Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION

by Cadbury Adams USA LLC to application

no. 1270554 for the trade-mark EXTREME

filed by Wm. Wrigley Jr. Company

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[1]        On August 31, 2005, Wm. Wrigley Jr. Company filed an application to register the trade-

mark EXTREME, based on proposed use in Canada, in association with the wares

confectionery, namely, non‑medicated chewing gum,

                                                           bubble gum, candy and mints.

The Examination Section of the Trade-marks Office raised objections to the applied for mark on the basis that it was confusing with several registered marks, and co-pending applications, comprised in whole or in part of the component EXTREME (or variations of the term). The applicant responded by pointing out that differences between the cited marks and the applied for mark in appearance or sound or ideas conveyed distinguished the applied for mark from each of the cited marks.

[2]        The applied for mark EXTREME was subsequently advertised for opposition purposes in the Trade-marks Journal issue dated August 16, 2006, and was opposed on October 3, 2006, by Cadbury Adams USA LLC. I note in passing that the opponent is the owner of one of the co-pending applications (for the mark BUBBA XTREME) initially cited by the Office.  The Registrar forwarded a copy of the statement of opposition to the applicant on October 17, 2006, as required by Section 38(5) of the Trade-marks Act.  The applicant responded by filing and serving a counter statement.

[3]       The opponent’s evidence consists of the affidavit of Agata Maria Luczkiewicz. The applicant’s evidence consists of the affidavits of Dan Alvo; Laura L. Thompson; and certified copies of trade-mark registrations comprised in whole or in part of the component EXTREME (or variations of the term) covering, among other things, confectionaries. Both parties filed written arguments, however, neither party requested an oral hearing.

Statement of Opposition

[4]        The first and second grounds of opposition, pursuant to Sections 30(e) and (i) of the Trade-marks Act, allege that “the word EXTREME is not a trade-mark,” and therefore that the applicant had no intention to use the term as a trade-mark and cannot have been satisfied of its entitlement to use the term as a trade-mark.

The third ground of opposition, pursuant to Section 12(1)(b) of the Act, alleges that the applied for mark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares, “namely that such wares have an ‘extreme’ flavour.”

[5]        The fourth ground of opposition, pursuant to Sections 10 and 12(1)(e) of the Act, alleges that the applied for mark is not registrable because it has become “recognized as designating a kind or quality of wares, namely that such wares have an ‘extreme’ flavour.”

The final ground of opposition, pursuant to Sections 2 and 38(2)(d), alleges that the applied for mark is not adapted to distinguish the applicant’s wares “in view of the widespread use of the word ‘EXTREME’ as a descriptive element, or, alternately, as a trade mark [sic] of many others.”

Opponent’s  Evidence

Agata Maria Luczkiewicz

[6]        Ms. Luczkiewicz identifies herself as an articling student with the firm representing the opponent. Her evidence consists, in part, of the results of Internet searches for the term “extreme” in connection with the terms “flavour,” “candy,” “gum,” “confectionery,” “mint” and “taste.” The search results include the following: EXTEREME FLAVOUR SHOTS (for French fry toppings), METEO EXTREME FUDGE ( for cookies), EXTREME DARK (for chocolate bars), and DANISSIMO EXTREME (for yogurt). Ms. Luczkiewicz also located several confectionary products in stores in Toronto including the following: WARHEADS EXTREME SOUR (for candy), ZIP ROCKS EXTREME POPPING (for candy), and BLOWPOP EXTREME LEMONADE (for candy). Further, Ms. Luczkiewicz’ affidavit includes a list of television and radio advertisements from Canada that feature the term “extreme” in connection with confectionary and other food products.

 Applicant’s Evidence

Dan Alvo

[7]        Dan Alvo identifies himself as Director of Marketing for Wrigley Canada ( hereinafter “WC”) located in Don Mills, Ontario. WC was incorporated under the Canada Business Corporations Act in 1979 and uses the applicant’s trade-marks under a license agreement effective as of July 1998. WC manufactures, markets and sells confectionary products in Canada for the applicant who controls the character and quality of the products. WC has marketed and sold EXTREME brand gum products under the above-mentioned license in Canada since December 2005. Sales have been made in every province of Canada amounting to $5 million for the period December 2005 - September 2006 inclusive. Exhibit materials attached to Mr. Alvo’s affidavit show the term EXTREME prominently displayed on product packaging.

Laura Thompson

Ms. Thompson’s affidavit merely serves to introduce into evidence dictionary entries for the word “extreme.”

Section 30 and 12(1)(b) Grounds of Opposition

[8]        The material time for considering the circumstances respecting the issue of non‑compliance with Sections 30 and 12(1)(b) is the filing date of the application: see Georgia‑Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 468 (TMOB) and Fiesta Barbecues Ltd. v. General Housewares Corp., (2003) 28 C.P.R. (4th) 60 (F.C.), respectively. 

The first and second grounds of opposition are based on the premise that the term EXTREME, by itself,  “is not a trade-mark.” From a fair reading of the statement of opposition as a whole and from the evidence filed by the opponent, it appears that the first two grounds of opposition are related to the third ground of opposition which alleges that the applied for mark is clearly descriptive or deceptively misdescriptive, and therefore cannot function as a trade-mark.

[9]        The issue of whether the applied for mark is clearly descriptive must be considered as a matter of immediate impression from the point of view of the average consumer of the wares. A mark is clearly descriptive if it describes a feature, trait or characteristic of the wares in a way that is “easy to understand, self evident or plain:” see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25 at 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 at 186;  Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 at 34.

[10]      The applicant’s position in its written argument is that the term EXTREME, by itself, is only suggestive in nature and that a typical consumer contemplating confectionary sold under the mark EXTREME is likely to wonder whether the product has a strong flavour or taste, or long lasting flavour or taste, or strong colour or size, or unusual flavour or taste. Further, the applicant relies on the opponent’s evidence to show that the term EXTREME (or variations of it) has been adopted by other traders as a trade-mark or as a component of a trade-mark, or as a descriptive term on product packaging or in advertising modifying a characteristic of the product. Thus, the applicant concludes that there is no support for the assertion that the term EXTREME is clearly descriptive or deceptively misdescriptive of confectionary products. The applicant further points to its own evidence to establish its intention to use the term EXTREME as a trade-mark since the applicant began to do so shortly after filing the subject application.

[11]      The applicant has brought to my attention the Board decision in Molson Beweries, A Partnership v. John Labatt Ltd. (1999), 3 C.P.R. (4^th) 543 wherein the Board considered whether the mark EXTREME ICE was clearly descriptive or deceptively misdescriptive of alcoholic brewery beverages. In the above mentioned case, the Board considered dictionary meanings of the word “extreme” and concluded that “the word extreme does not convey any meaning in relation to alcoholic brewery beverages.” By considering the evidence in the instant case, as well as dictionary meanings, I have similarly concluded that the term EXTREME does not convey any particular or specific meaning in relation to confectionary products. In my view the term conveys an imprecise laudatory meaning.

[12]      In its written argument, the opponent argues that the applicant did use the term EXTREME per se as a trade-mark but in combination with other terms. I disagree. The exhibit material attached to Mr. Avlo’s affidavit shows that the term EXTREME on the applicant’s product packaging is larger and in a different font from other terms and therefore would be perceived as a trade-mark per se: see the Board decision in  Nightingale Interloc v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 at 538 under the heading Principle 1. Further, there is no prejudice to the applicant in double marking its products, which the applicant appears to have done in the instant case.

I am generally in agreement with the applicant’s above submissions and, in view of the foregoing, the first three grounds of opposition are rejected.

Section 10 Ground of Opposition

[13]      The fourth ground of opposition asserts that the applied for trade-mark is not registrable pursuant to Section 12(1)(e) because it contravenes Section 10 of the Trade- marks Act which reads as follows:

10.  Where any mark has by ordinary and 'bona fide' commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trademark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.

The relevant date for determining the “ordinary and bona fide commercial usage” of the mark for the purposes of Section 10 appears to be the date of my decision: see Olympus Optical Company Ltd. v. Canadian Olympic Association (1991), 38 C.P.R. (3d) 1 at 3-4 (F.C.A.).

[14]      The fourth ground of opposition requires a determination of whether or not a particular word or phrase is precluded from registration as being generic, common to the trade or otherwise non-distinctive.  As alluded to earlier, the evidence shows that the term EXTREME is employed as an adjective to modify a variety of characteristics of food products and a variety of foods, or (with variations) as a component of a trade-mark. The evidence does not show that the term EXTREME has been used in relation to confectionery products in particular, or to food products in general, in such a way as to have become recognized as designating any particular kind, quality or characteristic of edibles. In my view the evidence in this case is far from sufficient to establish that the term EXTREME falls within prohibition of Section 10. The fourth ground is therefore rejected.

Distinctiveness Ground of Opposition

[15]      The material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition, in this case October 3, 2006: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.);  Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).

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 the opponent, and others, throughout Canada: see Muffin Houses Inc. v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (TMOB).  The presence of a legal burden means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant.

[16]      The opponent alleges that the applied for mark is not distinctive because of (i) widespread use of the term as a descriptive element by other traders and (ii) use of the term as a trade-mark by many. With respect to (i) above, the evidence shows that there are myriad uses of the term “extreme” in connection with a variety of characteristics. That is, the term is not used to describe certain wares but is often used to modify a variety of characteristics of wares. However, the mere fact that the term “extreme” is an ordinary word in common usage does not necessarily preclude the possibility that it can serve to distinguish the applicant’s wares from the wares of others. 

[17]      The opponent also relies on the applicant’s evidence of the state of the register, summarized below, to support the allegation that the term EXTREME is commonly used as a trade-mark for confectionary.

[18]      In my view such evidence is insufficient to support the opponent’s allegation because

(i) there are substantial differences in resemblance between most of the above marks and the applied for mark, (ii) only seven different trade-mark owners have been identified, and (iii) the opponent has not established actual marketplace use of the above-noted registered marks.  In view of the foregoing, the fifth ground is rejected.

Disposition

[19]      As each ground of opposition has been rejected, the opposition is rejected. This decision has been made pursuant to a delegation of authority under Section 63(3) of the Trade‑marks Act.

DATED AT VILLE DE GATINEAU, QUEBEC, THIS 23rd   DAY OF JULY, 2009.

Myer Herzig,

Member,

Trade-marks Opposition Board