Last month, a U.S. federal court upheld a decision by the U.S. Trademark Trial and Appeal Board and ordered the cancellation of all trademarks registered by the NFL team The Washington Redskins for its team name. The cancellation of the Redskins trademarks was affirmed on the basis that the team name was disparaging to Native American culture – a conclusion that is painfully obvious to any rational-minded person. This decision does not automatically lead to the result, though, that the team has to actually change its name. It just means that it has lost of its federally registered trademarks in the U.S. with respect to that team name, which ordinarily means the scope of the trademark’s strength is diluted, and enforcing trademark rights against imitators becomes slightly more difficult. It is too early to say what actual impact that might have on the team, as well as the sale of branded merchandise, or whether the team will appeal the ruling to the U.S. Supreme Court. It also has no real bearing on the team’s trademarks in Canada, until such time as the Canadian Intellectual Property Office sees the need to take similar measures. That said, Canada’s federal Trade-marks Act does prohibit the registration of any trademark which is “scandalous, obscene or immoral”, so if the Redskins trademark was challenged here, it may be the case that the team name is found by Canadians to be as culturally insensitive as it was in the U.S. It is also interesting to note that, unlike in the U.S., if a trademark in Canada is found to be “scandalous, obscene or immoral”, it will not be allowed to be used here. What else can trademark applicants and owners do in Canada to best ensure that their registered trademarks stay valid, and that their unregistered trademarks may get approved? A few pointers:
- Don’t use marks that are already taken – this may seem obvious and apparent, but if it were only that easy, trademark litigators would be out of a job. It is critically important to run searches in advance of selecting a trademark for your business to ensure that nobody else in Canada is using something identical or similar in association with identical or similar goods and services.
- Don’t try to own a trademark that describes what you are selling – “descriptive” trademarks are prohibited where the mark itself describes the goods and services associated with it. Nobody should be able to own exclusive rights to the trademark “HAMBURGER” if they sell hamburgers.
- Be distinct – a bit of an extension of the point about similarity above, but the best trademarks are the ones that are made-up words. The more generic your trademark, the harder time you will have enforcing it against others.
- Avoid using peoples’ names – a trademark will not be registerable if it is primarily the name or last name of a person who is living, or who died within the last thirty years. In order to determine whether a person’s actual name is distinct enough to be registered, trademarks examiners will research Canadian telephone directories to see whether fewer than twenty-five people in the country have that same name. Seriously.
- Don’t use any governmental flags or other symbols – it may be surprising to some, but trademark law in Canada prohibits the use of a trademark featuring the Canadian flag without getting prior written consent from the Department of Canadian Heritage.
Brand owners, or prospective brand owners, should be aware of the restrictions and prohibitions contained in Canadian trademark laws before settling on a word, image or other feature to distinguish a business’ goods and services. This is especially true for the franchise industry where the entire model is premised on a brand owner’s license of that trademark across a local, national or international system, and the loss of that trademark could have devastating consequences.