IN THE MATTER OF AN OPPOSITION by Nerds On-Site Inc. to Application No. 1,109,581 for the trade-mark WE KNOW STUFF filed by Alice M. Iverson
On July 19, 2001, Alice M. Iverson (the “Applicant”) filed an application to register the trade-mark WE KNOW STUFF (the “Mark”) on the basis of use in Canada since January 1, 2000. The Mark has been applied for registration in association with the following services: on-site computer/network consultation; computer/network troubleshooting services; computer/network installation and repair; computer/network software installation/upgrades (the “Services”).
The application was advertised in the Trade-marks Journal of June 18, 2003 for opposition purposes. Nerds On-Site Inc. (the “Opponent”) filed a statement of opposition on July 28, 2003. The statement of opposition raises four grounds of opposition based on allegations contained therein, which I am summarizing hereafter.
The first two grounds of opposition are based upon non-compliance with s. 30 of the Trade-marks Act R.C.S. 1985, c. T-13 (the “Act”). More particularly, the Opponent alleges that the Mark has not been used in Canada in association with the Services since the alleged date of first use, or at all. The Opponent further alleges that the Applicant could not have been satisfied that she is entitled to the use of the Mark because the Mark was conceived by the Opponent while the Applicant was in the employ of the Opponent. Any use of the Mark by the Applicant would be in violation of law including, without limitation, a breach of copyright, breach of fiduciary duty, conversion, and misappropriation of corporate opportunity. The third ground of opposition is that the Applicant is not the person entitled to registration of the Mark pursuant to s. 16 of the Act, in that at the date the Applicant first used the Mark it was confusing with the Opponent’s trade-mark WE KNOW STUFF previously used in Canada by the Opponent in association with operating a retail establishment specializing in the sale, installation, troubleshooting and repair of computer hardware and software including the mobile performance of those services on customer services, and which had been applied for registration by the Opponent under No. 1,111,945 prior to the advertisement of the Mark. The last ground of opposition is that the Mark is not distinctive because it does not distinguish and is not adapted to distinguish the Services from the services of the Opponent.
The Applicant filed a counter statement containing several allegations, most being either argumentation or pertaining to evidence. Yet, any information that pertains to evidence cannot be considered as evidence filed in the form required by the Trade-marks Regulations (1996) (the “Regulations”). Both parties have filed evidence as well as written arguments. No oral hearing has been held.
Opponent’s evidence
The evidence, filed pursuant to Rule 41 of the Regulations, consists of affidavits of John Harbarenko, sworn April 23, 2004, and of Gerry Visca, sworn April 26, 2004. The affiants have not been cross-examined.
Affidavit of John Harbarenko
Mr. Harbarenko is the founder and President of the Opponent since its incorporation in 1997. Prior to the Opponent’s incorporation, he ran a business specializing in the sale, installation, troubleshooting and repair of computer hardware and software under the name Nerds On-Site. According to the report provided as Exhibit JH-1, the affiant registered the business name on October 10, 1995 and the registration expired on October 9, 2000. Mr. Harbarenko states that all rights, title and interests of that business have been transferred to the Opponent.
Mr. Harbarenko describes the Opponent’s business as a retail establishment specializing in the sale, installation, troubleshooting and repair of computer hardware and software, including the mobile performance of those services at the customer’s premises. Over 250 employees and independent contractors dispersed in many countries work for the Opponent, whose services are offered particularly in Canada, the United States, and South Africa. At the date of the affidavit, the Opponent served more than 16,000 clients, particulars or companies, throughout Canada. He provides in bundle magazines and newspaper articles relating to the Opponent’s business (Exhibit JH-2). As there is no indication in the affidavit with respect to the dates and names of the publications, I should note that such information is not readily identifiable from Exhibit JH-2. In any event, the Opponent could not rely on these articles as evidence of use of any trade-mark or trade-name in advertisement [see Williams Companies Inc. et al. v. William Tel Ltd. (2000), 4 C.P.R. (4th) 253 (T.M.O.B.)].
According to Mr. Harbarenko, the Applicant was an employee of the Opponent from August 30, 1999 to January 26, 2001 and became an independent contractor as of January 26, 2001 until May 1, 2001. He further states that the Applicant is well known to him since he has worked closely with her and was her direct supervisor form 1999 to 2001. Mr. Harabenko provides a copy of the Independent Contractor Agreement of January 26, 2001 between the Opponent and the Applicant (Exhibit JH-3) stating, and correctly so, that it displays the trade-mark WE KNOW STUFF. I have noted that the agreement, which consists of one page, includes a clause reading: “Conditions: Acceptance of and agreement to Addendum A (Rules of Engagement - EntrepreNERD to EntrepreNERD, EntrepreNERD to Client and Nerds On-Site to EntrepreNERD”. There is no evidence as to the content of Addendum A which has not been provided with Exhibit JH-3.
According to Mr. Harbarenko’s written testimony, he developed the trade-mark WE KNOW STUFF as early as February 1, 2000. Thereafter, many discussions and brainstorming sessions were held with the Opponent’s staff, including the Applicant, for determining whether or not the trade-mark should be adopted as the Opponent’s vision statement.
Mr. Harbarenko deposes on the activities of the Applicant immediately after she ceased working for the Opponent. In that regard, he states that the Applicant registered the domain names “nerdsonwheels.com” and “weknowstuff.com” on June 21, 2001 and June 24, 2001 respectively. He provides excerpts from the Whois database, which were apparently printed on April 21, 2004, with respect to the registration of both domain names (Exhibit JH-4). He further deposes that the Applicant then offered the domain name “nerdsonwheels.com” for sale or lease. In support of his statement, he provides a page that indicates the availability for sale or lease of the domain name “nerdsonwheels.com” with the contact email address “alice@nerdsonwheel.com” (Exhibit JH-5). I note that there is no indication as to the source of Exhibit JH-5, which was apparently printed from the Internet in November 2003. A letter was sent to the Applicant on September 10, 2001 requesting that she cease and desist from any use of the aforementioned domain names and of the trade-mark WE KNOW STUFF (Exhibit JH-6). Although Exhibit JH-6 may serve to evidence that the Applicant received a cease and desist letter from the law firm acting for the Opponent, it may not serve as evidence of the allegations contained therein. An unidentified document is appended in support of Mr. Harbarenko’s statement that the Applicant neglected or refused to comply with the Opponent’s request (Exhibit JH-7). The document, apparently printed out from the Internet on March 3, 2003, seems to be the home page of the website at the address “www.weknowstuff.com”. Finally, Mr. Harbarenko provides a business name report as evidence that the Applicant registered a sole proprietorship under the name WE KNOW STUFF, in Ontario, on July 3, 2001 (Exhibit JH-8).
According to Mr. Harbarenko, the Opponent has continuously used the trade-mark WE KNOW STUFF in association with its services since at least as early as March 1, 2000. Pages from the Opponent’s website, which were apparently printed out on March 3, 2004, are provided to illustrate the manner of use of the trade-mark WE KNOW STUFF (Exhibit JH-9). I note that the trade-mark WE KNOW STUFF is displayed at the right top corner of most pages. While such display may be considered as use of the trade-mark in advertisement, we do not know when the Opponent started operating its website. Also, even if I presume that the website was in operation in March 2000, I cannot presume that it has always displayed the trade-mark in the manner shown by Exhibit JH-9. Thus I find that Exhibit JH-9 at the utmost evidences the Opponent’s use of the trade-mark at the date the pages were printed out.
A copy of an advertisement “that was done […] on or about May 1, 2000, printed in more than 200,000 copies and first distributed to the public around May 2000” is filed as Exhibit JH-10. While the advertisement displays the trade-mark WE KNOW STUFF, we do not know where and how such advertisement was “distributed”. A copy of a 3’ x 8’ poster “that was done […] on or about October 18, 2000 and used by the Opponent during this period at a Canadian retailers convention in London, Ontario” is filed as Exhibit JH-11. It seems to me that Exhibit JH-11 illustrates the final proof of the artwork for the poster displaying the trade-mark WE KNOW STUFF rather than the poster itself. Nonetheless, I am willing to infer that it is representative of the poster that was used as stated by the affiant. The 2002 version of the Opponent’s business-card-sized CD-Rom is filed as Exhibit JH-12. Mr. Harbarenko states that the Opponent’s business-card-sized CD-Rom “has been initially produced in 1,000 copies” in or around October 2000, supporting his statement with an invoice attached as Exhibit JH-13. I note that the business-card-sized CD-Rom displays the trade-mark WE KNOW STUFF. He further states that since its first distribution to the public in or around October 2000, versions of the business-card-sized CD-Rom have been produced in more than 25,000 copies. Although Exhibit JH-12 displays the trade-mark WE KNOW STUFF, I cannot presume that the business-card-sized CD-Rom has always displayed the trade-mark in the manner shown by Exhibit JH-12.
The following approximate amounts have been expended on advertising and marketing of the Opponent’s services in association with the trade-mark WE KNOW STUFF: $78,300 in 2000-2001, $73,500 in 2001-2002 and $213,200 in 2002-2003.
Mr. Harbarenko files three brochures, which he identifies as the Opponent’s latest marketing brochures (Exhibit JH-14). I note that each displays the trade-mark WE KNOW STUFF. Mr. Harbarenko states that these brochures have been printed in 5000 copies each and were first distributed to the public within the two months preceding the date of his affidavit. However, here is no information on the area and means of distribution.
Finally, I do not afford much significance to Mr. Harbarenko’s allegations as to the notoriety and distinctiveness of the Opponent’s trade-mark WE KNOW STUFF (paragraphs 29 and 30) and as to the Applicant not being in a position to state that she was, or is, satisfied that she is entitled to the use of the Mark (paragraph 31). In addition to being self-serving, these statements relate to the issues to be decided by the Registrar.
Affidavit of Gerry Visca
Mr. Visca is the founder, President and creative Director of Network ISG that specializes in digital branding, corporate presentation services, project management, web media development and strategic consulting. Network ISG is the digital marketing agency of the Opponent since September 2000.
Mr. Visca states that he has produced several marketing projects for the Opponent, including a CD-ROM/Video and advertisement. He deposes that he has personally met the Applicant in October 2000, when he was producing the Opponent’s CD-ROM/Video. He further states that the Applicant appears in the Opponent’s CD-ROM/Video, a copy of which is filed as Exhibit GV-1. I note that the trade-mark WE KNOW STUFF is not displayed on the CD-ROM/Video. I have watched the video and have not seen any display of the trade-mark.
Mr. Visca states that the Opponent’s Mark, which he personally notices, was part of the Opponent’s marketing campaign when his company started doing business with the Opponent in September 2000 and that he has always understood the trade-mark WE KNOW STUFF to be that of the Opponent.
Applicant’s evidence
The evidence, filed pursuant to Rule 42 of the Regulations, consists of an affidavit of the Applicant herself, sworn October 19, 2004. She has not been cross-examined.
Paragraphs 1 and 2 of the affidavit read as follows:
1. I am the founder of the slogan “WE KNOW STUFF” and have used it in my business advertising since January 2000. I am also the sole proprietor since its conception July 2003.
2. I have used “WE KNOW STUFF” as a carrying on business name since July 3, 2003.
Attached is the Applicant’s Master Business License, Exhibit AMI-1.
Exhibit AMI-1 discloses that the business name WE KNOW STUFF was registered in the name of Alice M. Iverson, a sole proprietorship, for the period of July 3, 2001 to July 2, 2006. This leads me to conclude that the reference to July 2003 at paragraph 1 may be a typographical error. If not, then I would have to conclude that the second allegation seemingly contradicts the first allegation. In any event, the mere registration of the business name does not, by itself, constitute use of WE KNOW STUFF as a trade-mark or as a trade-name. As such, it is of little assistance for the Applicant to argue in her written argument that WE KNOW STUFF is “my registered business name that I still own and operate today.”
The Applicant states operating a business specializing in computer/network consultation; computer/network troubleshooting services; computer/network installation and repair; computer/network software installation/upgrades at the customer’s premises. These correspond to the Services. The Applicant further states that she offers the Services principally in Southwestern Ontario and that there are plans to offer franchises once the trade-mark application is completed.
The Applicant states that she was an employee of the Opponent from August 30, 1999 to January 26, 2001, that from January 27, 2001 to April 30, 2001 she performed certain services for the Opponent on a part time, independent contractor basis, and that she also operated her own side business after the hours of her employment starting in December 1999. She further states:
6. The Applicant developed the trademark as early as December 1999 and started using it January 2000 (Exhibit AMI-2; Exhibit AMI-3).
7. The Applicant was the one that mentioned “We Know Stuff” and the Opponent picked up on it and started using it shortly before the Applicant left the Opponent’s employ.
The Applicant is seemingly relying on Exhibits AMI-2 and AMI-3 as supporting her corresponding allegations. Since she fails to provide any information as to the nature of each exhibit, I am left to remark that both consist of one page that appears to advertise the Services. While both exhibits display the Mark, they do not bear any date. There is also no information with respect to the distribution or circulation of these “advertisements”. Thus, I find that the exhibits may not serve as direct evidence supporting the Applicant’s allegations.
The Applicant states that she registered the domain names “weknowstuff.com” on July 24, 2001 and “weknowstuff.ca” on July 4, 2001 (Exhibits AMI-4 and AMI-5). Suffice it to say that the ownership of domain name registrations does not give the Applicant the automatic right to the registration of the Mark. It may be that the Applicant is assuming that the mere registration of a domain name qualifies as use, but this is not correct [see Modis Inc. v. Modis Communications Inc., 2004 CarswellNat 4627 (T.M.O.B.)].
At paragraphs 10 and 11, the Applicant deposes on a meeting with a Vice-President of the Opponent:
10. A Vice-President of the Opponent, David Redekop met with the Applicant to discuss her business name. (July 10, 2001) At that time he stated that the Opponent had Trade-marked WE KNOW STUFF and that he would provide the Applicant with the documentation. David Redekop also stated that “there most definitely is business for everyone, and we’ll be more productive if we’re in that state”. No trade-mark documentation was ever provided by David Redekop. (Exhibit AMI-6)
11. The Opponent also registered the following domain name, aliceiverson.com, Exhibit AMI-7. During the meeting with David Redekop on July 10, 2001, he offered to ‘trade’ the aliceiverson.com domain name for the weknowstuff.com domain name.
Exhibit AMI-6 is a printout of an email of July 10, 2001 from David Redekop to the Applicant. While Exhibit AMI-6 may not serve as evidence of the allegations contained therein, it corroborates the Applicant’s assertions at paragraph 10. Exhibit AMI-7 seems to be an excerpt printed out from the Whois database, but since the date appearing at the bottom of the page has been truncated we do not know when it was printed out. There are mentions that the record was last updated on September 15, 2001, that it expires on June 26, 2002 and that it was created on June 26, 2002. I find that Exhibit AMI-7 corroborates the Applicant’s assertion that the Opponent at one point in time registered the domain name “aliceiverson.com”. To the extent that it is difficult to conceive that registering the business name “aliceiverson.com” would be of interest to the Opponent in the operation of its business, Exhibit AMI-7 seemingly gives some legitimacy to the Applicant’s assertion at paragraph 11.
The Applicant states, and correctly so, that the Opponent’s Application No. 1,111,945 was filed on August 8, 2001, which is after her application filed on July 19, 2001 (Exhibits AMI-8 and AMI-9). In her written argument, the Applicant submits that at the date of first use claimed by the Opponent [March 1, 2000], it was well aware of her application and that the Opponent registering the trade-mark WE KNOW STUFF is a frivolous attempt to hinder her from earning an income.
The Applicant states that she has continuously used the Mark in association with the Services since at least as early as January 1, 2000 and has used the business name WE KNOW STUFF since July 7, 2003. However these statements, by themselves, fall short of evidencing use of the Mark within the meaning of s. 4(2) of the Act, or for that matter, use of the trade-name WE KNOW STUFF.
Finally, I do not afford much significance to the Applicant’s allegations with respect to the Mark having become known as her business name and as a trade-mark identifying her Services in the industry in general and to the purchasing public throughout Southwestern Ontario (paragraphs 17 and 19). In addition to being self-serving, these statements relate to the issues to be decided by the Registrar. As for the Applicant’s allegation that the Opponent at the date of filing the opposition could not be satisfied that it was entitled to use the trade-mark WE KNOW STUFF because it was well aware of Applicant’s own application for the Mark (paragraph 18), I note that the present proceedings do not decide if the Opponent can use the trade-mark WE KNOW STUFF, but rather whether the Applicant can obtain registration of the Mark.
In rounding up my analysis of the Applicant’s affidavit, I note that I fully agree with the Opponent’s submission that her allegations with respect to the use of the Mark are bald assertions that are not supported by any evidence showing use of the Mark, within the meaning of s. 4(2) of the Act, with any of the Services at any time whatsoever, including since the date of first used claimed in the application.
I shall now consider the grounds of opposition.
Section 30
The material date for considering the circumstances with respect to the grounds of opposition based upon non-compliance with s. 30 is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)]. While the legal burden is on the Applicant to show that the application complies with s. 30, there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the grounds of opposition [see Joseph E. Seagram & Sons Limited v. Seagram Real Estate Ltd. (1984) 3 C.P.R. (3d) 325 (T.M.O.B.); John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R. (3d) 293 (F.C.T.D.)].
Section 30(b)
To the extent that the relevant facts are more readily available to the Applicant, the evidentiary burden on the Opponent with respect to the first ground of opposition, which relates to non-compliance with s 30(b), is lower [see Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.O.B.)]. Also, the Opponent may rely upon the Applicant’s evidence to meet its initial burden, but the Opponent must show that the Applicant’s evidence is clearly inconsistent with the Applicant’s claim [see York Barbell Holdings Ltd. v. ICON Health & Fitness, Inc. (2001), 13 C.P.R. (4th) 156 (T.M.O.B.)].
As the Applicant is relying upon use of the Mark since January 1, 2000 (my underlining), which is a statutory holiday, the Opponent submits that it is very doubtful that the Applicant rendered any of the Services on New Year’s Day 2000. The Opponent further submits that it is also very unlikely that the Services were advertised in any printed media as print shops were surely closed on January 1, 2000. The Opponent has directed my attention to the decision Mexx International B.V. v. Poulin (2004), 35 C.P.R. (4th) 241 (T.M.O.B.), involving an opposition to a trade-mark application claiming use in Canada since July 1, 1997, in which Board Member Carrière wrote:
[Translation]
20 In Thomson Research Associates Ltd. v. Daisyfresh Creations Inc./ Créations Daisyfresh Inc. (1983), 81 C.P.R. (2d) 27, Mr. Martin, a member of the Trade-marks Opposition Board, concluded that the reference to a date of first use of a trade-mark that corresponds to a statutory holiday raises a doubt about the veracity of this claim especially when there is no evidence of use of the Mark on that date. This doubt is enough to shift the burden of proof onto the Applicant, who must establish that the Mark was used beginning on July 1, 1997 [See Hearst Communications Inc. v. Nesbitt Burns Corp. (2000), 7 C.P.R. (4th) 161 (T.M. Opp. Bd.)]. As there is no evidence of use of the Mark beginning on July 1, 1997, I must find that the first ground of opposition, described above, is successful […].
Similar comments apply to the evidence before me; with the outcome that I find that the Opponent has discharged its initial onus of evidencing that the Applicant has not used the Mark in Canada since January 1, 2000. Since the Applicant has not provided any evidence that could lead to a contrary conclusion, she has not discharged her burden to prove that the ground of opposition should not prevent registration of the Mark. Therefore, I maintain the first ground of opposition.
Section 30(i)
Although the parties seemingly disagree on the exact dates of the period of the Applicant’s employment as an independent contractor, they agree that the Applicant was an employee of the Opponent from August 30, 1999 to January 26, 2001, Thus, at the date of first use claimed in the application, the Applicant was an employee of the Opponent. This employee/employer relationship is the basis for the Opponent’s argument that such use would be in breach of the Applicant’s duties to the Opponent. In that regard, the Opponent has directed my attention to the following excerpt of the decision Bee Chemical Co. v. Plastic Paint & Finish Specialties Ltd. (1978), 41 C.P.R. (2d) 175 (Ont. H.C.) at p. 4:
“[…] an employee owes an obligation to his employer, quite apart from any contract, to be faithful and honest in his dealings with his employer and owes a duty not to use special information which he obtained while he is in that employ for his own purposes and contrary to the interest of the employer”.
While I am not prepared to make any findings with respect to the respective duties of parties involved in an employee/employer relationship, the former relationship between the Applicant and the Opponent is directly relating to an issue involving the registration of the Mark. Accordingly, I should consider the evidence before me to decide whether this former relationship precluded the Applicant from declaring in good faith that she was entitled to the use of the Mark in Canada in association with the Services.
The Opponent has directed my attention to the decision Super Seer Corp. v. 545401 Ontario Limited (2000), 6 C.P.R. (4th) 560 in which a license agreement existing between the parties was relied upon to support a ground of opposition based upon s. 30(i). In accepting the ground of opposition with respect to one application, Mr. Partington, the former Chair of this Board, commented as follows:
14 Having regard to the license agreement between the parties and the fact that Mr. Reuber, President of the applicant, was aware of the history of the SUPER SEER mark in view of his prior partnership with Mr. Smith and his involvement in SEER INDUSTRIES LIMITED, and considering further that the applicant's mark SEER & Design is almost identical in appearance to the opponent's trade-mark SUPER SEER & Design, I find that the applicant has failed to meet the legal burden upon it in respect of the Subsection 30(i) ground in relation to its trade-mark SEER & Design.
In the present case, there is no evidence that there were provisions in the Independent Contractor Agreement specifically dealing with the ownership or use of any trade-marks following termination of the said agreement. As such, there is some distinction between the present case and the Super Seer Corp. decision. However, as in the Super Seer Corp decision, the evidence before me shows that as a result of her prior relationship with the Opponent, the Applicant was aware of the Opponent’s activities surrounding the trade-mark WE KNOW STUFF.
Not surprisingly, the Applicant’s allegations with respect to her rights either in or to the Mark are conflicting with Mr. Harbarenko’s allegations. As previously discussed, Mr. Harbarenko states that he developed the trade-mark WE KNOW STUFF as early as February 1, 2000 and that the Applicant took part in subsequent discussions and brainstorming sessions involving the trade-mark. The Applicant states that she developed the Mark as early as December 1999, started using it January 2000, that the Opponent picked up on the Mark and started using it shortly before she left the Opponent’s employment. In Siebruck Hosiery Ltd. v. Just Hosiery Inc. (1996), 66 C.P.R. (3d) 398 (T.M.O.B.), Board Member Herzig made the following comments concerning the evidence before him:
In the absence of cross-examination, there is little to assist me in determining the legitimacy of the parties’ conflicting allegations. However, I prefer Mr. Lazar’s testimony to that of Stephen and Paul Harbour because it is more detailed and more comprehensive, leaves fewer questions unanswered, and because the exhibits to Mr. Lazar’s affidavit corroborate his testimony to a greater extend than do the exhibits attach to Mr. Harbour’s affidavit.
Similar comments apply to the evidence before me, with the outcome that I prefer Mr. Harbarenko’s testimony to that of the Applicant. I would add that Mr. Harbarenko’s testimony is corroborated in part by Mr. Visca’s testimony.
In view of the above, I find that the Opponent has discharged its initial onus of evidencing that at the filing date of the application, the Applicant could not truthfully state that she was satisfied that she was entitled to use the Mark. As I am not satisfied that the Applicant has provided any evidence that could lead to a contrary conclusion, I maintain the second ground of opposition.
As the opposition has already succeeded under the s. 30(b) and s. 30(i) grounds of opposition, I will not consider further any of the remaining grounds of opposition.
Conclusion
Having regard to the foregoing, and with the authority delegated to me under s. 63(3) of the Act, I refuse the application to register the Mark pursuant to s. 38(8) of the Act.
DATED AT BOUCHERVILLE, QUEBEC, THIS 1st DAY OF SEPTEMBER 2006.
Céline Tremblay
Member
Trade-marks Opposition Board