Organic Kids Catering & design trademark rejected for (mis)descriptiveness
The Trademarks Opposition Board (the “TMOB”) has rejected an application to register a logo including the words “Organic Kids Catering” and images of children and vegetables, finding that it clearly describes (or deceptively misdescribes) that the applicant provides organic food for kids. Shift Law represented the successful opponent in the proceeding: Real Foods For Real Kids Inc. v Boaden Catering Ltd., 2019 TMOB 113.
This decision is notable for a few reasons. First, trademark oppositions are most often based on allegations that the applicant’s trademark is confusingly similar with the opponent’s pre-existing trademark(s) and not, as this one was, on allegations that the trademark is descriptive or misdescriptive of the applicant’s services (which is something that the Trademarks Office will have already considered in its review of the application). Second, the decision suggests that where the use of a word in relation to the goods or services is highly regulated (e.g. “organic’), it is more likely to be found to be descriptive or misdescriptive of those goods or services than it otherwise would be. Third, the decision confirms that a trademark that includes artwork can still be (mis)descriptive if the (mis)descriptive words are the dominant feature – especially if the artwork is itself suggestive of the goods or services.
The trademark at issue here, that the applicant tried to register for “catering services” looked like this:
The opponent, a competing children’s catering company, opposed the application on various grounds including: the trademark clearly describes or deceptively misdescribes that the applicant provides organic food for kids; and, for the same reason, it is not capable of distinguishing the applicant as a trade source.
In support of its opposition, the opponent relied on an affidavit from its owner that the use of the word “organic” with food is heavily regulated in Canada and, therefore, that its use signals to the average consumer that the food is certified organic. The opponent included evidence that the applicant had already been investigated by the Canadian Food Inspection Agency concerning its use of the word in its trade name. The opponent’s owner also testified that the applicant’s customers had switched to the opponent’s services after discovering that most of the food supplied by the applicant was not, in fact, organic.
In response, the applicant tried to show that “Organic Kids” could mean various things (e.g. that the food is healthy, that the kids like organic food) and, therefore, that the trademark was at most suggestive of the applicant’s services.
The TMOB board member agreed with the opponent that “that the word ‘organic’ is closely regulated and has implications in the food industry” such that the average consumer would be likely to see it as descriptive of an inherent feature of the applicant’s services.
She also agreed with the opponent that “whether the food provided through the Applicant’s kids catering services is in fact organic or not is irrelevant” to the descriptiveness ground: “If the food is organic, then the Mark is unregistrable for being “clearly descriptive” [and] if the food is not organic, then the Mark is unregistrable for being ‘deceptively misdescriptive’”.
Further, she agreed with the opponent that “the design features (images of kids and vegetables) do not make the Mark any less descriptive when considered with the phrase ‘ORGANIC KIDS CATERING’ in the context of children catering services”.
Finally, the TMOB board member noted that “[a] mark which is found clearly descriptive (or deceptively misdescriptive) of the character or quality of the services cannot serve to distinguish those services from the services of others”. Therefore, the opponent also succeeded in arguing that the applicant’s mark was not registerable because it was not distinctive of the applicant as a trade source.
The TMOB’s decision in this case is a good a reminder to look beyond dictionary definitions (e.g. to government regulations) when making arguments about the meaning of a word or phrase incorporated into a trademark.
Whether a trademark does or does not in fact describe the goods or services associated with the trademark is not important when assessing descriptiveness. Rather, the question is whether an average consumer of the applicant’s goods or services would perceive the trademark to be descriptive.
The artwork in a composite trademark (i.e. a trademark incorporating both words and designs) will only mitigate the descriptiveness of the words if the artwork is a dominant feature of the trademark and it does not itself depict the goods or services or an aspect of them.