Trademarks registered in the US may be registered either on the Principle register or on the Supplemental Register. Most trademark owners would prefer that their trademark be registered on the principle register, but that is not always possible.
A registration for a trademark may be refused for registration on the principle register because the proposed mark merely describes a feature, characteristic or purpose of applicant’s goods and/or services. 1
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services. 2
Similarly, a trademark may be rejected for registration, according to section 12 of the Canadian Trade-marks Act “TMA”:
(1) Subject to section 13, a trade-mark is registrable if it is not
(b) whether 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;
Section 13 of the TMA deals with registration of a distinguishing guise, so we do need to worry about s.13 for purposes of this discussion.
All active USPTO registered trademarks are eligible
A Canadian trademark application may be based on a trademark registered and used in the United States, even if the trademark is registered on the Supplemental Register, pursuant to a 1993 practice notice regarding subsection 16(2) of the Trade-marks Act.
Marks registered and used abroad
Under section 16(2), any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant’s predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with wares or services is entitled, subject to section 38, to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
Subsection 16(2) Claims — New Administrative Policy
Publication Date: 1993-11-03
The Trade-marks Branch is now accepting United States registrations on the Supplemental Register as a basis for a claim made pursuant to subsection 16(2) of the Trade-marks Act.
#1 Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
#2 In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).