Selecting the ideal trademark is often a balancing act between choosing a mark that is easily and almost naturally associated by consumers with one's goods or services, but at the same time, unique insofar as it does not consist of terms common to the trade or otherwise describe or suggest such goods or services.
A basic principle of Canadian trademark law is that a mark is not registrable if it is the name of one's goods or services (e.g. POTATO CHIPS for potato chips) or, subject to an exception further discussed below, if it describes one's goods or services, or a feature, trait or characteristic thereof (e.g. COMFORTABLE for chairs, SPEEDY for delivery services, etc.). However, while a trademark having no intrinsic connection to one's goods (e.g. STONE for computers) is very advantageous from a legal perspective, including in terms of searching, registration and ultimately, enforcement, in such a case, creating the desired association in the minds of consumers between one's mark and one's goods or services typically entails significant effort and costs from a marketing perspective.
Given this background, a question that has recently resurfaced in a decision rendered by the Trademarks Opposition Board1 is whether one is barred from registering as a trademark the name of one's goods in duplicate, in particular, BEER BEER in association with beer. In this regard, the expression BEER BEER is not a defined dictionary term nor is it part of common parlance. Moreover, while there is no doubt that the word "beer" is the name of the goods, i.e. beer, the trademark is BEER BEER and not simply BEER alone.
The decision in this case, which held against the registration of BEER BEER as a trademark, seems to have been heavily influenced by the evidence tendered on behalf of the opponent's expert in the field of linguistics and sociolinguistics, who explained that the duplication of a term is known in linguistics as a "contrastive reduplication." This involves the copying of words "to denote the prototypical instance of the reduplicated expression." By way of illustration, the expert provided the following example: "I'll make the tuna salad, you make the salad salad." In other words, the reiteration of the word "beer" did not alter the underlying meaning of the reduplicated word, but rather, intensified and focussed its meaning as describing a "real" example of the product, for instance, real beer (i.e. containing alcohol) as opposed to non-alcoholic beer.
Although the concept of contrastive reduplication was relatively unknown 20 years ago, it seems to have attracted the attention of linguists since then to the point that it is considered today to be quite common in North America. In fact, there are over 200 examples cited in the online Corpus of English contrastive focus reduplications, such as the following:
- a "date date," referring to a social engagement between two individuals with a romantic character as opposed to a "date," referring to a mere meeting between friends;
- a "crime crime," referring to an actual felony in the legal sense as opposed to a "crime," referring to a mere wrongdoing;
- to "like like" someone, implying a romantic attraction as opposed to simply "liking" someone, implying a mere positive attraction; and
- to be "dead dead," referring to the actual physical state of being deprived of life as opposed to merely being "dead" in the sense that one is "in trouble" or alternatively, incapable of being stirred emotionally.
Although this recent decision, as well as an earlier decision, in which PEAMEAL BACON BACON was held not to be registrable as a trademark in association with bacon,2 serve as cautionary tales to those considering applying for a trademark that comprises a contrastive reduplication of the name of the goods or services, all hope is not lost as the Trademarks Act provides for an exception to the "clearly descriptive" bar. In particular, where one can establish that a trademark has become distinctive in Canada in connection with its goods or services, such a trademark may benefit from the exception and in fact be registrable. To successfully rely upon such an exception, though, sufficient evidence is required, for instance, in the form of an affidavit from a representative of the applicant demonstrating the extent of sales, promotion and advertising in relation to the applied-for trademark (e.g. advertising budget), which depending on the circumstances, may even need to be supplemented by additional affidavit evidence on behalf of the applicant's distributors, retailers and even end-users. All of this is a costly endeavor and also implies that one's mark has already been widely promoted and extensively used in the market, such as the case involving the trademark PIZZA PIZZA.3
In light of the foregoing, while the registration of a contrastive reduplication as a trademark is not necessarily unattainable, it is unlikely to be obtained merely on its face. Rather, and in line with the function of a trademark as an indicator of source, an applicant seeking to register a contrastive reduplication as a trademark in association with specific goods or services must be prepared to adduce sufficient evidence to show that, at the filing date of the application, the particular contrastive reduplication had been used by the applicant in such a way that it had become distinctive in Canada in connection with the applicant's goods or services to the exclusion of all others.
Tomek Nishijima, Montreal
1 Coors Global Properties, Inc. v. Drummond Brewing Company, 2011 TMOB 44 (March 11, 2011).
2 D & S Meat Products Ltd. v. Peameal Bacon of Canada Ltd., 2011 TMOB 26 (February 15, 2011).
3 Pizza Pizza Ltd. v. Registrar of Trade Marks, 1982, 67 C.P.R. (2d) 202 (F.C.T.D.).
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