When I first read the article posted by one of my PIDP fellow classmates, I thought that this might be fake news given the prevalent of fictitious stories in the media these days. Clash between the two retail titans (Sears vs Sleep Country) over some generic words - really? However, this news isn’t fake at all. Read more https://ca.finance.yahoo.com/news/did-sears-canada-try-and-steal-sleep-countrys-ad-jingle-194723020.html
In Canada, there are three types of trademarks. “An ordinary mark is made up of words, sounds, designs or a combination of these used to distinguish the goods or services of one person or organization from those of others.” When the trademark is registered, the intellectual property owner has the right to use the mark across Canada for 15 years.” (CIPO, 2017). This means the registered owner needs to renew after 15 years after the date it was registered by the Canadian Intellectual Property Office. Our neighbour across the border has similar processes, “trademark rights can last indefinitely as long as the owner continues to use the mark to identify its goods or services. The term of a federal trademark is 10 years, with 10-year renewal terms. However, the USPTO requires that between the fifth and sixth year after the date of registration, the registrant must file an affidavit stating that the mark is still in use. If no affidavit is filed, the registration is cancelled.” (USPTO, 2017).
Based on the current statues, my immediate reaction was similar to my PIDP's classmate. Sleep Canada will win this case slam dunk. However, based on some brief research, I realize that there are situations where trademark can be lost. “Where a trademark is associated with the product or service rather than being an actual product or service, it has become generic”. (Javdan, 2016). Words such as Kleenex, Band-aid, and Xerox fall into such generic categories.
At some point in our lives, as consumers, I am sure we might have used Sleep Canada’s marketing catchphrase innocently, whether in writing or in conversation with our friends. If so, are we in breach as well? I would love to hear your viewpoint between the two retail giants' fist fights over this marketing catchphrase.
References
Government of Canada. (2017, February 16). Canadian Intellectual Property Office. Retrieved
from http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html?
Open&wt_src=cipo-tm-main&wt_cxt=learn
Javdan, S. (2016, May 16). How To Lose Your Trademark: 4 Common Mistakes. Retrieved from
LawInc: https://www.lawinc.com/how-to-lose-my-trademark-common-mistakes
Sheikh, I. (2017, February 13). Did Sears Canada try to steal Sleep Country's jingle? Retrieved
from YahooFinance: https://ca.finance.yahoo.com/news/did-sears-canada-try-and-steal-
sleep-countrys-ad-jingle-194723020.html
United States Patent And Trademark Office. (2017, February 16). Keeping Your Registration
Alive. Retrieved from https://www.uspto.gov/trademarks-maintaining-trademark-
registration/keeping-your-registration-alive