IN THE MATTER OF AN OPPOSITION
by UFO Contemporary Inc. to application No.
690,458 for the trade-mark UFC USER FRIENDLY
CLOTHING filed by Sears Canada Inc.
On September 27, 1991, the applicant, Sears Canada Inc., filed an application to register the trade-mark UFC USER FRIENDLY CLOTHING based on proposed use in Canada for the following wares:
clothing namely, shirts, pants, skirts, shorts, jeans, overalls, sweat suits, sweat tops, sweat pants, coats, jackets, dresses, bathing suits and cover-ups.
The application was amended to include a disclaimer to the word CLOTHING and was subsequently advertised for opposition purposes on December 2, 1992.
The opponent, UFO Contemporary Inc., filed a statement of opposition on January 26, 1993, a copy of which was forwarded to the applicant on February 24, 1993. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the opponent’s trade-marks UFO & Design and UFO registered under Nos. 186,644 and 186,795 for the following wares:
(1) clothing, namely, trousers, pants and blouses and shirts for men and women (2) jackets for men and women, and children’s clothing, namely, trousers, blouses, shirts and jackets.
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the two registered trade-marks noted above previously used in Canada by the opponent. The third ground is that the applied for trade-mark is not distinctive in view of the foregoing.
The applicant filed and served a counter statement. As its evidence, the opponent filed an affidavit of its Secretary Treasurer, Evelyn Brody, and copies of its two registrations. As its evidence, the applicant filed the affidavits of Terry Lynn Edwards and Frederick T. Jepson. As evidence in reply, the opponent submitted an affidavit of its Vice-President, Lorna Brody. Ms. Brody was cross-examined on her affidavit and the transcript of that cross-examination forms part of the record of this proceeding. Both parties submitted a written argument but no oral hearing was conducted.
As for the first 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. Finally, the more relevant of the opponent’s registered marks is UFO and thus a consideration of the issue of confusion between that mark and the applied for mark will effectively decide the outcome of the first ground of opposition.
As for Section 6(5)(a) of the Act, the applicant’s mark UFC USER FRIENDLY CLOTHING is inherently distinctive. However, given the somewhat laudatory nature of the words USER FRIENDLY CLOTHING and the inherent weakness of the initials UFC, it is not an inherently strong mark. The applicant has evidenced sales totalling approximately $3 million of its UFC USER FRIENDLY CLOTHING boys’ clothing in 1992 and 1993 through its retail outlets and through catalogue sales. However, the applicant’s retail flyers advertising these goods illustrate the trade-mark U.F.C. rather than the applied for mark (see Exhibits C-1 through C-3 to the Jepson affidavit). The applied for mark does appear in some retail catalogues (see Exhibits D-1 through D-7 to the Jepson affidavit) although the emphasis is invariably on the letters U.F.C. Thus, I can conclude that the applicant’s mark has become known to some extent in Canada.
The opponent’s trade-mark is also inherently distinctive since the accepted meaning of the word UFO (i.e. - unidentified flying object) does not suggest or describe the opponent’s wares. Evelyn Brody evidences sales of UFO clothing items in Canada for the period 1988-1993 totalling about $15 million. A portion of that total comprises sales of children’s clothing items by former registered users of the opponent’s mark. Evelyn Brody states that the opponent’s advertising activities in the United States (e.g. - magazines and trade shows) have been viewed by Canadians but she did not provide any reliable evidence to support that assertion. She does note, however, that the opponent’s former registered users spent minor sums on advertising for the UFO trade-mark for the period 1988-1992. Thus, I am able to conclude that the opponent’s trade-mark UFO has become known to some extent in Canada.
The length of time the marks have been in use favors the opponent. As for the wares and trades of the parties, it is the applicant’s statement of wares and the opponent’s statement of wares in registration No. 186,795 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 opponent’s registered wares and the applicant’s applied for wares are very similar. Even when the actual trades of the parties are considered, there is a significant overlap between the parties’ wares. The applicant’s sales to date have been of boys’ clothing and a portion of the opponent’s UFO sales have been of children’s clothing.
The trades of the parties would, or could, overlap. Evelyn Brody states that the opponent’s wares are sold through clothing boutiques, chain stores, department stores and catalogue retailers. The applicant contended that its wares are sold only through its catalogues and its retail outlets. However, the applicant’s statement of wares is not so restricted. More importantly, the opponent’s statement of wares is not restricted to any particular channels of trade. Furthermore, the affidavit of Evelyn Brody points to actual overlap in the trades of the parties since the applicant has previously purchased UFO wares, presumably for resale.
As for Section 6(5)(e) of the Act, I consider there is a fair degree of resemblance between the marks at issue both visually and phonetically. The first and dominant component of the applicant’s mark is the acronym UFC which is very similar to the opponent’s mark UFO. The somewhat laudatory component USER FRIENDLY CLOTHING does little to distinguish the applicant’s mark from the opponent’s. This is particularly true when one views the applicant’s mark as shown on product labels used to date where the words USER FRIENDLY CLOTHING appear below the letters U.F.C. in much smaller type (see Exhibits A-1 through A-4 to the Jepson affidavit). Furthermore, as noted by the opponent, the manner in which the applicant uses its mark emphasizes the visual similarity with the opponent’s mark. The letter C as a it appears on the applicant’s product labels is somewhat closed off such that it resembles the letter O to some extent. The ideas suggested by the marks differ since the opponent’s mark is an abbreviation for the phrase “unidentified flying object” and the applicant’s mark suggests that the applicant’s clothing is comfortable or “user friendly.”
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 resemblance between the wares, trades and marks of the parties and the extent to which the opponent’s mark has become known in Canada, I find that the applicant has failed to satisfy the onus on it to show that its applied for mark is not confusing with the opponent’s registered mark. The first ground is therefore successful.
The remaining grounds both turn on the issue of confusion, the material time for the second ground being the filing date of the applicant’s application and the material time for the final ground being the filing of the opposition. In my view, the circumstances existing at those earlier dates are not materially different from those I reviewed in assessing the first ground. Thus, I find that the second and third grounds are also successful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 21st DAY OF MAY, 1997.
David J. Martin,
Member,
Trade Marks Opposition Board.