IN THE MATTER OF AN OPPOSITION by Rogers Cantel Inc. to application No. 720,668 for the trade-mark CELLUPHONE filed by Celluphone, Inc.
On January 15, 1993, the applicant, Celluphone, Inc., filed an application to register the trade-mark CELLUPHONE based on proposed use of the trade-mark in association with:
“Cellular telephones, accessories for cellular telephones and pagers”
and based upon use and registration in the United States of America in association with:
“Cellular telephones and accessories for cellular telephones namely, batteries, battery chargers, cases and stands for cellular telephones and electrical connectors and adaptors for cellular telephones”.
The applicant claimed and was accorded a priority filing date based on its application for registration
filed in the United States of America on July 20, 1992 under Serial No. 295,870.
The present application was advertised for opposition purposes in the Trade-marks Journal of July 13, 1994 and the opponent, Rogers Cantel Inc., filed a statement of opposition on January 13, 1995, a copy of which was forwarded to the applicant on March 6, 1995. As its first ground, the opponent alleged that the applicant’s trade-mark is not registrable in view of Paragraph 12(1)(b) of the Trade-marks Act in that the trade-mark CELLUPHONE is clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applicant’s wares being an obvious contraction of the words cellular and phone or an extension of the short form “cell phone”. The second ground is that the trade-mark CELLUPHONE is contrary to Paragraph 12(1)(c) of the Trade-marks Act in that the word “cellu phone” is so obviously either a contraction of the long form “cellular phone” or an extension of the short form “cell phone” that it is the name of the very object itself. The inclusion of the “u” syllable fails to make the proposed trade-mark amnything more that a natural linguistic contraction or variant form of “cellular phone” or “cell phone” as the case may be. As its final ground, the opponent alleged that the trade-mark CELLUPHONE is not adapted to distinguish nor does it actually distinguish the applicant’s wares from those of others and, in particular, with which the opponent associates its long list of trade-marks used in association with cellular wares and services and its advertising in respect of these trade-marks.
The applicant served and filed a counter statement in which it denied the opponent’s grounds of opposition and asserted that its trade-mark CELLUPHONE is registrable and distinctive. The opponent filed at its evidence the affidavits of Kent Thexton and Susannah Rolston while the applicant submitted as its evidence the affidavit of Fred Larson. Further, the applicant alone filed a written argument and neither party requested an oral hearing.
As its first ground, the opponentalleged that the applicant’s trade-mark is not registrable in view of Paragraph 12(1)(b) of the Trade-marks Act since the trade-mark CELLUPHONE is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the applicant’s wares. The issue as to whether the trade-mark CELLUPHONE is clearly descriptive of the character or quality of the applicant's wares must be considered from the point of view of the average purchaser of those wares. Also, in determining whether the trade-mark CELLUPHONE is clearly descriptive of the character or quality of the applicant's wares, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186]. Additionally, the material date for considering a ground of opposition based on Paragraph 12(1)(b) of the Trade-marks Act is the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)].
While the legal burden is upon the applicant to show that its trade-mark is registrable, there is an initial evidentiary burden upon the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark CELLUPHONE is either clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's wares. It is therefore necessary to consider the opponent's evidence in order to determine whether it has met the initial burden upon it. In this regard, the
affidavit introduces into evidence photocopies of pages from three books located by the affiant in the Metropolitan Toronto Reference Library and entitled: The Professional Guide to Bartending, Second Edition; THE OFFICIAL Harvard Student Agencies BARTENDING COURSE; and Pour Man’s Friend A Guide and Reference for Bar Personnel, Revised Edition. Also, Ms. Hutchinson has annexed to her affidavit a photocopy of the page from a magazine entitled Latitudes which includes a reference to a cocktail identified as a MUDSLIDE. While each of these publications makes reference to a mixed drink identified as Mudslide or Mud Slide, they do not establish that the mark MUDSLIDE is either clearly descriptive or deceptively misdescriptive of either the “character” or “quality” of a mixed drink or of “alcoholic beverages namely, spirits, liqueurs, cocktails”. I have therefore concluded that the opponent has not met the evidentiary burden upon it in respect of the Section 12(1)(b) ground of opposition which I have rejected.
The opponent next alleged that the applicant’s trade-mark is prohibited by Section 10 of the Trade-marks Act and is therefore not registrable in view of Section 12(1)(e) of the Act in that MUDSLIDE has by ordinary and bona fide commercial usage become recognized in Canada as designating a mixed drink containing cream liqueur, coffee liqueur and vodka. The only evidence adduced by the opponent is the reference to a MUDSLIDE mixed drink in the four publications noted above. However, the opponent has not adduced any evidence in support of its allegation that the term MUDSLIDE has become recognized in Canada by ordinary and bona fide commercial usage as designating either the kind or quality of the applicant’s wares, that is, “alcoholic beverages namely, spirits, liqueurs, cocktails ” within the scope of Section 10 of the Trade-marks Act. I have therefore dismissed this ground.
The final ground of opposition relates to the alleged non-distinctiveness of the applicant’s trade-mark. The material date for assessing this ground is the date of opposition and, while the legal burden is upon the applicant to establish that its trade-mark is distinctive, there is an initial evidentiary burden on the opponent to establish the facts upon which it is relying in support of the non-distinctiveness ground. In this instance, the opponent has adduced at least some evidence to show that the term Mudslide or Mud Slide identifies a type of mixed drink and might be recognized as such particularly by bartenders and possibly by consumers of mixed drinks. That being the case, I am satisfied that the opponent has met the evidentiary burden upon it in respect of the final ground. Furthermore, as the applicant has not submitted any evidence and has not filed a written argument, I have concluded that it has not met the legal burden upon it in respect of this ground.
Having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I refuse the applicant’s application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 12TH DAY OF FEBRUARY, 1998.
G.W. Partington
Chairman
Trade-marks Opposition Board