Posts Tagged ‘acquired distinctiveness’
In Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association (2010 FC 309), the Federal Court of Canada (“FC”) dismissed an appeal under s. 56 of the Trade-marks Act (“the Act”) by Worldwide Diamond Trademarks Ltd. (“Applicant”) from a decision of the Registrar of Trade-marks (sitting as the Trade-marks Opposition Board) dismissing the Applicant’s three applications under s. 12(1)(b) of the Act for being clearly descriptive of their wares and services.
In April 2004, the Applicant applied to register three trade-marks (CANADIAN DIAMOND REPORT, CANADIAN DIAMOND CERTIFICATE, CANADIAN DIAMOND APPRAISAL) in association with diamonds, diamond certificates and diamond appraisals; diamond cloths, magnifying loops; point of purchase countertop displays; posters; and pens; and diamond appraisal services. The Applicant disclaimed exclusive use of virtually all descriptive words as well as the phrase “A diamond that is mined, cut, and polished in Canada” apart from the mark. In September 2005, the Canadian Jewellers Association (“Respondent”) opposed. The issue was whether the addition of certain key words to the descriptive phrases rendered the marks non-descriptive.
In In re Nielsen Business Media, the Trademark Trial and Appeals Board (“TTAB”) affirmed an examining attorney’s refusal to register a mark under Section 2(e)(1) of the Trademark Act. After considering and rejecting the applicant’s claim that the acquired distinctiveness of the applicant’s previously registered marks could “tack” onto the new mark, the TTAB agreed with the examiner’s finding that the mark THE BOLLYWOOD REPORTER (Serial Nos. 77223725 and 77223738) for entertainment news papers and online publications was merely descriptive of the goods. Continue Reading
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