Does Your Trademark Have the Wrong Swag? Describing Goods and Services in Canadian Trademark Applications
February 10, 2023
As canvassed in a previous article (Out of the Ordinary: Requirements for Describing Goods and Services in Canadian Trademark Applications), the Canadian Intellectual Property Office (“CIPO”) generally requires an applicant for a trademark registration to describe its goods and services in greater detail than most other jurisdictions. Specifically, paragraph 30(2)(a) of Canada’s Trademarks Act and section 29 of the Trademarks Regulations together provide that an application shall contain a “statement in ordinary commercial terms of the goods and services in association with which the trademark is used or proposed to be used” and that such statement must “describe each of those goods or services in a manner that identifies a specific good or service".
However, what is an “ordinary commercial” term is not always easily discernable. Two examples will highlight the issue.
Drippin’ Swag
In common parlance, “swag” has many meanings. People use it as short for swagger, confidence or “braggadocio”. In his song “Otis”, Jay-Z boasts that he “invented swag”.
Swag is also used as a catch-all term to describe free items that are distributed, often as promotional materials (i.e., stuff we all get), for example pens, water bottles, etc. It is not surprising therefore that people try to cover “swag” as part of their goods in a trademark application. Unfortunately, those applicants may not be getting what they bargained for.
Specifically, CIPO includes “swag” in its Goods and Services Manual as an acceptable term. However, that “swag” is under Class 24. Class 24 is meant to cover textiles and textile goods, which suggests that CIPO is using the traditional dictionary definition of swag namely, “a curtain or piece of fabric fastened so as to hang in a drooping curve”. One cannot say for certain, but this is likely not what Jay-Z wanted to take credit for and certainly not what many applicants want to protect when they apply for “swag”.
Accordingly, someone wanting to cover “non-curtain” swag in an application will need to itemize the specific goods, as opposed to simply listing “swag”.
A Patty by Any Other Name
A recent documentary by the Canadian Broadcasting Corporation highlighted a bizarre battle from 1985 between the Canadian government and a small business in Toronto owned by Jamaican immigrants. The business sold “beef patties”, which was seen as problematic by bureaucrats.
Specifically, at the time Canada's Meat Inspection Act classified a “beef patty” as what goes in a hamburger. It could contain only meat and seasoning and it couldn't be encased in dough or a crust. Therefore, the beef patties sold by the business - a Jamaican patty, widely known as a flaky pastry with a spiced beef filling, didn't meet the criteria. Bureaucrats thought calling hamburger patties and Jamaican patties the same thing would be confusing to Canadians.
In the end, the parties agreed that the business could call its product Jamaican patties.
The “patty wars” highlights the dichotomy between an ordinary commercial term as commonly understood by a select population, as opposed to how regulations may require a good to be identified.
For example, the CIPO Goods and Services Manual includes entries for various types of non-meat sausages, such as fish sausage and vegan sausage. However, the Food and Drug Regulations define sausages as meat products.
Guidance
Adherence to CIPO’s Goods and Services Manual will ensure that the goods or services in an application will be accepted. However, it does not eliminate the need to understand what an applicant is trying to protect.
For example, in Canada a “football” would refer to a prolate spheroid shaped ball, used in the sport of American football. By contrast, outside of Canada (and the USA) a “football” would be a spherical ball, used in the sport of soccer/football.
Many of the issues associated with selecting the appropriate goods or services description arise from applicants acting without trademark counsel, or from an over-reliance on automation or technology. A little care at the time of filing can ensure that you are protecting what you actually intend to protect.
Newsroom Articles
Does Your Trademark Have the Wrong Swag? Describing Goods and Services in Canadian Trademark Applications
The Canadian Intellectual Property Office requires an applicant for a trademark registration to describe its goods and services in "ordinary commercial" terms. However, what is an “ordinary commercial” term is not always easily discernable.
Choose Your Own Source: Adding A Trademark to Someone Else’s Goods
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
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