IN THE MATTER OF AN OPPOSITION by Manufacturier de bas de nylon Doris Ltée/Doris Hosiery Mills Ltd. to Application No. 1,201,602 for the trade-mark SUZY’S SECRET filed by Suzy’s Inc.
[1] On December 15, 2003, Suzy’s Inc. (the Applicant) filed an application to register the trade-mark SUZY’S SECRET (the Mark) based upon proposed use. The Mark has been applied for registration in association with the following:
Wares: women’s wearing apparel, namely, blouses, skirts, vests, pants, shorts, t-shirts, hats, dresses, sweaters, coats, lingerie, bras, panties, swimwear.
Services: retail clothing store services.
[2] The application was advertised in the Trade-marks Journal of August 11, 2004.
[3] Manufacturier de bas de nylon Doris Ltée/Doris Hosiery Mills Ltd. (the Opponent) filed a statement of opposition on January 10, 2005. The grounds of opposition can be summarized as follows:
1. The application does not comply with the requirements of s. 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) in that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the wares and services in view of the prior use and/or registration of the Opponent’s trade-marks.
2. The Mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with 42 registered trade-marks of the Opponent, as more fully identified at Annex A of this decision.
3. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act because at the date of filing of the application, the Mark was confusing with 43 trade-marks, as more fully identified at Annex B of this decision, previously used in Canada by the Opponent and/or its licensees.
4. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(b) of the Act because, at the date of filing of the application, the Mark was confusing with 2 trade-marks, as more fully identified at Annex C of this decision, in respect of which applications were previously filed in Canada.
5. The Mark does not distinguish the Applicant’s wares and services from the wares of others, and more particularly those of the Opponent.
[4] The Applicant filed a counter statement denying each ground of opposition.
[5] The Opponent's evidence pursuant to Rule 41 of the Trade-marks Regulations (the Regulations) consists of affidavits of Jack Hasen and Warren Chisling, each dated October 26, 2005. The Applicant obtained an order for the cross-examination of the affiants, but it did not proceed with the cross-examinations.
[6] The Applicant’s evidence pursuant to Rule 42 of the Regulations consists of an affidavit of Cheryl Ng dated April 7, 2006. The Opponent obtained an order for her cross-examination, but it did not proceed with the cross-examination.
[7] The Opponent’s evidence pursuant to Rule 43 of the Regulations consists of an affidavit of Michel Poirier dated December 8, 2006.
[8] Both parties filed written arguments and were represented at an oral hearing.
Opponent’s evidence in chief
[9] I am summarizing hereafter the allegations contained in the Hansen affidavit and Chisling affidavit and exhibits thereto. I am disregarding the parts wherein each affiant expresses his view on the likelihood of confusion.
The Hasen affidavit
[10] The Opponent has continuously employed Mr. Hasen since 1979. He has been President of the Opponent since 1991.
[11] Mr. Hasen states that the Opponent commenced using the trade-mark SECRET in association with ladies’ hosiery in 1967. Over the years, the Opponent adopted a series of trade-marks incorporating the word “secret” in combination with other words. Mr. Hasen states that all these trade-marks, together with the trade-mark SECRET and design variations thereof, form part of a family of trade-marks to which he refers as the SECRET Family of Trade-marks. He specifically identifies 47 trade-marks included in the SECRET Family of Trade-marks and provides copies of 46 corresponding registrations and 1 corresponding application, as the case may be [Exhibit JH-4]. Having reviewed Exhibit JH-4, I note that it includes copies of the 42 registrations alleged in support of the registrability ground of opposition. It also includes a copy of Application No. 1,114,859 and reveals that Application No. 1,184,709 matured to registration on February 23, 2005 (No. TMA633,532). Both applications are alleged under the s. 16(3)(b) ground of opposition
[12] Mr. Hasen states that the trade-mark SECRET, alone or in combination with one or more of the trade-marks forming part of the SECRET Family of Trade-marks, has been used by the Opponent itself and/or through licensees as follows: since at least as early as 1967 in association with a variety of ladies’ hosiery products including, but not limited to, pantyhose, tights, thigh highs, knee highs, ankle highs, footlets, toe coverings and socks; since 1978 in association with men’s hosiery products; and since 1986 in association with children’s hosiery products. Per paragraph 5 of the Hasen affidavit, any subsequent reference to the “SECRET Trade-marks” throughout is a collective reference to the trade-mark SECRET and the SECRET Family of Trade-marks.
[13] I summarize as follows Mr. Hasen’s testimony with respect to the continuous expansion of the Opponent’s product line associated with the SECRET Trade-marks:
• In or around December 1998, the Opponent granted a license to Doris Intimates Inc./Lingerie Féminine Doris Inc. (“Doris Intimates”) to use the SECRET Trade-marks including, but not limited to, SECRET INTIMATES (TMA531,815), SECRET DELUXE (TMA572,245), HER CHOICE/SON CHOIX (TMA525,747), SECRET Design (TMA285,242) and SECRET (TMA603,410) in association with women’s intimate apparel including, but not limited to, underwear, undergarments, lingerie, chemises, camisoles, foundation slips, thongs, boxer shorts, bras, sleepwear and loungewear. Doris Intimates has been using the trade-marks under the Opponent’s authority and control since at least as early as February 1999.
• The Opponent granted a license to S.O.X. Marketing Inc. (S.O.X.) to use the SECRET Trade-marks in association with women’s, men’s and children’s hosiery products. S.O.X. has been using the trade-marks under the Opponent’s authority and control since at least as early as June 1990. Representative packaging and labelling for various hosiery products sold by S.O.X. to retailers throughout Canada are filed as Exhibits JH-5 to JH-8.
• In or around June 1997, the Opponent granted a license to Medifit Marketing Inc. (Medifit) to use the trade-mark SECRET MEDI-SUPPORT in association with graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings, and knee highs. Medifit has been using the trade-mark under the Opponent’s authority and control since at least as early as June 1997. Representative samples of packaging for various medical hosiery products sold by Medifit to retailers throughout Canada are filed as Exhibits JH-9 and JH-10.
• The Opponent expanded its product line to include lingerie wash bags and hosiery gloves. Representative samples of packaging for lingerie wash bags and hosiery gloves are filed as Exhibit JH-11. Mr. Hasen specifically states that packaging of this type have been in use since 1986 and are still being used for wash bags [paragraph 13].
[14] Per paragraph 14 of the Hasen affidavit, any subsequent reference to “SECRET Products” throughout is a collective reference to intimate apparel, including hosiery, pantyhose, underwear undergarments, lingerie, sleepwear, loungewear, knitwear and related accessories.
[15] Mr. Hasen states that the SECRET Trade-marks are used by being affixed to the SECRET Products themselves or displayed on their packaging. He files a photocopy of a photograph illustrating a representative product display in the early 1980’s [Exhibit JH-12] and representative samples of packaging [Exhibits JH-13 to JH-37]. He specifically identifies the trade-mark(s), the product and the period of use of each packaging.
[16] According to the Hasen affidavit, the SECRET Products are sold through thousands of retail outlets in Canada, more particularly through major department and chain stores, such as The Bay, Sears, Zellers and Wal-Mart, in specialty hosiery stores, lingerie boutiques, drug stores, grocery chains, independent dealers and rack jobbers such as Nivel Inc. (who in turn deal with chain stores or retail accounts such as Jean Coutu). A non-exhaustive chart of retailers in Canada is filed as Exhibit JH-38. The SECRET Products are also sold through catalogue or mail order services provided by entities such as Sears, Avon and Amway. Mr. Hasen states that SECRET Products have been advertised and shown in catalogues since at least 1985. He files excerpts from representative Sears and Avon catalogues [Exhibit JH-39].
[17] Since 1999 to the date of the Hasen affidavit, Doris Intimates has sold in Canada in excess of 3,388,000 units of intimate apparel in association with the SECRET Trade-marks, which represented sales value in excess of $21,308,000.
[18] According to the yearly breakdown provided in the affidavit, the Opponent’s aggregate sales of SECRET Products to retailers, excluding sales by its licensees, totalled over $461,353,379 from 1986 to July 31, 2005, which represented 21,478,132 dozens of units of SECRET Products. As the Opponent posts its sales of SECRET Products by category of products, not by trade-mark, Mr. Hasen provides a yearly breakdown of the approximate sale figures of the following categories of SECRET Products to retailers between 1997 and July 2005: 1) basic pantyhose; 2) knee highs; 3) tights and trouser socks; 4) anklets and footlets; 5) capri, panty, leggings and garter belt; and 6) wash bags and cotton gloves. A sampling of invoices of representative sales of SECRET Products by the Opponent to retailers from 1993 to 2005 is attached as Exhibit JH-40.
[19] I summarized as follows the means of promotion and advertisement of SECRET Products by the Opponent since 1972 as detailed by Mr. Hasen:
• media, including radio, television, magazines, newspapers;
• signage such as billboards and mall posters [Exhibit JH-44];
• subway boards and signs in or on transit shelters;
• marketing support to retailers by providing product knowledge and assistance in planning sales programs and setting up product displays, and by providing in-store signs, posters, displays and other materials [Exhibits JH-45 to JH-50], including material used when introducing new SECRET Products and offering special promotion on SECRET Products [Exhibits JH-51 to JH-57];
• cooperative advertising with retailers, including advertisement in newspapers and direct mail flyers [Exhibit JH-58], cooperative efforts with Sears in 1999 [Exhibits JH-41 to JH-43] and with Wal-Mart since 1994 [Exhibits JH-59 to JH-60].
[20] According to the yearly breakdown provided in the affidavit, the Opponent’s total advertising expenditures amounted to $30,487,543 from 1986 to July 31, 2005.
[21] Mr. Hasen states that the Opponent is one of the largest manufacturers of hosiery and pantyhose in Canada, consistently ranking first in market share for hosiery in Canada over the last decade, “…such that SECRET hosiery…has become the largest selling brand of hosiery in Canada.” [paragraph 30]. He opines that the SECRET Trade-marks have become extremely well-known, if not famous, throughout Canada [paragraph 31].
The Chisling affidavit
[22] Mr. Chisling has been the Secretary-Treasurer of Doris Intimates since June 30, 1995 and the Chief Financial Officer of the Opponent since 1992.
[23] Mr. Chisling corroborates Mr. Hasen’s written testimony with respect to the licensed use by Doris Intimates of the SECRET Trade-marks in association with women’s intimate apparel since at least as early as February 1999. He provides representative samples of packaging and hang tags as specimens of use by Doris Intimates and specifically identifies the trade-mark(s), the product and the period of use of each specimen [Exhibits WC-2 to WC-5].
[24] Mr. Chisling states that Doris Intimates sells SECRET Products through thousands of retail outlets in Canada, more particularly through chain stores, such as Wal-Mart and London Drugs, in lingerie boutiques, drug stores such as Shoppers Drug Mart/Pharmaprix, grocery chains such as A&P, and rack jobbers such as Nivel Inc. (who in turn deal with chain stores or retail accounts such as Jean Coutu). A non-exhaustive chart of retailers in Canada is attached as Exhibit WC-6.
[25] According to the yearly breakdown provided in the affidavit, Doris Intimates’ aggregate sales of SECRET Products to retailers throughout Canada totalled over $21,312,122 from 1999 to July 31, 2005, which represents 282,311 dozens of units of SECRET Products. A sampling of invoices of representative sales of SECRET Products by Doris Intimates is attached as Exhibit WC-7. I note that the sales figures provided in the Chisling affidavit have not been divided by category of SECRET Products.
[26] Mr. Chisling deposes that advertising and promotion of the SECRET Products is done through the Opponent’s marketing department.
Applicant’s evidence
The Ng affidavit
[27] Ms. Ng is a student-at-law articling with the agents for the Applicant.
[28] Ms. Ng files the first page of a Canada411.ca telephone directory search that she conducted on December 21, 2005 with respect to the word “secret” and goes on to state that there were 434 results for the search [paragraph 2, Exhibit “A”]. She files printouts for the following businesses [paragraph 3, Exhibit “B”]:
a) Secret Intimes, Châteauguay, QC.
b) Secret Romance, Wallaceburg, ON.
c) Boutique Secret De Femme, Sainte-Agathe-des-Monts, QC.
d) Tiroirs Secrets (Les), Granby, Qc.
e) My Secrets Lingerie, New Glascow, NS.
f) Cleopatra Secrets, Nepean, ON.
g) Satin Secrets Lingerie, Happy Valley-Goose Bay, NF.
h) Secrets Int, Pelham, ON.
i) Lingerie Secrets, Prince George, BC.
j) Secrets From Your Sister, Toronto, ON.
k) Secret Drawers Lingerie Ltd., Courtenay, BC
l) Sammi’s XXXtra Secret, Barrie, On.
[29] On December 14, 2005, Ms. Ng called the store Secrets From Your Sister. She spoke with the owner who informed her that the store has been selling lingerie for approximately seven years. Ms. Ng attended at the store on December 16, 2005. She files photographs of the front sign [Exhibit “C”], a lingerie item that she purchased [Exhibit “D”], the invoice, the store business card and a bag [Exhibit “E”]. She also files the Corporation Profile Report for Secrets From Your Sister Inc. [Exhibit “F”].
[30] Ms. Ng deposes on her telephone conversations of December 14 and 15, 2005 with owners or employees of other stores listed in Exhibit “A”. I am summarizing her written testimony as follows:
• Secret Intimes is a lingerie boutique opened approximately 13 years ago;
• Secret Romance opened in February 2005 and sells lingerie;
• Boutique Secret de Femme has been selling lingerie for approximately 12 years;
• Tiroirs Secrets (Les) has been selling lingerie for approximately 6 years;
• Cleopatra Secrets has been selling lingerie for approximately 1 year;
• Satin Secrets has been selling lingerie for approximately 1 year;
• Secrets International has been selling lingerie for approximately 8 years;
• Sammi’s XXXtra Secret has been operating for approximately 5-10 years;
• Secret Drawers Lingerie Ltd has been operating for approximately 10 years; and
• My Secrets Lingerie has been operating as a lingerie store since 1991.
[31] The following documents are introduced into evidence by Ms. Ng:
- Corporation Profile Report and Registration under the Business Names Act for Secrets Intimes Inc. [Exhibit “G”];
- BC Company Summary for Secrets Drawers Lingerie Ltd. [Exhibit “H”];
- certified copy of Registration No. TMA461,428 for the trade-mark SUZY SHIER owned by the Applicant [Exhibit “I”].
- extracts from the website “www.suzyshier.com” [Exhibits “J” and “K”];
- extracts from the website “www.lamoursecret.com” [Exhibit “L”];
- extracts from the website “www.secretsinlace.com” [Exhibits “X”] and the corresponding WHOIS report [ExhibitY”];
- extracts from the website “www.intimatesecretslingerie.com” [Exhibit “Z”] and the corresponding WHOIS report [Exhibit “AA”];
- printouts from the Canadian Trade-marks Database of Application Nos. 658,952 and 655,129 for the trade-mark SUZY’S SECRET filed in 1990 by La Senza Inc. [Exhibit “BB”]. I note that both applications were abandoned in 1992.
[32] Ms. Ng conducted an online search for the words “olga secret” and “Canada” on the Google search engine on December 13, 2005. She deposes that there were “about 1,370” entries and files the first few pages of the search results [Exhibit “M”]. She further conducted a search on JC Penney’s website for the word “secret” [Exhibit “N”] and placed an order for an OLGA SECRET SHAPERS BRA [Exhibit “O”]. She states that: the bra was delivered at an address in Toronto with an invoice dated December 15, 2005; the item description on the invoice displays the trade-mark SECRET SHAPER; the bra was packaged in a bag prominently displaying the trade-mark SECRET SHAPER; and a tag bearing the trade-mark was attached to the bra [Exhibit “P”].
[33] Paragraphs 25 to 28 of the Ng affidavit serve to introduce evidence with respect to the trade-mark VICTORIA’S SECRET, including: extracts from Victoria’s Secret’s website printed on December 1, 2005 [Exhibit “Q”]; two Victoria’s Secret’s catalogues [Exhibit “R”]; lingerie that Ms. Ng purchased on December 1, 2005 through Victoria’s Secret’s website [Exhibit “S”] as well as the shipment confirmation, the invoice and delivery bag [Exhibit “T”]; certified copies of Registration Nos. TMA538,755 and TMA432,093 for the trade-mark VICTORIA’S SECRET [Exhibits “U” and “V”]; and the VHS tape of the VICTORIA’S SECRET fashion show aired on December 6, 2005 that she videotaped.
[34] Ms. Ng concludes her affidavit by filing a copy of a Joint Notice of Discontinuance and Minutes of Settlement (the Minutes of Settlement) of Court Action No. T-2828-93 with the Opponent and Victoria’s Secret Stores, Inc. as parties to the action [Exhibit “CC”].
Opponent’s evidence in reply
The Poirier affidavit
[35] The Opponent has employed Mr. Poirier since 1972. He has been President of the Opponent since January 2006. He was before Vice President for 18 years.
[36] Mr. Poirier states that of the businesses listed at paragraph 3 of the Ng affidavit, four were known to him prior to his reading of the Ng affidavit [paragraph 3]. He goes on to state that the Opponent had sent cease and desist letters to these four businesses, namely Secrets From Your Sister Inc., Lingerie Secrets, My Secrets Lingerie Limited and Secrets Int [paragraph 4, Exhibits MP-1 to MP-4]. He states that Lingerie Secrets, My Secrets Lingerie Limited and Secrets Int agreed “to voluntarily cease using the name which was infringing the SECRET Family of Trade-Marks” and that an action in the Federal Court of Canada “is about to be issued” with respect to Secrets from your Sister Inc. [paragraph 5]. He goes on to state that the Opponent is “currently assessing the allegations of infringing use of the SECRET Family of Trade-marks” by the other businesses mentioned at paragraph 3 of the Ng affidavit.
[37] According to Mr. Poirier, for the last 25 years the Opponent has been sending many cease and desist letters and undertaking numerous infringement actions, expungement and/or opposition proceedings in order to protect its SECRET Family of Trade-marks. As examples of such proceedings, Mr. Poirier provides particulars of registrations that were expunged or voluntary amended as a result of expungement proceedings under s. 45 of the Act [paragraphs 8 to 11, Exhibit MP-5 to MP-7]. He also provides particulars of trade-mark applications that were opposed by the Opponent along with the outcome or status of the opposition proceedings [paragraphs 12 to 28, 33 and 34, Exhibits MP-8 to MP-20]. I note that paragraph 28 of the Poirier affidavit refers to an opposition to Application No. 759,330 for the trade-mark VICTORIA’S SECRET filed by V Secret Catalogue, Inc., which was voluntarily withdrawn by the Opponent. Mr. Poirier also provides particulars of court proceedings brought before the Federal Court of Canada [paragraph 20] and the Superior Court of Québec [paragraph 32] along with their outcome or status. Paragraph 29 refers to an action brought against V Secret Catalogue, Inc., Victoria’s Secret Stores Inc. and Victoria’s Secret Catalogue, LLC, which was subsequently discontinued.
[38] Mr. Poirier states that proceedings involving the trade-mark VICTORIA’S SECRET were settled in March 2000 and the parties have undertaken to keep confidential the terms of the settlement agreement [paragraph 30]. He goes on to state that Joint Notice of Discontinuance and Minutes of Settlement were filed in the Federal Court (File No. T-2828-93) [paragraph 31].
[39] In oral argument, the Applicant submitted that the Poirier affidavit is not strictly confined to matters in reply to the Applicant’s evidence. The Applicant argued that by providing information with respect to proceedings involving parties other than those referred to in the Ng affidavit, the Opponent is unfairly splitting its case by seeking to rely on Rule 43 to introduce evidence that it should have filed as evidence in chief. In reply, the Opponent argued that because the Ng affidavit purports to evidence common adoption of “secret” as a component of third parties’ trade-marks and trade-names, evidence with respect to steps taken over the years by the Opponent to enjoin any third parties from infringing the SECRET Trade-marks constitutes proper evidence in reply. I agree with the Opponent. Thus I accept the Poirier affidavit as Rule 43 evidence.
Onus
[40] There is an initial evidential burden on the Opponent to establish the facts relied upon in support of the grounds of opposition. Once this initial onus is satisfied, the Applicant has the burden to prove that the particular grounds of opposition should not prevent registration of the Mark [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.) and Wrangler Apparel Corp. v. The Timberland Company (2005), 41 C.P.R. (4th) 223 (F.C.)].
Material dates
[41] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/s. 30 – 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.)];
• s. 38(2)(b)/s. 12(1)(d) – the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)];
• s. 38(2)(c)/s. 16(3)(a) and 16(3)(b) – the filing date of the application [see s. 16(3)];
• s. 38(2)(d)/non-distinctiveness – the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
Analysis of the grounds of opposition
Non-compliance with s. 30 of the Act
[42] The Opponent did not allege that the Applicant had any knowledge of the Opponent’s trade-marks or adopted the Mark knowing it to be confusing with the Opponent’s trade-marks. In any event, where an applicant has provided the statement required by s. 30(i) of the Act, in my opinion the ground of opposition should only succeed in exceptional cases such as where there is evidence of bad faith on the part of an applicant [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155] As this is not such a case, I dismiss the ground of opposition based upon non-compliance with s. 30(i) of the Act.
Registrability
[43] I consider that the Opponent’s case with respect to this ground of opposition is strongest when considering the trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,410. I have exercised the Registrar’s discretion to confirm that these registrations are in good standing as of today’s date. Since the Opponent has discharged its initial burden with respect to this ground of opposition, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion. The determination of the issue of confusion between the Mark and the trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,410 will effectively decide the ground of opposition.
[44] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[45] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 (S.C.C.) for a thorough discussion of the general principles that govern the test for confusion].
[46] Unless indicated otherwise, any reference to the trade-mark SECRET throughout my assessment of the surrounding circumstances is a collective reference to the Opponent’s trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,410.
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which they have become known
[47] The word “secret” is a common word in the English and French languages. However, “secret” is not in any way descriptive or suggestive of the Opponent’s registered wares. Thus, the Opponent’s trade-mark SECRET is inherently distinctive. Though “suzy” is a given name, the Mark is also inherently distinctive.
[48] The strength of a trade-mark may be increased by means of it becoming known through promotion or use. The Applicant has not evidenced any use of the Mark subsequent to the filing of the application. By contrast, the Opponent has evidenced widespread use and advertising of its trade-mark SECRET.
s. 6(5)(b) - the length of time the trade-marks have been in use
[49] This factor clearly favours the Opponent.
s. 6(5)(c) and (d) - the nature of the wares, services or business and the nature of the trade
[50] It is the statement of wares and services in the application and the statement of wares in the registrations that govern the assessment of the likelihood of confusion under s. 12(1)(d) of the Act [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[51] The Applicant’s wares “lingerie”, “bras”, “panties” are overlapping with, if not identical to, “undergarments” (Registration No. TMA603,410). They are also closely related to ladies’ hosiery (Registration Nos. TMA 151,062 and TMA298,736) [see Manufacturier de bas de Nylon Doris Ltée, supra.]. Although the Applicant’s wares “women’s wearing apparel, namely, blouses, skirts, vests, pants, shorts, t-shirts, hats, dresses, sweaters, coats, […] swimwear" do differ from the Opponent’s registered wares, I acknowledge that they are related.
[52] Since the Mark is proposed to be used in association with women’s wearing apparel and retail clothing stores, the application itself supports the Opponent’s submissions that there is an overlap between its registered wares and the Applicant’s services.
[53] The Opponent’s evidence demonstrates that its wares are sold through retail outlets, including department and chain stores, speciality hosiery stores, lingerie boutiques, drug stores, grocery chains, and drugstores. The Applicant did not introduce evidence with respect to the channels of trade associated with the Mark.
[54] The Applicant submits that “blouses, skirts, vests, pants, shorts, t-shirts, hats, dresses, sweaters, coats, swimwear” are not typically sold in hosiery stores, lingerie boutiques, grocery stores and drugstores. It further submits that in department stores these clothing items would be sold in departments completly separate and apart from departments where intimate apparel, hosiery, socks and tights are sold. While focussing on the Opponent’s trade-mark SECRET, I am mindful of other extant registrations alleged by the Opponent covering “activewear” (Nos. TMA502,880 for SECRET FIT and TMA478,262 for HER CHOICE BY SECRET) or “casual wear” (No. TMA615,475 for CRAZE BY SECRET).
[55] In oral argument, the Applicant further submitted that the Opponent did not evidence that the SECRET Products are sold in the SUZY SHIER retail stores of the Applicant. In reply, the Opponent submitted that the Applicant did not evidence the contrary.
[56] In the absence of evidence from the Applicant, I conclude that the channels of trade for the wares associated with the Mark potentially overlap with the Opponent’s channels of trade.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[57] In most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145, conf. 60 C.P.R. (2d) 70 (F.C.T.D.)]. Although the trade-marks have to be considered in their entirety, it is well established that the first component is often considered more important for the purpose of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)].
[58] The Applicant contends that the word “suzy’s” clearly distinguishes the Mark from the Opponent’s trade-mark. The Applicant also argues that the Mark is distinguishable as none of the SECRET Trade-marks involve the name of a women followed by the possessive. The Opponent contends that there is a high degree of similarity because its trade-mark SECRET is entirely included in the Mark.
[59] In its written argument, the Applicant refers to the decision Manufacturiers de Bas de Nylon Doris Ltée v. Warnaco Inc. (2004), 38 C.P.R. (4th) 519 (F.C.T.D.) involving an appeal of the Registrar’s decision to refuse an application filed by the Opponent for the registration of the trade-mark SECRET in association with underwear, undergarments and lingerie. In oral argument, the Applicant directed my attention to the fact that, in allowing the appeal, Justice O’Reilly accepted that consumers would be unlikely to connect the trade-mark SECRET with Warnaco’s trade-mark SECRET SHAPERS because Warnaco always identified its product with the name Olga. By analogy, the Applicant argued that because of the word “suzy’s” in the Mark, consumers would be unlikely to connect the latter with the trade-mark SECRET. In reply, the Opponent argued that the aforementioned decision supports its position in the present case. More particularly, the Opponent noted that the evidence led Justice O’Reilly to find that consumers would probably not believe that undergarments sold under the trade-mark SECRET derived from Warnaco. By analogy, the Opponent argued that its evidence in the present case should lead to the conclusion that consumers would be likely to believe that the wares associated with the Mark derived from the Opponent. Suffice it to say that the issue of confusion between the Mark and the Opponent’s trade-mark SECRET is a question of probabilities and surrounding circumstances based on the particular facts of this case. In other words, each case must be decided upon its own merit.
[60] Having considered both parties submissions, I acknowledge that the Mark includes the entirety of the Opponent’s trade-mark SECRET. However, I agree with the Applicant that the fact that the word “secret” follows the name “Suzy” in the possessive form results in differences between the trade-marks. In the end, considering the degree of resemblance between the trade-marks as a matter of first impression and not of close scrutiny, I find that the Mark is fairly different from the trade-mark SECRET.
Additional surrounding circumstances
[61] Given the parties’ written and oral arguments, the following additional surrounding circumstances require consideration.
• SECRET Family of Trade-marks
[62] I am satisfied that the Opponent’s evidence establishes the existence of a family of trade-marks containing the word “secret” for hosiery and undergarments [see MacDonald’s Corporation v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.)]. Given my earlier remark about other trade-mark registrations alleged by the Opponent, I note that the Opponent’s evidence does not satisfy me that its family of trade-marks extends to activewear or casual wear.
• Notoriety of the trade-mark SECRET
[63] At the oral hearing, the Applicant conceded that the Opponent’s evidence shows that the trade-mark SECRET may be well-known for hosiery and undergarments, though not famous. Still, the Applicant argued that this factor is not by itself sufficient to support a finding of confusion when considering all the circumstances of the case.
[64] I am satisfied that the Opponent’s evidence establishes that its trade-mark SECRET has become well-known in Canada in association with hosiery and undergarments.
• Stores SUZY SHIER
[65] The Applicant submits that because it owns the well-known retail clothing chain SUZY SHIER, the average Canadian consumer is likely to recognize that the Mark is associated to SUZY SHIER, as opposed to any other source. The Applicant also submits that the Mark is evocative of its trade-mark SUZY SHIER. The Opponent submits that the Applicant did not provide any evidence to show a relationship between the retail stores SUZY SHIER and the Mark.
[66] Apart from the hearsay deficiencies attaching to extracts of websites as exhibits to the Ng affidavit, as discussed later on, the Ng affidavit surely does not support the Applicant’s contention that its retail clothing chain is well-known. In any event, the Applicant’s evidence does not satisfy me that its ownership of SUZY SHIER retail stores is of assistance to its case. Further, ownership of Registration No. TMA461,428 for the trade-mark SUZY SHIER does not give the Applicant the automatic right to the registration of the Mark [see American Cyanamid Co. v. Stanley Pharmaceuticals Ltd. (1996), 74 C.P.R. (3d) 571 (T.M.O.B.)].
• No evidence of actual confusion
[67] In its written argument [paragraphs 85-86], the Applicant submits that “the absence of a single instance of actual confusion, notwithstanding the long standing co-existence of the SECRET trade-marks with numerous business using the word “SECRET” in association with lingerie” is “highly relevant, and indeed persuasive, with respect to the ability of the trade-marks at issue to co-exist without confusion”. In support of this contention, the Applicant relies upon the decisions Mattel, Inc., supra and Dion Neckwear Ltd., supra. In oral argument, the Opponent submitted that there was no burden upon it to evidence instances of confusion between its trade-marks and trade-marks of third parties.
[68] In my view, the decisions relied upon by the Applicant do not stand for the proposition that I should draw an adverse inference from the fact that the Opponent did not evidence actual confusion between its trade-mark and third parties’ trade-marks. Thus, I agree with the Opponent’s submissions. I would add that since there is no evidence directed to the use of the Mark in Canada, the lack of evidence of actual confusion between the Mark and the Opponent’s trade-mark is of no consequence.
• Common adoption and use of “secret” as a component of third parties’ trade-marks/trade-names
[69] The Applicant argues that its evidence demonstrates extensive use by others of trade-marks and trade-names including the word “secret”, such that the differences between the Mark and the Opponent’s trade-mark are sufficient to avoid a likelihood of confusion. The Opponent submits that the Applicant has failed to evidence that the word “secret” has been generally adopted and used by third parties in association with women intimate apparel. If I conclude to evidence of third party’s use of trade-names/trade-marks involving the word “secret”, the Opponent submits that the evidence is insufficient to show that the state of the market place is such that the Mark would not cause confusion with its trade-mark.
[70] I wish to first generally address the value of electronic evidence introduced by the Ng affidavit by referring to the following comments of Justice Slatter of the Alberta Court of Queen’s Bench in Envirodrive Inc. v. 836442 Alberta Ltd., 2005 CarwellAlta 860:
54 On the other hand, the mere fact that something is publicly available and readily producible from the internet does not make it admissible. Such evidence must still pass the normal tests for evidence, including the hearsay rule and the opinion evidence rule. Of course, if the information is merely tendered to show that certain information was known to the public, or for a purpose other than the truth of its contents (for example in a defamation case), then the information would be admissible: ITV Technologies Inc. v. WIC Television Ltd., [2003] F.C. 1056, 239 F.T.R. 203 (F.C.) at para. 23. (My underlining)
[71] Having considered the parties’ written and oral arguments, I am setting forth hereafter my findings with respect to the evidence introduced by Ms. Ng, though I will subsequently deal with the Applicant’s submissions concerning the evidence introduced for the trade-mark VICTORIA’S SECRET:
1. I accept that Ms. Ng did find the listings referred to at paragraph 2 of her affidavit. However, Exhibit “B” only provides evidence that the listings exist, not that they provide true information or that any of the business names has been brought to the attention of consumers in Canada. Further, Exhibit “B” is not evidence that any of the business names is in use in Canada.
2. The cease and desist letters sent by the Opponent are not evidence of the allegations contained therein. Therefore the fact that the Opponent has sent cease and desist letters to four of the businesses listed in the Ng affidavit does not constitute evidence of use of the business names, nor does the fact that three businesses agreed to “voluntarily cease using” their name. Likewise, the fact that Secrets From Your Sister Inc. did not comply with the cease and desist letter is not evidence of use of its business name.
3. The business/corporate name registrations for Secrets From Your Sister Inc., Secret Intimes Inc. and Secrets Drawers Lingerie Ltd. are not evidence that such names have been used in Canada [Pharmx Rexall Drug Stores Inc. v. Vitabrin Investments Inc., (1995) 62 C.P.R. (3d) 108 (T.M.O.B.)].
4. Ms. Ng’s statements based on telephone conversations with owners or employees of retail stores constitute hearsay evidence.
5. I accept Exhibits “C” to “E” as evidencing use of Secrets From Your Sister in association with a lingerie retail store on December 16, 2005.
6. The extracts of websites provide evidence that the websites existed at the time of Ms. Ng’s searches, not that they provide true information or that any of these websites have been brought to the attention of consumers in Canada.
7. I accept the WHOIS report as evidence that the listings exist, not that they provide true information or have been brought to the attention of consumers in Canada.
8. The Opponent correctly submits that there is no evidence of JC Penney having a place of business in Canada. I would add that the use of trade-marks including the word “secret” on JC Penney’s website does not by itself amount to evidence of use of trade-marks in Canada in association with wares pursuant to s. 4(1) of the Act. Nevertheless, there is evidence that the bra ordered by Ms. Ng through the JC Penney’s website was associated with the trade-mark SECRET SHAPERS at the time of its delivery in Canada. Therefore I accept Exhibit “P” as evidencing use of trade-mark SECRET SHAPERS in Canada on December 15, 2005.
9. I am not affording any weight to the Applicant’s argument that the Opponent did not oppose La Senza Inc.’s applications for the trade-mark SUZY’S SECRET following their advertisement. In fact, I agree with the Opponent that the Poirier affidavit shows reasonable diligence on the part of the Opponent in the protection of its SECRET Trade-marks.
[72] I shall now consider the Applicant’s submissions that there is no basis to distinguish the ability of the Mark to coexist with the Opponent’s SECRET trade-marks, as does the trade-mark VICTORIA’S SECRET. More particularly, the Applicant argues that the trade-mark VICTORIA’S SECRET has coexisted in Canada with the Opponent’s trade-mark SECRET for thirty years. In oral argument, the Applicant submitted that I could take judicial notice that VICTORIA’S SECRET is a famous trade-mark. The Applicant also submitted in oral argument that the Minutes of Settlement is an admission against interest by the Opponent.
[73] First, I do not consider the Minutes of Settlement as an admission against interest by the Opponent. The issue of confusion between the trade-marks must be decided upon the particular facts of this case. I am guided by the following comments of Justice Heald in Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 202 where Molson was arguing that a prior inconsistent position taken by Labatt was a relevant circumstance in assessing the likelihood of confusion:
In my view, this circumstance is not relevant in determining whether the two trade-marks at issue are confusing. Regardless of the previous positions taken by Labatt, I must come to a determination as to confusion that is in accordance with the law and relevant jurisprudence.
[74] Second, while the Minutes of Settlement may evidence the existence of an agreement between the parties thereto, it is not evidence of the allegations contained therein. Third, the dates of first use claimed in the registrations for the trade-mark VICTORIA’S SECRET establish no more than de minimis use of the trade-mark in Canada. They cannot give rise to an inference of significant and continuing use of the trade-mark in association with the wares and services identified in the registrations. Fourth, I am not willing to extend judicial notice to the extent of accepting that VICTORIA’S SECRET is a famous trade-mark [see Horn Abbot Ltd. v. Benchmark Enterprises Ltd. (1985), 7 C.P.R. (3d) 248 (T.M.O.B.) where Member Martin refused to take judicial notice that TRIVIAL PURSUIT was a famous trade-mark].
[75] I accept that Ms. Ng videotaped the VICTORIA’S SECRET fashion show as she stated. Thus I accept that the broadcast of the VICTORIA’S SECRET fashion show on December 6, 2005 was received in Canada. Still, there is no evidence as to the numbers of Canadian households that received or viewed the broadcast.
[76] The appearance of the trade-mark VICTORIA’S SECRET in catalogues does not in itself constitute use in association with wares [see Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd (1968), 55 C.P.R. 176]. The Opponent correctly argues that there is no evidence of retail stores operated in Canada in association with the trade-mark VICTORIA’S SECRET. Obviously, my previous finding with respect to website extracts applies to the website of Victoria’s Secret. Yet, Ms. Ng purchased a lingerie item through VICTORIA’S SECRET website. This lingerie item, which was delivered in Canada, bears a label displaying the trade-mark VICTORIA’S SECRET. Therefore, I accept the Ng affidavit, in particular Exhibits “S” and “T”, as evidence of use in Canada of the trade-mark VICTORIA’S SECRET in association with lingerie and services associated with the operation of mail order of wearing apparel in December 2005.
[77] All in all, at best the Ng affidavit establishes that the trade-name/trade-mark Secret From Your Sister and the trade-marks SECRET SHAPERS and VICTORIA’S SECRET were used in Canada in December 2005. In my view, this is insufficient to allow me to conclude that the word “secret” is so commonly used as a component of trade-names and trade-marks for women intimate apparel and the like that it could be inferred that consumers are accustomed to distinguishing between these trade-marks/trade-names.
[78] In applying the test for confusion I have considered it as a matter of first impression and imperfect recollection. Although I consider that s. 6(5)(e) of the Act should be afforded much weight, I find that the Opponent’s evidence with respect to the use of its trade-mark SECRET in association with hosiery and undergarments, coupled with its SECRET Family of Trade-marks, evenly balance the probabilities between a finding of confusion and of no confusion when considering the Applicant’s Mark for “lingerie, bras, panties”. However, when considering the rest of the Applicant’s wares, I find that the differences between the Mark and the trade-mark SECRET tip the balance of probabilities in favour of the Applicant.
[79] As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with the Opponent’s registered trade-mark, I find that the Applicant has not discharged its burden of showing, on a balance of probabilities, that the Mark in association with “lingerie, bras, panties ” is not confusing with the Opponent’s trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,410. However, I find that the Applicant has discharged its burden of showing, on a balance of probabilities, that the Mark in association with “women’s wearing apparel, namely, blouses, skirts, vests, pants, shorts, t-shirts, hats, dresses, sweaters, coats, swimwear” is not confusing with the trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,41.
[80] As I previously indicated, the issue of confusion between the trade-marks at issue is a question of probabilities and surrounding circumstances based on the particular facts of this case. In written and oral arguments, the Opponent relied particularly on the decision Manufacturier de bas de Nylon Doris Ltée/Doris Hosiery Mills Ltd. v. Cortefiel, S.A. 2008 CarswellNat 3793 [under appeal, Court File No. T-1768-08] involving an opposition by the Opponent to the trade-mark WOMEN’SECRET Design (the WOMEN’SECRET Design case). In the WOMEN’SECRET Design case, I refused the application for the wares specifically identified in the statement of opposition. I find the present case to be distinguishable from the WOMEN’SECRET Design case mainly because the Mark differs from the trade-mark WOMEN’SECRET Design. For one thing, I consider the Mark to be inherently stronger than the trade-mark WOMEN’SECRET Design. Further, I have concluded that the Mark is fairly different from the Opponent’s trade-mark SECRET whereas in the WOMEN’SECRET Design case, I concluded to a fair degree of similarity between the trade-marks.
[81] Finally, applying the test for confusion as a matter of first impression and imperfect recollection, I find that there is no likelihood that the Mark will prompt consumers to think that the Applicant’s services are performed or offered by the Opponent or are otherwise associated with the Opponent. In particular, the Opponent’s evidence does not satisfy me that there is a real connection between its trade-mark SECRET and retail clothing stores. In that regard, I find the following comments of Justice Binnie in Mattel, Inc., supra, of particular interest:
82 […] In Joseph E. Seagram, the appellant argued that the natural tendency towards corporate diversification would lead the consumer to presume that its alcoholic beverage business was connected with the respondent’s real estate business. MacKay J. dismissed this argument […]
83 The point, I think, is that the law of trade-marks is based on use. In an earlier era it was not possible to register a “proposed” use. Here, expansion of the BARBIE mark is more than just speculation, but if the BARBIE mark is not famous for anything but dolls and doll accessories in the area where both marks are used and there is no evidence that BARBIE’s licensees, whoever they may be, are in the marketplace using the BARBIE mark for “restaurant services, take-out services, catering and banquet services”, it is difficult to see the basis on which the mistaken inference is likely to be drawn. (My underlining).
[82] Accordingly, I find that the Applicant has discharged its burden of showing, on a balance of probabilities, that the Mark in association with “retail clothing store services” is not confusing with the trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,41.
[83] As previously mentioned, the determination of the issue of confusion between the Mark and the registered trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736 and TMA603,410 effectively decides the registrability ground of opposition.
[84] Having regard to the foregoing, I find that the ground of opposition based upon s. 12(1)(d) of the Act is successful only with respect to the wares “lingerie, bras, panties” identified in the application.
Non-entitlement
Section 16(3)(a) the Act
[85] Once again, the Opponent’s case with respect to this ground of opposition is strongest when considering the likelihood of confusion between the Mark and the trade-mark SECRET. I note that the wares in respect of which the Opponent alleges prior use of its trade-mark are specifically pleaded as the wares of Registration Nos. TMA151,062, TMA298,736, and TMA603,410.
[86] The Opponent has discharged its initial onus of proving that its trade-mark SECRET was being used at the material date and had not been abandoned at the date of advertisement of the application [s. 16(5) of the Act]. Thus, the burden of proof rests upon the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the trade-marks at issue.
[87] The Opponent correctly argues that the Applicant’s evidence directed to the use of Secret From Your Sister, SECRET SHAPERS and VICTORIA’S SECRET is subsequent to the material date under this ground of opposition. Yet, I did not afford significant weight to such evidence. Accordingly, I find that my conclusions under the registrability ground of opposition are applicable to the non-entitlement ground of opposition, as the difference in relevant dates does not affect my assessment with respect to the probabilities of confusion.
[88] Having regard to the foregoing, I find that the ground of opposition based upon s. 16(3)(a) of the Act is successful only with respect to the wares “lingerie, bras, panties”.
Section 16(3)(b) of the Act
[89] I find it unnecessary to decide this ground of opposition as I have already decided the non-entitlement ground of opposition based upon s. 16(3)(a) of the Act.
Distinctiveness
[90] The material date to consider the ground of opposition based upon non-distinctiveness is the filing date of the statement of opposition [see Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
[91] There was an initial burden on the Opponent to show that one or more of its trade-marks had become known sufficiently as of January 10, 2005 to negate the distinctiveness of the Mark [see Motel 6, Inc. v. No. 6 Motel Ltd., 56 C.P.R. (2d) 44 (F.C.T.D.); Bojangles’ International, LLC and Bojangles Restaurants, Inc. v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.T.D.)].
[92] Notwithstanding the difference between the material date, I find that my prior conclusions under the non-entitlement ground of opposition based upon s. 16(3)(a) of the Act are applicable to the distinctiveness ground of opposition.
[93] Accordingly, the ground of opposition based upon non-distinctiveness is successful only with respect to the wares “lingerie, bras, panties”.
Disposition
[94] Pursuant to s. 38(8) of the Act, and with the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to the wares “lingerie, bras, panties” and I reject the opposition with respect to the rest of the wares and with respect to the services [see Produits Menager Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.D.T.) as authority for a split decision].
DATED AT MONTREAL, QUEBEC, THIS 20th DAY OF JULY 2009.
Céline Tremblay
Member
Trade-marks Opposition Board
ANNEX A
- SECRET, registered on May 26, 1967, under number TMA151,062 with respect to "(1) Ladies' hosiery. (2) Men’s and ladies socks and stockings. (3) Men’s and ladies sport socks, dress socks and knee socks”.
- SECRET & Design, registered on November 25, 1983, under number TMA285,242 with respect to "(1) Ladies' pantyhose. (2) Men's and ladies' socks and stockings. (3) Children's socks and stockings".
- SECRET, registered on January 4, 1985, under number TMA298,736 with respect to "(1) Ladies' hosiery, men's and ladies' socks and stockings, sports socks, dress socks and knee socks. (2) Children's socks and stockings”.
- SECRET, registered on February 26, 2004 under number TMA603,410 with respect to "undergarments".
- SECRET FIT, registered on October 26, 1998, under number TMA502,880 with respect to “clothing, namely hosiery, socks, stockings, panty hose, kneehighs, tights, shoes, slippers, panties, underwear and active wear, namely exercise tights, leggings, leotards, sweat pants, sweat shirts, T-shirts, shorts, exercise tops”.
- SECRET-KIDS, registered on July 26, 1997, under number TMA387,178, with respect to “children’s pantyhose, hosiery, tights and socks”.
- SECRET SLIMMERS, registered on August 5, 1966, under number TMA146,454 with respect to “women’s underwear and undergarments, namely, panties and girdles”.
- SECRET SO SHEER L’INVISIBLE, registered on January 28, 1998, under number TMA488,430 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights”.
- SECRET CONTROL PANTY, registered on October 26, 1979, under number TMA236,847 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET CONTROL TOP, registered on October 26, 1979 under number TMA236,848 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET SPARE PAIR, registered on July 18, 1980, under number TMA248,327 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET PAIRE DE SECOURS, registered on July 18, 1990, under number TMA248,329 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET SILKY, registered on October 27, 1989, under number TMA361,546 with respect to "ladies' pantyhose and ladies' hosiery".
- SUPERSHEER SECRET SUPERFIN, registered on June 1, 1990, under number TMA369,065 with respect to "ladies' pantyhose and ladies' hosiery".
- HER CHOICE BY SECRET, registered on June 16, 1995, under number TMA444,050 with respect to “clothing, namely panty hose, trousers socks, kneehighs, socks, thigh highs and stockings".
- JOUR À JOUR SECRET, registered on June 30, 1995, under number TMA444,724 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET FOR HIM, registered on September 29, 1995, under number TMA448,331 with respect to "clothing, namely socks and underwear for men”.
- SECRET FOR HIM POUR LUI & Design, registered on November 3, 1995, under number TMA449,621 with respect to "clothing, namely socks and underwear for men".
- SECRET SO SLIM, registered on November 24, 1995, under number TMA450,919 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET UP LIFT, registered on June 18, 1997, under number TMA477,978 with respect to "pantyhose and panties".
- HER CHOICE BY SECRET, registered on July 2, 1997, under number TMA478,262 with respect to "activewear, namely exercise tights, leggings, exercise leotards, sweat pants, sweat shirts, T-shirts; underwear".
- SECRET ACTIVE SLIMMERS, registered on July 2, 1997, under number TMA478,269 with respect to “clothing, namely hosiery, pantyhose and undergarments".
- SECRET ALL-DAY, registered on July 17, 1997, under number TMA478,681 with respect to "clothing, namely socks, stockings, lingerie, undergarments, kneehighs and tights".
- HER CHOICE/SON CHOIX BY/PAR SECRET, registered on August 22, 1997, under number TMA481,370 with respect to "(1) Panty hose, socks, thigh highs and stocking. (2) Trouser socks, ankle highs and knee highs".
- SECRET TONE-UP, registered on November 24, 1997, under number TMA486,169 with respect to "underwear, namely: bras, panties, slips, bodyliners, bodystockings, garter belts, g-strings, thongs, teddies, chemises, camisoles; pantyhose and hosiery".
- SECRET SO SOFT TRÈS DOUX, registered on February 2, 1998, under number TMA488,942 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET SO SOFT, registered on February 2, 1998, under number TMA488,951 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET VIRTUAL SKIN/VOILE DE PEAU, registered on April 2, 1998, under number TMA492,220 with respect to "ladies hosiery, namely: thigh high's, knee high's and pantyhose".
- SECRET MEDI-SUPPORT & Design, registered on May 8, 1998, under number TMA494,307 with respect to "graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings and kneehights".
- SECRET NO-SEAM, registered on July 23, 1999, under number TMA513,154 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET AU NATUREL, registered on October 4, 1999, under number TMA517,521 with respect to “hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings”.
- SECRET INTIMATES, registered on August 28, 2000, under number TMA531,815 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks and knee socks; intimate apparel, namely bras, panties, slips, bodyliners, bodystockings, bodysuits, garter belts, g-strings, thongs, teddies, chemises, camisoles, foundation slips, half slips, girdles, panty girdles, garters, briflettes and control briefs”.
- SECRET PLUS, registered on August 23, 2001, under number TMA550,155 with respect to "panty hose, socks, knee highs and tights; and panties";
- SECRET DURASHEERS, registered on October 11, 2001, under number TMA522,296 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks, and knee socks”.
- SECRET HIPSTER, registered on December 12, 2002, under number TMA572,221 with respect to “clothing, namely undergarments and legwear”.
- SECRET SENSUALS, registered on December 13, 2002, under number TMA572,244 with respect to “hosiery and intimate apparel”.
- SECRET DELUXE, registered on December 13, 2002, under number TMA572,246 with respect to “clothing, namely intimate apparel”.
- SECRET GET HIP, registered on December 18, 2002, under number TMA572,608 with respect to “clothing, namely undergarments and legwear”.
- SECRET NO-SEAM, registered on April 16, 2003, under number TMA579,685 with respect to “clothing, namely intimate apparel”.
- CRAZE BY SECRET, registered on April 30, 2003, under number TMA580,305 with respect to “clothing, namely intimate apparel”.
- SECRET ALL NUDE, registered on May 1, 2003, under number TMA580,442 with respect to “clothing, namely intimate apparel”.
- CRAZE BY SECRET, registered on July 22, 2004, under number TMA615,475 with respect to “clothing, namely sleepwear, casual wear, legwear, namely hosiery, tights, socks, stockings, leggings; footwear, namely slippers, shoes, jogging shoes, boots, sandals”.
ANNEX B
- SECRET, registered on May 26, 1967, under number TMA151,062 with respect to "(1) Ladies' hosiery. (2) Men’s and ladies socks and stockings. (3) Men’s and ladies sport socks, dress socks and knee socks”.
- SECRET & Design, registered on November 25, 1983, under number TMA285,242 with respect to "(1) Ladies' pantyhose. (2) Men's and ladies' socks and stockings. (3) Children's socks and stockings".
- SECRET, registered on January 4, 1985, under number TMA298,736 with respect to "(1) Ladies' hosiery, men's and ladies' socks and stockings, sports socks, dress socks and knee socks. (2) Children's socks and stockings”.
- SECRET, registered on February 26, 2004 under number TMA603,410 with respect to "undergarments".
- SECRET FIT, registered on October 26, 1998, under number TMA502,880 with respect to “clothing, namely hosiery, socks, stockings, panty hose, kneehighs, tights, shoes, slippers, panties, underwear and active wear, namely exercise tights, leggings, leotards, sweat pants, sweat shirts, T-shirts, shorts, exercise tops”.
- SECRET-KIDS, registered on July 26, 1997, under number TMA387,178, with respect to “children’s pantyhose, hosiery, tights and socks”.
- SECRET SLIMMERS, registered on August 5, 1966, under number TMA146,454 with respect to “women’s underwear and undergarments, namely, panties and girdles”.
- SECRET SO SHEER L’INVISIBLE, registered on January 28, 1998, under number TMA488,430 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights”.
- SECRET CONTROL PANTY, registered on October 26, 1979, under number TMA236,847 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET CONTROL TOP, registered on October 26, 1979 under number TMA236,848 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET SPARE PAIR, registered on July 18, 1980, under number TMA248,327 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET PAIRE DE SECOURS, registered on July 18, 1990, under number TMA248,329 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET SILKY, registered on October 27, 1989, under number TMA361,546 with respect to "ladies' pantyhose and ladies' hosiery".
- SUPERSHEER SECRET SUPERFIN, registered on June 1, 1990, under number TMA369,065 with respect to "ladies' pantyhose and ladies' hosiery".
- HER CHOICE BY SECRET, registered on June 16, 1995, under number TMA444,050 with respect to “clothing, namely panty hose, trousers socks, kneehighs, socks, thigh highs and stockings".
- JOUR À JOUR SECRET, registered on June 30, 1995, under number TMA444,724 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET FOR HIM, registered on September 29, 1995, under number TMA448,331 with respect to "clothing, namely socks and underwear for men”.
- SECRET FOR HIM POUR LUI & Design, registered on November 3, 1995, under number TMA449,621 with respect to "clothing, namely socks and underwear for men".
- SECRET SO SLIM, registered on November 24, 1995, under number TMA450,919 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET UP LIFT, registered on June 18, 1997, under number TMA477,978 with respect to "pantyhose and panties".
- HER CHOICE BY SECRET, registered on July 2, 1997, under number TMA478,262 with respect to "activewear, namely exercise tights, leggings, exercise leotards, sweat pants, sweat shirts, T-shirts; underwear".
- SECRET ACTIVE SLIMMERS, registered on July 2, 1997, under number TMA478,269 with respect to “clothing, namely hosiery, pantyhose and undergarments".
- SECRET ALL-DAY, registered on July 17, 1997, under number TMA478,681 with respect to "clothing, namely socks, stockings, lingerie, undergarments, kneehighs and tights".
- HER CHOICE/SON CHOIX BY/PAR SECRET, registered on August 22, 1997, under number TMA481,370 with respect to "(1) Panty hose, socks, thigh highs and stocking. (2) Trouser socks, ankle highs and knee highs".
- SECRET TONE-UP, registered on November 24, 1997, under number TMA486,169 with respect to "underwear, namely: bras, panties, slips, bodyliners, bodystockings, garter belts, g-strings, thongs, teddies, chemises, camisoles; pantyhose and hosiery".
- SECRET SO SOFT TRÈS DOUX, registered on February 2, 1998, under number TMA488,942 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET SO SOFT, registered on February 2, 1998, under number TMA488,951 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
- SECRET VIRTUAL SKIN/VOILE DE PEAU, registered on April 2, 1998, under number TMA492,220 with respect to "ladies hosiery, namely: thigh high's, knee high's and pantyhose".
- SECRET MEDI-SUPPORT & Design, registered on May 8, 1998, under number TMA494,307 with respect to "graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings and kneehights".
- SECRET NO-SEAM, registered on July 23, 1999, under number TMA513,154 with respect to "ladies' panty hose and ladies' hosiery".
- SECRET AU NATUREL, registered on October 4, 1999, under number TMA517,521 with respect to “hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings”.
- SECRET INTIMATES, registered on August 28, 2000, under number TMA531,815 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks and knee socks; intimate apparel, namely bras, panties, slips, bodyliners, bodystockings, bodysuits, garter belts, g-strings, thongs, teddies, chemises, camisoles, foundation slips, half slips, girdles, panty girdles, garters, briflettes and control briefs”.
- SECRET PLUS, registered on August 23, 2001, under number TMA550,155 with respect to "panty hose, socks, knee highs and tights; and panties";
- SECRET DURASHEERS, registered on October 11, 2001, under number TMA522,296 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks, and knee socks”.
- SECRET HIPSTER, registered on December 12, 2002, under number TMA572,221 with respect to “clothing, namely undergarments and legwear”.
- SECRET SENSUALS, registered on December 13, 2002, under number TMA572,244 with respect to “hosiery and intimate apparel”.
- SECRET DELUXE, registered on December 13, 2002, under number TMA572,246 [sic] with respect to “clothing, namely intimate apparel”.
- SECRET GET HIP, registered on December 18, 2002, under number TMA572,608 with respect to “clothing, namely undergarments and legwear”.
- SECRET NO-SEAM, registered on April 16, 2003, under number TMA579,685 with respect to “clothing, namely intimate apparel”.
- CRAZE BY SECRET, registered on April 30, 2003, under number TMA580,305 with respect to “clothing, namely intimate apparel”.
- SECRET ALL NUDE, registered on May 1, 2003, under number TMA580,442 with respect to “clothing, namely intimate apparel”.
- CRAZE BY SECRET, registered on July 22, 2004, under number TMA615,475 with respect to “clothing, namely sleepwear, casual wear, legwear, namely hosiery, tights, socks, stockings, leggings; footwear, namely slippers, shoes, jogging shoes, boots, sandals”.
- SECRET LUXURY COLLECTION, for which an allowed application was filed on July 16, 2003 under No. 1,184,709 with respect to “clothing, namely hosiery, undergarments, loungewear, intimate apparel”.
ANNEX C
1. SECRET LUXURY COLLECTION of Application No. 1,184,709 filed on July 16, 2003 with respect to “clothing, namely hosiery, undergarments, loungewear, intimate apparel”.
2. SECRET REVEAL of Application No. 1,114,859 filed on October 6, 2001 with respect to “hosiery, legwear, intimate apparel and loungewear”