LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 197
Date of Decision: 2012-11-08
IN THE MATTER OF AN OPPOSITION by WOOT, Inc to application No. 1,416,410 for the trade-mark WOOT! SMOKEMEAT & PIZZA in the name of WootRestaurants Inc. Les Restaurants Woot Inc.
[1] On October 30, 2008 Woot, Inc (the Applicant) filed an application to register the trade-mark WOOT! SMOKEMEAT & PIZZA (the Mark) based on proposed use in Canada in respect of the services of “the operation of a restaurant”.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of August 12, 2009. A statement of opposition was filed by Woot, Inc (the Opponent) on September 17, 2009; the Applicant filed and served its counterstatement on November 12, 2009.
[3] The Opponent filed the affidavit of Derek Chapin as well as a certified copy of its Canadian trade-mark registration No. TMA741,107 for WOOT! on March 11, 2010. The Applicant filed the affidavit of Jacob Goldberg on July 6, 2010. No cross-examinations were conducted. Both parties filed written arguments and were represented at an oral hearing.
Grounds of Opposition pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act)
[4] Section 38(2): The application does not conform to the requirements of Section 30(i) of the Act as the Applicant could not have been satisfied that it was entitled to use the Mark in light of the Opponent’s prior adoption of the WOOT! trade-mark, as well as the Applicant’s knowledge or deemed knowledge of the Opponent’s application in Canada for the trade-mark WOOT! filed November 9, 2007 under No. 1,371,394.
[5] Section 38(2)(b): The Mark is not registrable pursuant to section 12(1)(d) as it is confusing with the Opponent’s registered trade-mark No. TMA741,107 for WOOT!.
[6] Section 38(2)(c): The Applicant is not the person entitled to registration of the Mark, pursuant to section 16(3)(b) as it is confusing with the Opponent’s trade-mark WOOT! for which an application had been previously filed in Canada as set out above.
[7] Section 38(2)(d): The Mark is not distinctive within the meaning of section 2 of the Act.
Onus and Evidential Burden
[8] The legal burden lies on the Applicant in an opposition proceeding; the Applicant must establish on a balance of probabilities that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent, which means that in order for a ground to be considered at all, there must be sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
Material Dates
[9] The material dates that apply to the grounds of opposition in each case are as follows:
• Section 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.) at 475];
• Section 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.)];
• Section 16(3) – the filing date of the application [see s. 16(3)];
• Section 2 non-distinctiveness – the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Grounds That May Be Summarily Dismissed
[10] The ground of opposition alleged under section 30(i) of the Act requires that an applicant declare itself satisfied that it is entitled to use the applied-for mark. The jurisprudence suggests that non-compliance with section 30(i) can be found only where there are exceptional circumstances such as bad faith or non-compliance with a federal statute that render the applicant’s statement untrue. Mere knowledge of the existence of the Opponent’s trade-mark does not in and of itself support an allegation that the Applicant could not have been satisfied of its entitlement to use the Mark [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 CPR (2d) 152 (TMOB) at 155; Cerverceria Modelo, S.A. de C.V. v. Marcon (2008), 70 CPR (4th) 355 (TMOB) at 369; Interactiv Design Pty Ltd. v. Grafton-Fraser Inc. (1998), 87 CPR (3d) 537 (TMOB) at 542-543]. Since no facts to support an allegation of exceptional circumstances have been provided, the Opponent has not met its evidential burden and this ground is summarily dismissed.
[11] The remaining grounds of opposition turn on the issue of confusion between the trade-marks at issue; as such, a determination on the likelihood of confusion will resolve grounds raised with respect to registrability, entitlement and non-distinctiveness. The key evidence in this regard is summarized below.
Opponent’s Evidence
[12] The affidavit of Derek Chapin states that he is the Chief Financial Officer (CFO) of the Opponent. He provides that the Opponent was incorporated in the state of Texas on August 12, 2003 and is engaged in the business of operating an online store and community on www.woot.com.
[13] Mr. Chapin states that the Opponent has 2.5 million member accounts and its website averages 1 million visitors daily; there are daily deals and community forums, and the website sells a variety of products such T-shirts, wine, and children’s products. The website also features a community section where comments, opinions, experiences and technical knowledge may be shared by the site users.
[14] The Opponent provides copies of web pages as Exhibits A to G. Essentially, it appears from these pages that the Opponent provides a website where one can purchase a wide variety of items, new, used and/or refurbished, on a time limited basis at very economical prices. In my view, these items can be summarized as consumer electronics, T-shirts, wine and novelty items. The goods for sale appear to be those of third parties; individuals selling used items, or retailers and wholesalers selling items at a reduction. I note that note of the wares for sale bear the Opponent’s trade-mark.
[15] It is unclear from the pages themselves, if Canadians are able to purchase these items, or if the Opponent provides shipping to Canada. However, I note that Mr. Chapin states that the Opponent began selling and shipping T-shirts to Canada in March, 2008. The affiant states that the Opponent’s gross Canadian sales revenues were approximately $39,468 USD in 2008 and $81,486 USD in 2009. I therefore accept that that the Opponent has provided services of selling and shipping T-Shirts through its website to Canadians in Canada.
[16] The Opponent provided a certified copy of its trade-mark registration No. TMA741,107 for WOOT! registered in association with the wares “ T-shirts” and the services of “on-line retail store services in ten files of consumer electronics, house wares, home furnishings, home appliances, wine, T-shirts, plush toys, computers and computer accessories; computer services, namely providing on-line forums for transmission of messages among computer users concerning consumer products, and general interest.”.
Applicant’s Evidence
[17] Mr. Goldberg states that he is director and president of the Applicant restaurant which is located in Vaudreuil-Dorion, Quebec. The restaurant started operations in November 2008 and the affiant provides that approximately 2000 customers per month have either dined in the restaurant or taken out food from the restaurant.
[18] The restaurant is licensed to sell beer and wine for consumption within the restaurant and also for delivery with a meal outside the restaurant. Mr. Goldberg provides that the restaurant does not offer for sale any beer or wine bearing the mark WOOT or anything similar thereto.
[19] Attached as Exhibits 1-5 are a sample menu brochure that was circulated to at least 5000 customers and prospective customers in the area of the restaurant, a sample newspaper advertisement and a photograph of the outside of the restaurant, as well as a graphic depiction of the restaurant signage. In all exhibits, the trade-mark appears as WOOT! in quotations marks, with facial design features, namely eyebrows above the two “Os” and a smiling mouth with tongue sticking out below the “Os”; all of which is placed above the words SMOKEMEAT & PIZZA.
[20] Mr. Goldberg asserts that since the restaurant opened he has never had anyone ask about any connection between the restaurant and the Opponent; he is not aware of any instance of actual confusion.
[21] There are additional statements in Mr. Goldberg’s affidavit that cannot be considered as evidence, since they are essentially submissions on the deficiencies in the Opponent’s evidence, and the differences between the Applicant’s business and that of the Opponent. As such, they are not relevant here.
[22] The principal ground of opposition relates to confusion pursuant to section 12(1)(d) of the Act. An opponent’s initial onus is met with respect to a section 12(1)(d) ground of opposition if one or more of the registrations relied upon are in good standing as of the date of the opposition decision. The Registrar has discretion to check the register in order to confirm the existence of the registration(s) relied upon by an opponent [see Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd. (1986), 11 CPR (3d) 410 (TMOB)]. I have exercised that discretion and confirm that the registration for the trade-mark relied on by the Opponent is extant and therefore that it has satisfied its evidential burden. I must now assess whether the Applicant has met its legal burden to demonstrate that there is no likelihood of confusion between the trade-marks at issue.
[23] 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.
[24] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 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 each has 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, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR (4th) 361 (SCC).]
Section 6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[25] In most instances, the dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks in their appearance or sound or in the ideas suggested by them, 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.)]. Recently, in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 C.P.R. (4th) 361 (S.C.C.), the Supreme Court of Canada considered the importance of section 6(5)(e) in conducting an analysis of the likelihood of confusion (see para 49):
…the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start.
[26] In the present case the Mark incorporates the whole of the Opponent’s trade-mark so there is clearly some similarity in appearance and when sounded; both trade-marks start with the same word.
[27] With respect to idea suggested, as I may take judicial notice of dictionary definitions, I have reproduced a definition of “woot” from the Oxford Dictionaries On-Line at www.oxforddictionaries.com:
Exclamation, informal (especially in electronic communication) used to express elation, enthusiasm, or triumph.
[28] Accordingly, I find that the both trade-marks at issue suggest an exclamation of elation, which is further accentuated by the exclamation mark at the end of WOOT!. However, the Mark is a more specific suggestion of enthusiasm for the Applicant’s provision of restaurant services, namely, its smoked meat and pizza. On the other hand, the Opponent’s trade-mark is a non- specific suggestion of elation or triumph, perhaps directed towards users of electronic communication as indicated by the definition above. As such, I find that, taken as a whole, the idea suggested by the trade-marks is sufficiently different.
[29] On balance, I find that this factor favours the Applicant, slightly; although it is significant that the first part of the trade-marks is identical, I am of the view that, when taking the respective wares and services into consideration, the additional material in the Mark serves to distinguish the marks in idea suggested. Notwithstanding this finding, given the similarity of the trade-marks at issue, the other factors take on added significance [Masterpiece supra].
Section 6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[30] Both trade-marks have some degree of inherent distinctiveness in that WOOT, although a dictionary word, does appear to be directly related to the wares and services; further, the addition of the exclamation mark serves to add some distinctiveness. Trade-marks can also acquire distinctiveness through use. The Opponent has had some sales of T-Shirts in Canada in 2008 and 2009. The Applicant opened its restaurant in November 2008, and approximately 2000 customers come through its doors per month; in addition, the Applicant’s promotional activity includes distribution of flyers in its geographic area and newspaper ads. On balance, therefore, I find that both trade-marks would have acquired some distinctiveness and as such, this factor does not significantly favour either the Opponent or the Applicant.
Section 6(5)(b)- The length of time each has been in use
[31] The Applicant opened its restaurant in November 2008; the evidence shows that the Opponent commenced its use in Canada (sales and shipping of T-shirts) sometime in March 2008. On balance, I find that this factor does not significantly favour either the Opponent or the Applicant.
Section 6(5)(c) and (d) - The nature of the wares, services or business; the nature of the trade
[32] Cleary, the services at issue are very different; the Applicant has applied for restaurant services, the Opponent’s registration sets out very different services related to online sales of consumer goods, as well as the wares: T-Shirts. I am of the view that the respective businesses are unrelated, and that consequently there is no overlap in the services (or the Opponent’s wares), nor the channels of trade. This factor heavily favours the Applicant.
Conclusion
[33] In view of all of the foregoing, in particular the differences in the nature of the wares, services, and the channels of trade, I find that there is no likelihood of confusion between the trade-marks at issue. This ground of opposition is dismissed.
Section 16(3) –Non-entitlement and Section 2 – Non-distinctiveness
[34] These grounds are also based on the likelihood of confusion, albeit with different material dates and initial evidentiary burdens on the Opponent. However, taking into consideration the findings and reasoning set out above, it is self-evident that the differences in the material dates would have no effect on a determination of confusion under section 16(3) or under the ground of non-distinctiveness. Therefore these grounds of opposition are also dismissed.
[35] Disposition
[36] In view of all of the foregoing and pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
P. Heidi Sprung
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office