In an interesting U.S. decision last year, Dunkin’ Donuts lost a bid to register the trademark ‘Best Coffee in America’, precluding them from using said mark to distinguish their ‘wares or services’ from other competitors. In rejecting Dunkin’ Donuts’ registration, the USPTO’s examining attorney argued that the phrase was “merely laudatory and descriptive of the alleged merit of applicant’s services and the goods featured therein.” The more general term for these kinds of phrases is ‘puffery’ and by avoiding the use of certain descriptors, a trademark applicant can avoid the unsuccessful registration of his or her mark(s).
Section 12 (1)(b) of the Trade-marks Act (‘the Act’) states that a trade-mark is registrable if it is not:
“[ ]…depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
As for what constitutes the ‘character’ of the wares or services, Cattanach J in Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 argued that it includes any ‘[ ]…feature, trait or characteristic of the product.’ As such, marks that describe the function or result of using wares (i.e. STA-ZON, SHUR-ON, or ULTRA FRESH) have been characterized as descriptive of ‘character’, as well as any words common to a particular trade (such as ‘fashions’ or ‘pack’).
As for the meaning of the word ‘quality’ in section 12 (1)(b), any trade-mark descriptors lauding the excellence or superiority of particular wares or services (i.e. BEST, ULTRA, PERFECT, SUPERIOR, EXCELLENT, QUALITY, SUPER, SUPREME) will be unregistrable due to being descriptive of ‘quality’ see Mitel Corporation v. Registrar of Trade Marks (1984), 79 C.P.R. (2d) 202
Despite this, it is nonetheless possible for a mark to be descriptive of quality and still be registrable through ‘the Act’. In Proctor & Gamble Inc v Morlee Corporation, 1993 CanLII 8126 (CA TMOB), the Chairman of the Trade-mark Opposition Board made reference to the U.S. decision of Wonder Labs Inc. v. Proctor & Gamble Co., 14 USPQ (2d) 1645, in support of the argument that a descriptive trademark could be entitled to a limited range of protection, when its been earned. In that case, the President of Wonder Labs had actually tested & designed his toothbrushes after consulting dental professionals and as such, the trade-mark DENTISTS’ CHOICE was thereby entitled to a limited range of protection.
Descriptive/Misdescriptive Marks vs Suggestive Marks
There is clear difference between puffery that is actionable and that which is non-actionable (with much of the former having been described above). Non-actionable puffery would involve highly subjective or ambiguous claims regarding the character or quality of the goods/services being offered. In other words, certain marks could be characterized as being merely ‘suggestive’ as to their character or quality, thereby allowing them to be registered. Note that the decision as to whether a mark is descriptive/misdescriptive or suggestive is derived from the immediate impression of the consumer: Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25
This immediate impression is vital, particularly when you’re dealing with marks praising the superiority of its wares or services. While it is true that a mark such as ‘No. 1 Canadian Pet Store’ is unregistrable (due to it being descriptive of character/quality), a mark such as ‘The Best Poutine in the World’ would be registrable because no consumer would immediately conclude that the wares are actually the best worldwide (it’s merely a suggestive descriptor).
Written by Josh Hemmings