In a recent decision of the Trademarks Opposition Board dealing with a non-use cancellation proceeding, the Hearing Officer maintained a registration for a trademark covering online shopping services based on evidence showing the mark appearing in the title and the text of online fashion blogs (Wolfie Furs Inc. and Nygard International Partnership [2015 TMOB 64]).
Nygard International Partnership (the "registrant") was the registered owner of the trademark FASHIONISTA SOCIETY design (the "Mark"), registered for in association with: "Personalized shopping services, namely, an exclusive on-line service whereby customers are provided with clothing and accessories specifically tailored to their personal needs and criteria". The registrant operated a "bricks and mortar" retail store division in Canada in association with the NYGARD trademark, as well as an online retail sales division at www.nygard.com where customers could purchase clothing and accessories.
In support of its registration, the registrant filed evidence showing use of the Mark during the relevant period in various online blog articles entitled "Nygard's Fashionista Society: Warm or Cool...which one are you?"; "Build the perfect wardrobe with Nygard's Fashionista Society" and "Nygard's Fashionista Society: Every woman is a Jewel – which one are you?". The blog articles provided customers with fashion advice on how to build a wardrobe, and enabled customers to access a link to the registrant's website at www.nygard.com to order merchandise.
The Hearing Officer maintained the registration for the Mark, finding that the blog articles, featuring the Mark in the title and text, provided clothing information and advice to customers who could then click through to access the registrant's online retail store and purchase clothing and accessories based on those recommendations. Although customers made the ultimate selection of clothing, and purchased merchandise on a website bearing an altogether different trademark, the Hearing Officer nevertheless held that the Mark was used with the registered services, noting that reference to the Mark on the blogs was more than mere advertising, and that customers were "provided with clothing and accessories specifically tailored to their personal needs and criteria".
The Hearing Officer also accepted evidence that Canadians accessed the registrant's blog and purchased the registrant's clothing and accessories via its website during the relevant period, and that it was therefore reasonable to infer that at least some of the registrant's online sales were as a result of the information obtained on the blog.
In maintaining the registration, the Hearing Officer applied a broad interpretation of trademark use with services, upholding a line of decisions supporting the position that use of a mark with "ancillary" or "incidental" online services was use of the mark with the "primary" registered service. However, the Hearing Officer appears to have taken these decisions one step further by finding that reference to the Mark in the title and text of online blog articles, as opposed to appearing on the registrant's website where actual sales of clothing and accessories took place, could support trademark use with the registered services.
The decision suggests that it would be prudent for prospective trademark owners, looking to clear a mark for use and/or registration in Canada, to include online blogs in the clearance search when reviewing potentially conflicting common law rights.
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