicant had not commenced using its mark as of the material time, I consider that the later evidence of contemporaneous use without evidence of actual confusion points to the likelihood of a similar situation existing as of the claimed date of first use. Based on the sales activities by the opponent’s Canadian licensee up to that date, the extent to which the mark UNDERCOVERWEAR had become known would have been less than it is today. On the other hand, the effect of the publicity obtained through the two newspaper articles and the handful of television shows would have been more marked as of that earlier date. On balance, I find that the Canadian reputation for the opponent’s mark would likely have been about the same on November 21, 1991 as it is today. The reputations associated with the two trade-names relied on are much less. Thus, I find that, as of the applicant’s claimed date of first use, the applied for trade-mark was not confusing with the opponent’s trade-mark UNDERCOVERWEAR and the two trade-names relied on. The fifth ground is therefore also unsuccessful.
As for the sixth 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 services 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. - June 13, 1994): 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 opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
The opponent failed to support its allegation of improper licensed use of the applied for trade-mark by someone other than the applicant. Thus, the sixth ground essentially turns on the issue of confusion between the applicant’s mark and the opponent’s trade-mark UNDERCOVERWEAR and the two trade-names relied on. Given my conclusions above respecting the issue of confusion respecting the fourth and fifth grounds, it also follows that the applicant’s mark is not confusing with the mark UNDERCOVERWEAR and the two trade-names as of the filing of the present opposition. Thus, the sixth ground is also unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT HULL, QUEBEC, THIS 19th DAY OF FEBRUARY, 1999.
David J. Martin,
Member,
Trade Marks Opposition Board.