Canadian Intellectual Property Office
Citation: 2022 TMOB 211
Date of Decision: 2022-11-01
IN THE MATTER OF SECTION 45 PROCEEDINGS
Requesting Party: Tim Hortons Canadian IP Holdings Corporation
Registered Owner: In-N-Out Burgers
Registrations: TMA640,147 for DOUBLE-DOUBLE,
TMA758,369 for DOUBLE-DOUBLE, and
TMA758,432 for DOUBLE-DOUBLE
Introduction
[1] This is a decision involving summary expungement proceedings under section 45 of the Trademarks Act, RSC 1985, c T‐13 (the Act) with respect to registration Nos. TMA640,147; TMA758,369; and TMA758,432. Each registration is for the trademark DOUBLE-DOUBLE (the Mark). The owner of the registrations is In-N-Out Burgers (the Owner).
[2] Registration TMA640,147 (the ’147 Registration) covers the goods “Double cheeseburgers” and the services “Specially prepared sandwich as part of restaurant services”.
[3] Registration TMA758,369 (the ’369 Registration) covers the services “Specially prepared sandwich as part of restaurant services”.
[4] Registration TMA758,432 (the ’432 Registration) covers the goods “A sandwich, namely, a burger the principal ingredients of which are two meat patties and two slices of cheese”.
[5] For the reasons that follow, I conclude that all three registrations ought to be maintained in their entirety.
Proceeding
[6] At the request of Tim Hortons Canadian IP Holdings Corporation (the Requesting Party), the Registrar of Trademarks issued notices under section 45 of the Act on September 16, 2019, to the Owner.
[7] The notices required the Owner to show whether the Mark was used in Canada in association with each of the goods and services specified in the registrations at any time within the three-year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use for each registration is September 16, 2016 to September 16, 2019.
[8] The relevant definitions of “use” are set out in section 4 of the Act as follows:
4(1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
4(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[9] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trademark in association with each of the goods and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].
[10] Where the owner has not shown “use”, the registration is liable to be expunged or amended, unless there are special circumstances that excuse the absence of use.
[11] In response to the Registrar’s notices, the Owner filed the affidavit of Denny Warnick sworn in Baldwin Park, California, U.S.A. on May 6, 2020 (the Warnick Affidavit). Mr. Warnick is the Vice President of Operations of the Owner.
[12] Both parties submitted written representations. Only the Owner participated in the hearing. As the evidence and written representations filed were the same for each registration, for ease of reference I will refer to these items in the singular.
Evidence
[13] The Warnick Affidavit comprises four volumes and sixty exhibits. I will not summarize the entirety of its contents, and will instead focus on the most pertinent aspects.
[14] The Owner is a corporation incorporated and headquartered in California. It carries on business in the food and restaurant industry and has done so continuously since at least as early as 1948. The Owner’s restaurants are “quick service” restaurants where customers can eat in the restaurants, take out their orders, or make use of drive-thru facilities. As of the date of the Warnick Affidavit, the Owner had more than 350 restaurant locations in the United States, including restaurants in California, Arizona, Texas, Nevada, Oregon and Utah.
[15] Among the food products that the Owner sells are burgers and cheeseburgers, including a double cheeseburger which is sold in association with the trademark DOUBLE-DOUBLE (I will refer to this latter item as the “Double Cheeseburger(s)” as is done in the affidavit). Mr. Warnick describes the Double Cheeseburger as a sandwich, namely, a burger having two meat patties and two slices of cheese. The Double Cheeseburgers are specially prepared by the Owner’s employees according to individual customers’ particular requests (e.g. by serving the Double Cheeseburgers with grilled or raw onions, with our without optional ingredients such as pickles, etc.).
[16] The Owner has continuously sold Double Cheeseburgers since at least as early as 1963, and they account for over 30% of burger items sold company-wide. Since at least as early as 2000, the Double Cheeseburgers are sold in paper packaging which prominently bears the Mark.
[17] In addition to its restaurant locations in the U.S., the Owner also provides “cookout events” using “cookout trucks” which are self-contained mobile restaurants which each include a large trailer (pulled by a truck) with kitchen facilities and an opening for taking customer orders and providing food products to customers. The cookout trucks are available for use at special events (e.g. corporate picnics, weddings, concerts, and charitable events). As of the date of the Warnick Affidavit, the Owner had more than 10 cookout trucks.
[18] Mr. Warnick states that the cookout trucks allow the Owner to serve its customers in locations where it does not have a permanent restaurant and in some instances for test marketing and promotion of its products and services in new areas. As well, the cookout trucks allow the Owner to build and maintain interest in the Owner and its products and services in areas where the Owner does not have a permanent restaurant both by direct awareness of customers attending the cookout events and indirect awareness to many others through news and social media coverage that often surround the cookout events.
[19] Mr. Warnick states that the Owner’s provision of its services and the sale of its food products at cookout events using its cookout trucks is part of the Owner’s normal course of trade and has been for many years, including during the relevant period.
[20] In addition to using its cookout trucks in certain locations in the United States, the Owner has also used its cookout trucks to sell food products in Canada for many years. For example, in each of 2008, 2009, 2011, 2012, 2013, 2014, 2015, 2016, 2017, 2018 and 2019, the Owner held one-day cookout events in Langley, British Columbia (the Langley Cookout Events). The Owner held the Langley Cookout Events in each of those years during the annual “Langley Good Times Cruise-In” event, which is an annual outdoor car show held in Langley, British Columbia (the event was not held in 2010 as it was on hiatus that year). The Langley Good Times Cruise-In is organized by a not-for-profit society named the Langley Good Times Cruise-In Society (the Society) and is a large community charity fundraising event that is attended by tens of thousands of people each year.
[21] With particular reference to the relevant period in these proceedings, the Owner held its Langley Cookout Events on September 9, 2017, September 8, 2018 and September 7, 2019.
[22] For each of the Langley Cookout Events, the Owner had one of its cookout trucks driven from California to Langley, B.C. with food ingredients sufficient to make 1500 Double Cheeseburgers, and typically 10 to 15 employees to prepare and serve the food products. Each of the Double Cheeseburgers served during the Langley Cookout Events was served in paper packages prominently displaying the Mark. Each year, at least 1390 of the Double Cheeseburgers were sold to customers at the Langley Cookout Event. The price charged for the Double Cheeseburgers (which were sold along with a drink and chips) was $10.00 for each of the 2017-2019 Langley Cookout Events.
[23] The Double Cheeseburgers were sold at the Langley Cookout Events during the relevant period using tickets that the Owner prepared. Each ticket displayed the Mark. Customers purchased the Double Cheeseburgers by paying for tickets and then redeemed the tickets for the Double Cheeseburgers.
[24] The Warnick Affidavit includes as exhibits numerous photographs of the Langley Cookout Events during the relevant period, along with representative examples of the packaging and tickets bearing the Mark from the relevant period [e.g. Exhibits 5, 7 and 12]. Examples of newspaper advertising in The Langley Advance Times during the relevant period promoting the Langley Cookout Events and displaying the Mark is also included in Exhibits 22, 23 and 25. In particular, the Owner’s advertisements appeared in official souvenir programs that were published by The Langley Advance Times and circulated as supplements with issues of that newspaper in the week leading up to each Langley Good Times Cruise-In event.
[25] The net proceeds of the Owner’s sales at the Langley Cookout Events were donated to charity. In particular, for each event, the Owner recovered its costs out of the sales proceeds and then the remainder of the proceeds were donated to one or more charities selected by the Society. The details of this arrangement are set out in written agreements signed in advance of each event, examples of which are included in Exhibit 33 to the Warnick Affidavit.
[26] Mr. Warnick states that the Langley Cookout Events have been very successful and popular, with strong customer demand and long customer line ups to purchase the Double Cheeseburgers. Photos of the Owner’s food truck, the Owners employees, and customers in line to receive the goods at the Langley Cookout Events during the relevant period are included as Exhibits 11 to 13.
Analysis
Goods
[27] As noted above, the goods covered by the ’147 Registration are “Double cheeseburgers” and the goods covered by the ’432 Registration is “A sandwich, namely, a burger the principal ingredients of which are two meat patties and two slices of cheese”. For the reasons below, in my view, the Owner’s activities described in the Warnick Affidavit are sufficient to maintain the goods in both of those registrations.
[28] The owner has demonstrated that on three occasions within the relevant period in Canada, namely, September 9, 2017, September 8, 2018 and September 7, 2019, the Owner sold Double Cheeseburgers in packaging bearing the Mark. On its face, this is use of the Mark in association with the goods for the purposes of sections 4(1) and 45 of the Act.
[29] The Requesting Party’s contention is that the Owner’s use of the Mark was token use solely to maintain the registration in Canada, and was not use of the Mark “in the normal course of trade” as required by section 4(1) of the Act, because the events were only one day per year and the Owner has not yet opened a bricks-and-mortar restaurant location in Canada.
[30] I am unable to agree with the Requesting Party’s characterization of the Owner’s activities as amounting to “token” use. On each of the three occasions during the relevant period, the Owner sold over 1390 Double Cheeseburgers to event attendees, for a total of over 4000 Double Cheeseburgers sold in association with the Mark during the relevant period in Canada. The Requesting Party has not directed me to any jurisprudence which would suggest that sales of that nature and volume made during the relevant period should be considered “token” or “contrived”. In this regard, I do not consider the decision in Jose Cuervo SA de CV v Bacardi & Company Limited and the Registrar of Trade-Marks, 2009 FC 1166 at paras 8, 37 and 42 (Bacardi), relied on by the Requesting Party, to be instructive in the present case. In Bacardi, the trademark owner demonstrated isolated sales, many years apart, and none of which were within the relevant period for that case. In the present circumstances, the Owner has demonstrated sales in Canada each year during the relevant period, and has demonstrated that activity is a continuation of similar annual sales in Canada dating back many years.
[31] Moreover, rather than being a token or contrived sale to, for example, a closely-related entity, the evidence demonstrates that the Owner’s sales of the Double Cheeseburgers were to numerous individual paying customers.
[32] In addition, Mr. Warnick not only states that such sales were in the Owner’s normal course of trade [see paras 28 and 48 of the Warnick Affidavit], but provides sufficient factual details regarding the cookout trucks generally and the Owner’s activities in Canada specifically to support his assertion.
[33] Finally, it is worth noting that another registration of the Owner for the trademark DOUBLE DOUBLE (i.e. without a hyphen) in association with the goods “cheeseburgers” and the services “specially prepared sandwich as part of restaurant services” was the subject of a prior section 45 proceeding commenced by a different requesting party. That prior section 45 proceeding resulted in a decision of the Registrar to maintain the registration [see Fasken Martineau DuMoulin LLP v In-N-Out Burgers (2007), 61 CPR (4th) 183 (TMOB) (Fasken)]. In Fasken, the evidence provided by the Owner and discussed in the decision appears to have been similar in nature (but less extensive) to that which the Owner has provided in this case. For example, set out below is the Registrar’s characterization of certain evidence in that earlier proceeding (para 19 of Fasken):
Mr. Wensinger states that the registrant has not used the subject trade-mark DOUBLE DOUBLE in Canada except on July 16th, 2003. Mr. Wensinger states that in about the spring of 2003 his company decided to undertake sales and marketing of its fast-food products in Canada, targeting the summer of 2003 for the event. On July 16th his company put on a cookout on the premises of Volvo Trucks of Vancouver, details of which are set out in the Pendleton affidavit. Specifically, Mr. Wensinger states that his company entered into a contract with Volvo to provide burgers including cheeseburgers, and a specially prepared sandwich as part of restaurant services. At the cookout many DOUBLE DOUBLE cheeseburgers were served in wrappers marked with the subject trade-mark, a sample of which is attached as Exhibit K to the Pendleton affidavit.
[34] In Fasken, the Registrar found that the Owner had demonstrated use of the trademark DOUBLE DOUBLE in association with both the goods and services in accordance with sections 4(1) and 4(2) of the Act, and maintained the registration in its entirety. I see no reason to depart from that conclusion in this case, particularly when the evidence of use in this case appears to be more extensive than in Fasken, in terms of the number of cookout events held in Canada during the relevant period, and with respect to the details of the number of Double Cheeseburgers sold.
[35] In view of the above, I am satisfied that the Owner has demonstrated use of the Mark in Canada during the relevant period in association with the goods in the ’147 Registration and the ’432 Registration within the meaning of sections 4(1) and 45 of the Act.
Services
[36] The services in the ’147 Registration and the ’369 Registration are both described as “Specially prepared sandwich as part of restaurant services”. In my view, the Owner has demonstrated use of the Mark in Canada in association with those services during the relevant period.
[37] In particular, the Owner has demonstrated that it displayed the Mark in association with the sale of Double Cheeseburgers from its cookout trucks by virtue of the Mark being present on, inter alia, the product packaging and the tickets redeemed to obtain the food. Similar to the finding in Fasken, I consider this activity to fall within the scope of the provision of a specially prepared sandwich as part of restaurant services.
[38] In addition, the Owner has provided examples of the display of the Mark in advertising of the services in Canada during the relevant period (e.g. advertisements which appeared in the Langley Advance Times newspaper), which also constitutes use for the purposes of section 4(2) of the Act in this case.
[39] The Requesting Party relies on the decision Boston Pizza International Inc v Boston Chicken Inc (1998), 87 CPR (3d) 333 (TMOB) (Boston Chicken) wherein the Registrar expunged a trademark for lack of use in association with take-out restaurant and catering services when the trademark had been displayed at only a single charity event in Canada. However, I consider the facts of Boston Chicken to be distinguishable from the facts of this case. In particular, Boston Chicken involved one occasion of a trademark owner’s licensee bringing side-portions of corn and mashed potatoes across the border from Detroit to be served at a Salvation Army facility in Windsor, Ontario. In characterizing the trademark owner’s activity in Canada in that case, the Hearing Officer stated at para 12: “such event stands alone and in complete isolation from any proof of any use of a normal commercial nature having occurred in Canada.” In my view, the isolated event described in Boston Chicken bears little resemblance to the Owner’s evidence in this case of a consistent pattern of activities annually in Canada for many years, including three events during the relevant period in which a total of more than 4000 Double Cheeseburgers were sold to paying customers.
[40] I also note that, while the Boston Chicken decision related to services, to the extent that the Requesting Party in this case also relies on that decision to suggest that the Owner has not used the Mark in association with goods, I would distinguish Boston Chicken on the same basis as set out above.
[41] Finally, I note that the Requesting Party also relies on Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134 (Hilton) for the principle that use of a trademark in association with services requires that people in Canada can receive a material benefit from the services performed in Canada, and argues that material benefit is not present in this case. However, I agree with the Owner that the facts of this case are quite different from those in Hilton, as in this case the Owner was physically present in Canada providing the services at issue during the relevant period. In any event, at a minimum, the evidence demonstrates that attendees at the Langley Cookout Events benefitted from the Owner’s provision of services in Canada during the relevant period, in that the attendees were provided with the food goods.
[42] In view of the above, I am satisfied that the Owner has demonstrated use of the Mark in Canada during the relevant period in association with the services in the ’147 Registration and the ’369 Registration for the purposes of sections 4(2) and 45 of the Act.
Disposition
[43] Pursuant to the authority delegated to me under section 63(3) of the Act, and in compliance with the provisions of section 45 of the Act, the registrations will be maintained.
___________________________
Timothy Stevenson
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2022-10-18
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Craig A. Ash
AGENTS OF RECORD
For the Requesting Party: Bereskin & Parr LLP/S.E.N.C.R.L., S.R.L.
For the Registered Owner: Oyen Wiggs Green & Mutala LLP