Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2025 TMOB 199
Date of Decision: 2025-10-16
Applicant: Shinesty, Inc.
Introduction
[1] This is a decision in respect of two oppositions by Saxx Underwear Co. Ltd. in respect of application Nos. 2067923 and 2173371 (the Applications) filed by Shinesty, Inc. (the Applicant) for the trademarks BALL HAMMOCK and BALL HAMMOCKS (collectively, the Applicant’s Marks).
[2] The BALL HAMMOCK trademark is applied for in association with the following goods:
Casual clothing; athletic clothing; children's clothing; baby clothing; outdoor winter clothing; rain clothing; Pajamas; Exercise wear; Sports clothing; Clothing for skiing; Swimwear; Foundation garments namely underwear; Clothing namely kimonos; Clothing namely non-medical face coverings; Hats, caps, toques, baseball caps, beanies and bandanas; Leisure suits, men's and women's suits; Formal wear
[3] The BALL HAMMOCKS trademark is applied for in association with:
Shorts; underwear; boxer briefs; boxer shorts; men's underwear; bathing suits for men
[4] The main issue in these oppositions is whether either or both of the Applicant’s Marks are clearly descriptive or deceptively misdescriptive of the character or quality of the associated goods.
[5] For the reasons that follow, the opposition in each case is rejected.
The record
[6] The Applicant filed its application for the trademark BALL HAMMOCK on December 2, 2020, and for the trademark BALL HAMMOCKS on February 7, 2022. Both of the Applicant’s Marks were advertised in the Trademarks Journal on July 26, 2023.
[7] On September 8, 2023, the Opponent filed a statement of opposition against each trademark under section 38 of the Act. The grounds of opposition in each case relate to registrability under sections 38(2)(b) and 12(1)(b), and distinctiveness under sections 38(2)(d) and 2 of the Act.
[8] The Applicant filed a counter statement denying the grounds of opposition.
[9] In support of the oppositions, the Opponent filed the affidavits of Shawna Olsten and Jeannine Summers. Neither of the Opponent’s affiants was cross-examined.
[10] In support of the applications, the Applicant filed the affidavits of Laura Sanchez and Amy L. Jobson. Ms. Sanchez was cross-examined on her affidavit. Her cross-examination transcript forms part of the record.
[11] As its evidence in reply, the Opponent submitted the affidavit of Alexandria Giesbrecht. By way of letter dated October 9, 2024, the Applicant objected to the admissibility of the Opponent’s reply evidence, stating that it was not proper evidence in reply. This objection will be further discussed below.
[12] Both parties submitted written representations. Only the Applicant was represented at a hearing.
Overview of the evidence
[13] A brief summary of the evidence on record is provided below. Key portions are examined in greater detail under the analysis of the grounds of opposition.
The Opponent’s evidence
[14] Ms. Olsten is Vice-President Brand for the Opponent. She explains that Saxx Apparel Ltd. was incorporated in British Columbia in 2007. In January, 2019, Saxx Apparel Ltd. was amalgamated into Saxx Holdings Inc., followed by a series of amalgamations and changes of name resulting in Saxx Underwear Co. Ltd., the Opponent in this case. The remainder of her evidence is summarized as follows:
· The Opponent has established a reputation as a manufacturer and distributor of technical clothing items.
· The Opponent’s predecessor launched a breakthrough technical underwear with an ergonomic comfort pouch for the genitals, that was later expanded to shorts, tights and sleepwear bottoms (Olsten Affidavit, paragraphs 4 and 5).
· The Opponent used the terms “hammock”, or “hammock” and “balls”, or “hammock for the package” in describing the technical features of the pouch (Olsten Affidavit, paragraph 6).
· The Opponent’s predecessor first used the term “hammock” in a live TV show in 2010, referring to the product’s features as “Like a VIP Room for the boys, a hammock for the package” (Olsten Affidavit, paragraph 7, Exhibit A).
· Since at least 2016 the Opponent used more frequently the term “hammock” in describing the special features of the underwear, with such uses being on the actual product packing, in social media channels, product catalogues, promotional email blasts and website pages (Olsten Affidavit, paragraphs 8, 9, 10 and 12, Exhibits B, C, D and E).
· The Opponent used the phrase “hammock that separated his balls” in describing the technical features of their goods in the sales catalogues and on their website (Olsten Affidavit, paragraphs 11 and 14, Exhibits D and G).
· Manufacturers and consumers used the terms “hammock” and “balls” for describing underwear (Olsten Affidavit, paragraphs 17-20, Exhibits H, I and J).
[15] On January 30, 2024, Ms. Summers, paralegal with the Opponent’s firm, conducted Google searches for the terms “ball hammock”, “hammock underwear”, and “hammock for your balls”, the results of which are attached to her affidavit as exhibits A-C. A sample selection of printouts of website pages from the Google search results that comprise Exhibit "A", Exhibit "B" and Exhibit "C" are collectively attached to her affidavit as Exhibit "D". Results of searches for the term “ball hammock” and “Shinesty”, “ball hammock” and “brief or underwear”, as well as “brief or underwear” and “hammock for your balls” were attached to her affidavit as exhibits E-G.
The Applicant’s evidence
[16] Ms. Sanchez states in her affidavit that the Applicant was founded in 2014 and has used the Marks in association with its products since at least as early as 2017. Other important parts of her evidence include the following:
· The Marks are prominently displayed in association with the Applicant’s goods on the Applicant’s website located at the URL Shinesty.com which has a high amount of Canadian traffic.
· The Marks have been prominently displayed in association with the Applicant’s goods consistently since 2017 to present.
· The Marks are prominently displayed on the Applicant’s goods themselves as well as their packaging and labelling and by third-party retailers through the websites amazon.ca and Walmart.ca.
· The Applicant has earned substantial annual revenues from the sale of its goods bearing the Marks in Canada and worldwide.
· The Applicant has extensively advertised and promoted and extensively advertises and promotes the Applicant’s goods in association with the Marks in Canada and such advertisements and promotions have received a high number of impressions.
· The Marks are and have been prominently displayed since at least as early as 2017 in the Applicant’s marketing emails to which over 66,000 contacts have signed up.
· The Applicant and its Marks have been widely recognized in the media including being featured in well-known publications Men’s Journal and Forbes.
[17] Ms. Jobson is employed as a Paralegal by Applicant’s firm. Her affidavit provided a closer look at some of the websites referenced in the Summers Affidavit.
Legal onus and evidential burden
[18] There is an evidential burden on the Opponent to prove the facts inherent in its allegations pleaded in the statement of opposition [John Labatt Ltd v Molson Companies Ltd (1990), 1990 CanLII 11059 (FC), 30 CPR (3d) 293 (FCTD)]. This means that in order for the issues raised by the Opponent to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.
[19] For those allegations for which the Opponent has met its evidential burden, the legal onus is on the Applicant to show that the Application does not contravene the provisions of the Act as alleged in the statement of opposition. The presence of a legal onus on the Applicant means that, if a determinate conclusion cannot be reached once all the evidence has been considered, then the issue must be decided against it.
Preliminary issues
Admissibility and weight to be given to the Sanchez evidence
[20] The Opponent argues that the Sanchez Affidavit generally contains inadmissible hearsay evidence, as Ms. Sanchez conceded during cross-examination that the exhibits and information included in the affidavit were prepared by third parties—specifically, employees or counsel of the Applicant. To support this position, the Opponent cites Rule 81 of the Federal Court Rules and references the decision in Indigo Books & Music, Inc v Preferred One Inc, 2010 TMOB 100, which held that statements made on information and belief in an affidavit are, prima facie, inadmissible hearsay.
[21] In response, the Applicant submits that Ms. Sanchez, by virtue of her position as Chief Operating Officer of the Applicant since 2018, is aware of the particular facts in her affidavit whether or not she was personally responsible for taking certain photographs or saving screen captures of the evidence contained therein. Ms. Sanchez specifically stated in her affidavit that by virtue of her position with the Applicant she has access to records relating to the matters in these oppositions. Ms. Sanchez also stated in her affidavit that the Applicant maintains records relating to the matters set out in her affidavit in the usual and ordinary course of its business.
[22] I reproduce below the following statement made by O’Keefe J. in Scott Paper Limited v Georgia-Pacific Consumer Products LP (2010), 2010 FC 478 (CanLII), 83 CPR (4th) 273 (FC) at para 35: “Affiants may depose facts within their personal knowledge [see Rule 81, Federal Courts Rules, SOR/98-106]. This Court has accepted that an affiant's office may manifestly put him or her in a position to have personal knowledge of facts without necessarily being a direct witness to the event [see Philip Morris Inc c Imperial Tobacco Ltd, 1987 CanLII 9726 (FC), [1987] FCJ No. 26, 13 CPR (3d) 289 ].” I agree with the Applicant that Ms. Sanchez, by virtue of her position as Chief Operating Officer of the Applicant, was manifestly in a position from the standpoint of her office and experience "to know whereof she deposed".
[23] The Opponent also pointed to statements in Ms. Sanchez’ cross-examination where she wasn’t certain of an answer, as evidence of her lack of knowledge on this matter. There is no reason to assume that Ms. Sanchez would not have been in a position to provide background evidence to support the statements made within her affidavit, if the Opponent had sought to have her produce them. As noted by the Applicant, where she was unsure of an answer, she offered to follow up or double check. Further, the Opponent did not request any undertakings.
[24] In view of the above, I find the Sanchez affidavit admissible and I give it full weight.
Is the Giesbrecht affidavit proper reply?
[25] The Opponent filed the affidavit of Ms. Giesbrecht, articling student with the Opponent’s agent, on September 16, 2024, as its evidence in reply. In both a letter to the Opposition Board dated October 9, 2024, and in its written representations, the Applicant requests that the Giesbrecht affidavit be excluded on the basis that it does not constitute proper reply evidence.
[26] Part of the Opponent’s evidence in chief, as mentioned above, included the affidavit of Ms. Summers, who conducted google searches for various terms including “ball hammock”, “hammock underwear”, and “hammock for your balls”. The Google Search Engine results included reference to the websites omffiby.com and Harrislyn.com but did not include copies of printouts from such websites. The Applicant’s affiant Ms. Jobson reviewed the website www.omffiby.com and deposed that the terms “BALL HAMMOCK” and “BALL HAMMOCKS” did not appear to be used on this website. She also stated that she was unable to access the website www.Harrislyn.com.
[27] The Opponent submits that Giesbrecht Affidavit replies directly to an issue raised through the Jobson Affidavit, that the webpages at www.omffiby.com and www.harrislyn.com did not show use of “ball hammock”. The Applicant, on the other hand, submits that the Giesbrecht affidavit includes results from searches of the Wayback Machine of the webpages www.omffiby.com and www.Harrislyn.com, which would have clearly been available to the Opponent as a part of Ms. Summers’ initial research.
[28] I agree with the Applicant’s submissions on this issue. Proper reply evidence is that which responds directly to points raised in an applicant’s evidence that are unanticipated; it is not meant to correct or complete an opponent’s earlier evidence, and does not entitle a party to split its case [see Halford v Seed Hawk Inc, 2003 FCT 141]. In this case, I agree with the Applicant that searches of the Wayback Machine of the webpages www.omffiby.com and www.Harrislyn.com, would have clearly been available to the Opponent as a part of Ms. Summers’ initial research.
[29] In view of the above, I find the affidavit of Ms. Giesbrecht to be improper reply evidence and will therefore not give any weight to it.
Analysis of the grounds of opposition
Section 12(1)(b) ground of opposition
[30] The Opponent has pleaded that the Mark is not registrable because whether depicted, written or sounded, it is either clearly descriptive or deceptively misdescriptive of the character or quality of the goods with which it is used or proposed to be used.
[31] The Opponent submits that “ball hommock” is descriptive of the supporting structure that is a component part of men's underwear or shorts. If the Applicant's goods do not present such feature, the Applicant’s Marks are deceptively misdescriptive of the character of the goods.
Assessment of a section 12(1)(b) ground of opposition
[32] The registrability of the Mark under section 12(1)(b) must be assessed as of the filing date of the applications, which in this case is December 2, 2020, for BALL HAMMOCK and February 7, 2022, for BALL HAMMOCKS [Fiesta Barbeques Ltd v General Housewares Corp, 2003 FC 2003 FC 1021, 28 CPR (4th) 60].
[33] In deciding whether a trademark is clearly descriptive, some of the key governing principles which should be applied include the following:
· The trademark must be considered as a matter of first impression from the point of view of the average purchaser of the associated goods [John Labatt Ltd v Carling Breweries Ltd (1974), 1974 CanLII 2796 (FC), 18 CPR (2d) 15 at 19 (FCTD); Ontario Teachers' Pension Plan Board v Canada (Attorney General), 2012 FCA 60].
· To be “clearly” descriptive, the meaning of the trademark has to be “easy to understand, self-evident or plain” [Drackett Co of Canada Ltd v American Home Products Corp (1968), 55 CPR 29 (Ex Ct) at 34].
· For a word to be clearly descriptive it must be material to the composition of the goods [Canada (Registrar of Trade Marks) v Provenzano (1977), 37 CPR (2d) 189 (FCTD) at p. 189].
· In determining whether a trademark is registrable under section 12(1)(b) of the Act, the Registrar must not only consider the evidence but also apply common sense [Neptune SA v Attorney General of Canada (2003) 2003 FCT 715 (CanLII), 29 CPR (4th) 497 (FCTD)].
· The purpose of the prohibition in section 12(1)(b) of the Act is to prevent any single trader from monopolizing a term that is clearly descriptive or common to the trade, thereby placing legitimate traders at a disadvantage [Canadian Parking Equipment v Canada (Registrar of Trade Marks), 1990 CanLII 13740 (FC), 1990 CarswellNat 834 (FCTD)]; e-Funds Ltd v Toronto-Dominion Bank (2007), 61 CPR (4th) 475 at para 15].
· The courts have recognized that descriptive words are the property of all and cannot be appropriated by one person for their exclusive use [General Motors Corp v Bellows (1949), 1949 CanLII 47 (SCC), 10 CPR 101 (SCC) at 112-113].
Analysis
Has the Opponent met its evidential burden?
[34] The Opponent’s position with respect to section 12(1)(b) is essentially twofold. First, the Opponent argues that the Mark in association with men’s underwear or shorts clearly describes a feature and an intrinsic characteristic of the goods, namely that they have a pouch in the shape of a hammock to support the male genitals. Second, the Opponent argues that its evidence demonstrates that the words “ball” and “hammock” are common to the trade and are used by manufacturers, traders, or consumers to describe or to refer to a special technical feature of the goods.
[35] With respect to the Opponent’s first point, the Opponent did not specifically provide dictionary definitions for the terms “ball” or “hammock”. I am therefore prepared to exercise my discretion and take judicial notice of the dictionary definitions of “ball” — one definition being “a man’s testicles” — and “hammock” — defined as “a piece of strong cloth or netting, hung between two supports and used as a bed,” according to the Collins Online Dictionary [see Tradall S.A. v Devil’s Martini Inc, 2011 TMOB 65 at para 29]. Given these definitions, I agree with the Opponent that on its own, the word “ball” could be individually used to describe a feature or characteristic of men’s underwear, given its definition of meaning a male’s testicle. The same cannot be said, however, with respect to the word “hammock” for the reasons that will be explained further below.
[36] While the meaning of the words is important, the linguistic construction of the words may also play a part in determining whether a trademark is clearly descriptive or deceptively misdescriptive [Clarkson Gordon v Registrar of Trade Marks (1985), 1985 CanLII 6456 (FC), 5 CPR (3d) 252 (FCTD) – AUDITCOMPUTER; Pizza Pizza Ltd v Registrar of Trade Marks (1982), 1982 CanLII 5595 (FC), 67 CPR (2d) 202 (FCTD) – PIZZA PIZZA]. The consideration that the courts have made in regards to novel linguistic constructions is essentially that by creating a new linguistic construction, the applicant or owner of the trademark has not removed words from the vocabulary of others providing comparable goods.
[37] The Applicant submits that the combination of the words ball and hammock or hammocks into BALL HAMMOCK or BALL HAMMOCKS are unusual linguistic constructions whose meaning may not be plain or evident to the average consumer of men’s underwear. I reproduce below the Applicant’s written representations at para 101 in support of this argument:
While the words “ball” and “hammock(s)” are ordinary English words that could arguably be somewhat suggestive in the context of the underwear products, their combination and arrangement suggest different meanings, none of which are clearly descriptive of the character or quality of the associated goods. For example, what is a “ball hammock”? Is it a hammock containing balls? Is it a hammock comprised of balls? Is it a hammock made for balls?
In view of the various meanings which may be attributed to “ball hammock” or “ball hammocks”, I do not find either trademark as a whole to be self evident or plain in meaning in the context of the Applicant’s goods, particularly as a matter of first impression. While a hammock comprised of balls is not a plausible meaning, the other two examples provided by the Applicant are arguably suggestive but not clearly descriptive. In my view, it is unclear whether “hammock” or “hammocks” is intended to convey that the pouch in the underwear is shaped like a hammock or provides the comfort of a hammock, which in itself is a nebulous concept. Further, consumers of the Applicant’s goods may wonder how a pouch can be shaped like a hammock to contain simply the testicles, as opposed to the penis itself (as is more apparent from the slang term “banana hammock”).
[38] To support its second point, the Opponent provided a number of examples of uses by itself and by third parties of the words “ball” and/or “hammock” or “hammocks” in association with men’s underwear or shorts. For example, the materials at Exhibits A-G of the Olsten affidavit are representative examples of the manner of the Opponent’s use of “hammock” and “balls” over the years to promote the technology behind the Opponent’s SAXX clothing items. The Opponent also used the phrase “hammock that separated his balls” in describing the technical feature of its goods in its sales catalogues and on its website (Olsten Affidavit, paragraphs 11 and 14, Exhibits D and G).
[39] The Opponent also submitted that promotional emails and digital messages distributed to the Opponent’s Canadian customers also included references to “hammock” and used “hammock” and “balls” in the same instance including the following:
“Designed to keep your balls in place, our hammock-shape tech…”
“Designed to keep everything in place, our hammock-shaped tech…”
“the BallPark Pouch is shaped like a hammock so your balls won’t feel…”
“Cradle his jewels in our hammock-shaped pouch”
“Our hammock-shaped pouch keeps everything in place so you can enjoy chafe-free comfort to your ball’s content”
“it’s like a luxurious hammock for your balls”
[40] Using two words that comprise one trademark “in the same instance”, however, is not the same as using the two words that comprise one trademark “as a whole”. As the Opponent has not shown that any use by it of either of the phrases “ball hammock” or “ball hammocks” as a whole, this evidence on its own is therefore not sufficient to demonstrate that either of the Marks is clearly descriptive of their associated goods.
[41] The Opponent’s evidence that “ball hammock” or “ball hammocks” have been commonly used by other traders to refer to a special technical feature of underwear, as evidenced in the Summers affidavit, is also deficient in several respects. As summarized in paragraph 28 of the Applicant’s written representations (and as set out in Schedule A to the Applicant’s written representations), out of approximately 27 examples of alleged descriptive uses of the terms “ball hammock”, “hammock”, “ball” or “balls” for underwear submitted by the Opponent:
· several examples come from websites which, as of June 6, 2024, did not actually contain the terms “ball hammock” or “ball hammocks” , as confirmed by the Applicant’s affiant, Ms. Jobson;
· some references are those of the Applicant;
· others references relate to sporting equipment, pet supplies, or home goods—not underwear or related apparel;
· some examples are linked to the same third party;
· many references do not use “ball hammock” or “ball hammocks” together as a single phrase;
· several references were dated after the relevant material dates;
· most of the references are inadmissible because they only appear on Google search result pages without any evidence supporting their reliability [Blistex Inc v Smiths Medical ASD, Inc, 2012 TMOB 184 at para. 17].
[42] While the Applicant also objected to those references in the Summers that were from outside of Canada, I note that this does not in and of themselves make them irrelevant under the section 12(1)(b) ground. As noted in Wonder Brands Inc. and Poppy Industries Canada Inc., 2023 TMOB 158 at para. 17: “the issue is not whether the term has been used in a clearly descriptive manner in Canada, but whether the term is clearly descriptive in the English or French language [see Canadian Inovatech Inc v Burnbrae Farms Ltd (2003), 2003 CanLII 85823 (CA TMOB), 31 CPR (4th) 151 (TMOB) at para 13; Guess? Inc v Slide Sportswear Inc (2005), 2005 CanLII 78306 (CA TMOB), 44 CPR (4th) 380 (TMOB)].” Regardless, neither the evidence in the Olsten affidavit nor in the Summers affidavit persuades me that the Marks are clearly descriptive for the following reasons.
[43] First, as noted by the Applicant, the test is whether either of the Marks as a whole, when viewed as a matter of first impression, is clearly descriptive. The use by the Opponent and other third parties of the words “ball” and “hammock” separately do not show that the Marks BALL HAMMOCK or BALL HAMMOCKS are clearly descriptive as a whole.
[44] Second, after excluding a large part of the evidence for the reasons stated earlier, the remaining results consist of the following references:
· 4 Pack Mesh Breathable Ball Hammock Underwear – [Exhibit D, p. 393 – Versaley.com]
· Men’s Underwear for Men Need Long Sit Ball Hammock Pouch Underwear – [Exhibit D, p. 54-57– Amazon.ca];
· Start Packing-Ball Hammock Boxer Briefs [Exhibit D, p. 58 – 65; p. 515 - Bierstick.com];
· Ball Hammock Separate Pouches Men’s Briefs [Exhibit D, p. 495 – Versaley.com];
· Article titled “Ball Hammock Underwear” [Exhibit D, p. 500 - Smuggsunderwear.com.au]
[45] In my view, at best for the Opponent, this is evidence of four traders using the term. This evidence is not extensive, and insufficient to show that traders in the marketplace use “ball hammock” or “ball hammocks” to describe a technical feature of their underwear.
[46] Ultimately, while “ball” and “hammock” or “hammocks” may well be suggestive of a feature or characteristic of men’s underwear or shorts, I do not consider either of them to convey a self-evident meaning to consumers in association with these goods, nor does the evidence of record persuade me that their registrations would prohibit other traders from using apt descriptive terms. Thus, I do not consider either of the Marks to be clearly descriptive within the meaning of section 12(1)(b) of the Act. Further, as I do not consider that I have evidence to suggest that either of the Marks is likely to deceive consumers as to any inherent characteristic or trait of the Applicant’s goods, I also find that the Marks are not deceptively misdescriptive. Consequently, the section 12(1)(b) ground of opposition is rejected in each case.
Section 38(2)(d) ground of opposition
[47] The Opponent’s section 38(2)(d) ground of opposition, which is identical in both proceedings except for the trademark referenced, is reproduced below:
The Opposed Trademark is not distinctive within the meaning of Section 2 of the Trademarks Act, in that it does not actually distinguish, nor is it adapted to distinguish, nor is it capable of distinguishing, the Applicant's goods as described in the Application from the Opponent’s goods or the goods of others. In particular, long before the Applicant adopted or filed a trademark application for BALL HAMMOCK/BALL HAMMOCKS, the Opponent and others have used in Canada the phrase "ball hammock”, “hammock for your boys" or "hammock for your balls", or separately the terms "ball", "balls" and "hammock" in relation to underwear and shorts in order to describe a characteristic for the goods. As a result of such uses, the Opposed Trademark is not capable of functioning as a source indicator and to distinguish the Applicant's goods from those of the Opponent or others.
[48] I understand the Opponent’s position to be that the ordinary consumer of men’s underwear would perceive the Marks as being a reference to the presence of “ball hammock(s)” in the Applicant’s goods rather than as a source identifier for the Applicant’s goods. Therefore, upon seeing the Marks, consumers would not view them as source indicators but rather as a reference to the a technical feature of the Applicant’s underwear.
[49] The material date for a distinctiveness ground of opposition is the date of filing of the opposition, namely September 8, 2023 [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 2004 FC 1185 (CanLII), 34 CPR (4th) 317 (FC)].
[50] As discussed above with respect to the section 12(1)(b) ground, I find that the Mark is not clearly descriptive or deceptively misdescriptive, and so that basis for the Opponent’s section 2 ground of opposition fails.
[51] However, just because a trademark is found not to contravene section 12(1)(b) does not necessarily mean that the trademark is distinctive within the meaning of section 2 of the Act [see Canadian Council of Professional Engineers v APA - The Engineered Wood Assn (2000), 2000 CanLII 15543 (FC), 7 CPR (4th) 239 (FC) at para 49]. Thus, I have considered whether the Opponent’s evidence otherwise impugns the distinctiveness of the Mark aside from the criteria which is used to consider whether a trademark is clearly descriptive or deceptively misdescriptive.
[52] In particular, the Opponent argues that it and others have used the phrases “ball hammock”, “hammock for your boys”, “hammock for your balls”, or separately the terms “ball”, “balls” and “hammock” in relation to underwear and shorts in order to describe a characteristic of these goods. I do not find the Opponent’s position on this point persuasive. In this regard, I do not consider that I have sufficient evidence prior to the material date that any such third-party products were in fact sold in quantities in Canada, or were otherwise known to Canadians, sufficient to negate the distinctiveness of either of the Marks, which is a critical consideration under a section 2 ground of opposition [see Rothmans, Benson & Hedges, Inc v Imperial Tobacco Products Ltd, 2012 TMOB 226, aff’d (2014), 118 CPR (4th) (FC), aff’d 2015 FCA 111, 132 CPR (4th)]. Indeed, as discussed above, with respect to the expression BALL HAMMOCK or BALL HAMMOCKS, the Opponent’s evidence appears to disclose four traders displaying that term. Consequently, I do not consider the Opponent’s evidence to meet the Opponent’s initial evidential burden under section 2 on the issue of whether either of the Marks is already used by multiple traders in Canada.
[53] In view of the above, the section 2 ground of opposition is rejected.
Disposition
[54] In view of the above, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the oppositions pursuant to section 38(12) of the Act.
Cindy R. Folz
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2025-09-17
APPEARANCES
For the Applicant: Claire Stempian and Karen MacDonald
AGENTS OF RECORD
For the Applicant: Cassels Brock and Blackwell LLP