IN THE MATTER OF AN OPPOSITION
by Kellogg Canada Inc. and Kellogg Company
to application No. 861,626 for the trade-mark
SHREDDED OATS filed by Barbara’s Bakery, Inc.
On November 14, 1997, the applicant, Barbara’s Bakery, Inc., filed an application to register the trade-mark SHREDDED OATS based on use of the mark in Canada since January 7, 1997 in association with the following wares:
cereals, namely breakfast cereals, processed cereals, unprocessed cereal; snack bars, namely granola-based snack bar.
The application was amended to include a disclaimer to the words SHREDDED and OATS and was further amended to restrict the disclaimer to only the word OATS. The application was subsequently advertised for opposition purposes on February 14, 2001.
At the oral hearing conducted on April 27, 2006 for a related opposition by Kraft Foods Holdings, Inc. and Kraft Canada Inc. to this application, the applicant’s agent requested that the statement of wares be amended by deleting “snack bars, namely granola-based snack bar” and restricting the remaining wares. I accepted the proposed amendment and the statement of wares now reads as follows:
cereals, namely breakfast cereals, processed cereals, unprocessed cereal all made with whole oat flour using an extrusion process.
The opponents, Kellogg Canada Inc. and Kellogg Company, filed a statement of opposition on July 13, 2001, a copy of which was forwarded to the applicant on September 4, 2001. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(c) of the Act because it is the name of the applied for wares in the English language. The second ground is that the applied for trade-mark is not registrable pursuant to Section 12(1)(b) of the Act because it is clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applied for wares. The third ground is that the applicant’s application does not conform to the requirements of Section 30(b) of the Act because the applicant did not use the applied for mark in Canada since January 7, 1997 as claimed.
The fourth ground of opposition is that the applied for trade-mark is not distinctive of the applicant because, due to its generic nature, it is clearly descriptive or deceptively misdescriptive of the applied for wares. The fifth ground is that the applicant’s application does not conform to the requirements of Section 30(i) of the Act because the applicant could not have been satisfied that it was entitled to use the applied for trade-mark in Canada.
The applicant filed and served a counter statement. As their evidence, the opponents submitted the affidavits of Nadia Meilleur and Lisa M. Hildred. As its evidence, the applicant submitted the affidavit of John Stalker and three affidavits of Kelly Ann Brady. As evidence in reply, the opponents submitted an affidavit of Doris Kutsukake. Both parties filed a written argument but no oral hearing was conducted.
The Opponents’ evidence
In her affidavit, Ms. Meilleur states that she searched several registers, printed sources and directories but she did not provide specific details of her various searches nor did she indicate what she was searching for. The report attached as Exhibit NM-1 to her affidavit appears to relate to the term “shredded wheat” but, in the absence of additional information from Ms. Meilleur, that report is of little assistance in the present opposition.
In her affidavit, Ms. Hildred identifies herself as a Legal Assistant and details several cereal purchases she made on July 16 and 18, 2002. She provided the names of the stores where she made the purchases but not their locations. It appears, however, that they were all in the Toronto area.
Ms. Hildred purchased POST SHREDDED WHEAT, BARBARA’S BAKERY SHREDDED WHEAT, BARBARA’S BAKERY SHREDDED SPOONFULS, BARBARA’S BAKERY SHREDDED OATS and QUAKER MUFFETS SHREDDED WHEAT CEREAL. The boxes for these various purchases were appended as exhibits to her affidavit.
Ms. Hildred also conducted searches of the Canadian Intellectual Property Office trade-mark database. Exhibit G to her affidavit comprises the particulars for the registered trade-mark SHREDDED SPOONFULS owned by the present applicant. The registration includes a disclaimer to the word SHREDDED. Exhibit H comprises the results of her search for the term SHREDDED WHEAT which revealed nine entries, all of which had been cancelled, expunged or abandoned.
Ms. Hildred also consulted a dictionary for definitions of the words “shredded” and “oats.” Exhibit I comprises photocopies of dictionary pages including those definitions.
The Applicant’s evidence
In his affidavit, Mr. Stalker identifies himself as the Vice-president and General Manager of Weetabix of Canada Limited, a sister company of the applicant. Both Weetabix of Canada Limited and the applicant are owned by Weetabix Limited.
Mr. Stalker states that his company manufactures the applicant’s SHREDDED OATS product. He describes the method of manufacture which involves the followings steps:
1. mixing oat flour, wheat flour and molasses granules;
2. moisturizing the mixture and cooking it in an extruder;
3. forcing the mixture out of the extruder through extrusion dies that form the product;
4. creating fine strings or strands which form a ribbed tube;
5. cutting or crimping the tubes into pillow-shaped pieces.
Ms. Brady’s first affidavit serves simply to introduce into evidence dictionary definitions for the words “extrude”, “extruded”, “shred” and “shredded.”
In her second affidavit, Ms. Brady details the results of cereal purchases she made in various Ottawa grocery outlets in March of 2003. She had been instructed to locate cereals with packaging that bore the words “shredded oats”, the term “oat”, “oats” or “oaty” or a name that described the shape of the cereal. She was unable to locate any cereal bearing the words “shredded oats” including apparently the applicant’s product. The closest item that she located was NATURE’S PATH SHREDDED OATY BITES purchased at a store called The Natural Food Pantry.
Ms. Brady’s third affidavit details the results of her searches of the Internet for the term “shredded oats.” Most of the references located appear to be from American web sites and were for the applicant’s SHREDDED OATS product. Of particular note, Exhibit D to Ms. Brady’s third affidavit includes pages from a website for The Weetabix Company, Inc. of Clinton, Massachusetts, a company presumably related to Mr. Stalker’s company. According to its website, the U. S. company manufactures various types of cereal for third parties under their private labels including “granola”, “wheat squares” and “organic shredded oats.” The photograph appearing next to the cereal type “organic shredded oats” shows what appears to be a breakfast cereal comprising baked, woven cereal squares.
The Opponents’ Reply evidence
In her affidavit, Ms. Kutsukake identifies herself as a Legal Assistant employed by the opponent Kellogg Canada Inc. She examined a publication entitled “Breakfast Cereals And How They Are Made.” Appended as Exhibit B to her affidavit is a chapter from that publication entitled “Manufacturing Technology of Ready-to-Eat Cereals”.
The Grounds of Opposition
The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(c) of the Act because it is the name of the wares in the English language. However, there is no evidence that the term “shredded oats” has been used by traders other than the applicant as the name of their cereal wares. Thus, the first ground is unsuccessful.
As for the second ground of opposition, in view of the decision in Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R.(4th) 254 (F.C.T.D.) which relies on the decision of the Supreme Court of Canada in Lightning Fastener Co. v. Canadian Goodrich Co. [1932] S.C.R. 189, it appears that the material time for assessing a ground based on Section 12(1)(b) of the Act is, and always was, the filing date of the application. Furthermore, the issue under Section 12(1)(b) of the Act is to be determined from the point of view of an everyday user of the services. Finally, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
A review of Webster’s New Collegiate Dictionary reveals the following definition for the word “shredded”:
to cut off, to cut or tear into shreds and to come apart in or break up into shreds.
It also includes the following definition for the term “shredded wheat”:
a breakfast cereal made from cooked partially dried wheat that is shredded and molded into biscuits which are then oven-baked and toasted.
Although the purchases made by Ms. Hildred would seem to confirm the generic status of the term “shredded wheat” in the ready-to-eat cereal industry, those purchases were made almost five years after the material time and therefore cannot be relied on respecting the second ground.
Notwithstanding the deficiencies in the evidence, given the generic status of the term “shredded wheat” and based on the ordinary meaning of the words “shredded” and “oats”, the average consumer would assume that the applicant’s cereal products include oats that have been shredded. Thus, the applicant’s mark was either clearly descriptive or deceptively misdescriptive of the applied for wares as of the applicant’s filing date.
There was some discussion by the parties as to the meaning of the mark SHREDDED OATS in relation to the applicant’s particular manufacturing process for its cereal. However, that discussion is of limited relevance since consumers would be unlikely to know what manufacturing process was used to make the applicant’s cereal.
The applicant contends that the word “shredded” does not refer to an intrinsic quality of its cereal products but rather suggests the technical manner in which the product or one of its ingredients is processed, this being merely a collateral feature of the product. But that is not what the evidence suggests that the average consumer considers when he views the term “shredded oats” for a cereal product. Given the generic nature of the term “shredded wheat” for ready-to-eat cereal, the average consumer would immediately assume that SHREDDED OATS cereal was the same type of product - i.e. - a woven baked biscuit made primarily from oats. If it was, then the mark would be clearly descriptive of the character of the wares. If not, then it would be deceptively misdescriptive.
This is not to say that the applicant’s mark cannot function as a trade-mark. In fact, the applicant has taken steps to educate the public that it considers SHREDDED OATS to be its trade-mark by employing the letters TM after the mark on its packaging. But simply using the letters TM is not enough. Where a mark offends the provisions of Section 12(1)(b) of the Act, it is incumbent on an applicant to meet the stringent requirements of Section 12(2). In this case, the applicant has done little or nothing to meet those requirements.
In view of the above, I consider that the applicant has failed to satisfy the onus on it to show that its mark SHREDDED OATS was not clearly descriptive or deceptively misdescriptive of the character of the applied for cereal wares. Thus, the second ground is successful.
As for the opponents’ third ground of opposition, the onus or legal burden is on the applicant to show that its application conforms to the requirements of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponents respecting their allegations of fact in support of that ground. That burden is lighter respecting the issue of non-conformance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed: see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponents’ evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
The opponents failed to submit any evidence to support their allegation that the applicant had not used its applied for mark continuously in Canada since its claimed date of first use. Although the applicant did not support its claimed date, none of its evidence is inconsistent with that claim. Thus, the third ground is unsuccessful.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - July 13, 2001): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
My conclusions respecting the second ground of opposition are generally applicable to this ground as well. In fact, if anything, the opponents’ case is even stronger respecting their fourth ground since the Hildred purchases were made only one year after the material time. Thus, to some extent, the availability of “shredded wheat” products at that time underscores the generic nature of that term.
In view of the above, I find that the applicant’s mark was either clearly descriptive or deceptively misdescriptive of the character of the applied for wares as of the filing of the opposition. Thus, in the absence of evidence showing otherwise, it was not distinctive of the applicant’s wares. The fourth ground is therefore successful.
The fifth ground does not raise a proper ground of opposition. The opponents have failed to include any supporting allegations of fact. Thus, the fifth ground is unsuccessful.
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 GATINEAU, QUEBEC, THIS 8th DAY OF MAY, 2006.
David J. Martin,
Member,
Trade Marks Opposition Board.