Trademark Opposition Question

[cafedelmar]

hello,

I was wondering if anyone can share his/her advice if you've dealt with trademarks before.

I have owned and operated a transportation/service company with a certain 'name' since 2004. Advertised in print, directories and everywhere online I am on page one for industry specific
terms and locations.

In 2008 another company (biggest player on the market) filed proposition to use my name across Canada, where I operate. I hired a trademark lawyer and filed for opposition. The case has reached a point where I am supposed to provide all evidence regarding my advertising and use of name, which I have done..

However, my lawyer has gotten back to me saying that such proof alone is not enough - I have to provide the trademark office with numbers - my ad budget, revenue and total clients per year. This kind of baffled me because i am not trying to sell anything yet or take any kind of settlement to back off. We're trying to prove the use of such name which I believe the references and marketing materials along with invoices clearly prove.

Should I go ahead and disclose all info or seek for another representative? It's not that i am hiding anything, I just don't understand what do my numbers have to do with actual name/usage rights.

Your opinion, which i understand is not legal advice, would be greatly appreciated!!!

 

[Michael Wechsler]

The issue is not one of figuring out your ad budget but of determining the familiarity of the name and the likelihood of confusion in the mind of the Canadian consumer. How many Canadian citizens know your brand exists? If you have evidence that, e.g. 500,000 unique visitors came from Canada during the past 2 years as per Google Analytics, the ad budget numbers are secondary in establishing proof that you had some reasonable impact on Canadian consumers. Without the prior, showing you spent $400,000 on advertising means quite clearly that you invested significant capital into your brand.