2012 TMOB 59 (March 30, 2012)
Overview
The Trademarks Opposition Board refused applications to register the trademarks SERVICEMASTER CLEAN and SERVICEMASTER CLEAN & Design in association with, among other things, cleaning and janitorial services based upon a finding that the applicant's marks were confusing with the opponent's previously used trademarks MASTERCLEAN and MASTER CLEAN. This decision is particularly noteworthy for the Opposition Board's position that in assessing confusion, if there is no aspect of either trademark that is particularly striking or unique, the first portion of the trademarks is considered to be dominant and most relevant for the purpose of distinction.
Abstract
The Trademarks Opposition Board ("Opposition Board") found that the applicant was not the person entitled to register the trademarks SERVICEMASTER CLEAN and SERVICEMASTER CLEAN & Design in association with, among other things, cleaning and janitorial services because the marks were confusing with the opponent's previously used trademarks MASTERCLEAN and MASTER CLEAN at the dates upon which the applicant had claimed first use of its Marks, contrary to section 16(1)(a) of the Trademarks Act ("Act"). The Board also found the applicant's SERVICEMASTER CLEAN & Design mark, but not its SERVICEMASTER CLEAN mark, to be confusing with the opponent's registered trademark MASTER CLEAN contrary to section 12(1)(d) of the Act.
Case summary
Facts. On August 10, 2000, the Service Master Company (the "applicant") filed Application Serial No. 1,070,731 to register the mark SERVICEMASTER CLEAN (the "Word Mark") based on use since at least as early as October 1997 in association with, among other things, cleaning and janitorial services. Five years later, the applicant filed Application Serial No. 1,278,252 to register the trademark SERVICEMASTER CLEAN & Design (the "Design Mark"), based on use since at least as early as October 1, 1997, in association with the same services.
The Word Mark and the Design Mark (collectively, the "Marks") were opposed by 385229 Ontario Limited (the "opponent") based upon, inter alia, the following grounds of opposition
- contrary to section 12(1)(d) of the Act, the Marks are not registrable because they are confusing with a registered trademark, namely MASTERCLEAN (Registration No. TMA253,190) and MASTER CLEAN (Registration No. TMA226,306); and
- contrary to section 16 of the Act, the applicant is not the person entitled to registration of the Marks because at the dates upon which the applicant had claimed that it first used the Marks, the Marks were confusing with the opponent's previously used trademarks MASTERCLEAN and MASTER CLEAN.
The applicant asserted that it used its SERVICEMASTER CLEAN mark in Canada since 1997. The applicant further asserted that sales associated with the SERVICEMASTER CLEAN services exceeded $1.28 billion. From the applicant's evidence, it was unclear what percent of the sales and advertising figures were attributable to the SERVICEMASTER CLEAN & Design mark.
The opponent asserted that the opponent, or its predecessor, had used MASTER CLEAN continuously since 1971, and sales from May 1, 1996, to October 31, 2006, exceeded $44 million.
Analysis. With respect to the grounds based on section 12(1)(d), the Opposition Board noted that the relevant date was the date of its decision, and considered each of the factors enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trademarks 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 trademarks in appearance or sound or in the ideas suggested by them.
With respect to the Word Mark, the Opposition Board found, in respect of the first factor, that while SERVICEMASTER CLEAN and MASTER CLEAN each possessed some degree of inherent distinctiveness, neither mark was inherently strong since both were comprised of ordinary dictionary words, CLEAN being descriptive and MASTER being laudatory. Both marks had been used in associated with cleaning-related services for a significant period of time, and both parties had spent significant sums of money on promotion. Moreover, the evidence was clear that the parties were direct competitors, such that their channels of trade would overlap.
In considering the degree of resemblance between the trademarks, the Opposition Board referred to the Supreme Court of Canada's finding in Masterpiece Inc. v. Alavida LifeStyles Inc. (2011 SCC 27) that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trademark that is particularly striking or unique. However, the Board further noted that when there is no aspect of the mark that is particularly striking or unique, as in the present case, the first portion of a trademark is the most relevant for the purposes of distinction, i.e. MASTER for the opponent's trademark and SERVICEMASTER for the applicant's Word Mark. While the Word Mark incorporated the opponent's mark in its entirety, such that there was a fair degree of resemblance between the marks, the Opposition Board nevertheless found the first, more dominant portion of the respective marks to be sufficiently different to make confusion unlikely in view of the fact that the applicant has established a significant reputation in association with SERVICEMASTER CLEAN. The Board also noted the lack of evidence of actual confusion despite more than a decade of coexistence, and gave some weight to the applicant's evidence that third parties are active under trade names that incorporate "MASTER" and "CLEAN." Ultimately the Board held that confusion was unlikely.
In contrast, the Opposition Board found that the dominant feature of the applicant's Design Mark was the words MASTER CLEAN, which were highlighted in yellow within a triangle design apart from the word SERVICE. This, combined with a finding that the applicant's evidence concerning the reputation acquired by the Design Mark was unclear, caused the Opposition Board to find that the probability of confusion between MASTER CLEAN and the Design Mark was evenly balanced between a finding of confusion and of no confusion. With the legal burden being on the applicant to establish, on a balance of probabilities, that the Design Mark was not confusing with the opponent's trademark, the Board ruled in favor of the opponent.
The Opposition Board found the applicant's position more tenuous under the section 16(1)(a) ground, where the material date is the date of first use of the applicant's marks. Specifically the Board noted that the evidence of co-existence without confusion, as well as evidence of third party use of similar marks could not be considered under the section 16 ground. Finding that the probability of confusion between the opponent's MASTER CLEAN mark and the marks of the applicant as of October 1997 was evenly balanced between a finding of confusion and of no confusion, and with the legal burden again being on the applicant to establish on a balance of probabilities that its marks are not confusing with the opponent's mark, the section 16(1)(a) ground succeeded in respect of both marks.
Conclusion. This decision is instructive insofar as it clarifies that in assessing the resemblance between the marks in a confusion analysis, if there is no element of the marks that is particularly striking or unique, it is the first portion of the marks that is the most relevant for the purpose of distinction.
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