What happens when you register a Trademark and then never use it? Sometimes this may result in your registered trademark being expunged from the register of trademarks.

This is the situation TSA Stores, Inc., the second largest sporting goods retailer in the world, found themselves in[1].  They had six trademarks registered with the Canadian Intellectual Property Office when Heenan Blaikie LLP, on behalf of their clients, requested that the Registrar issue notices pursuant to section 45 of the Trade-marks Act requiring the owner of the trademarks to show evidence of use of the trademark in Canada during a three year period immediately preceding the date of the notice.

TSA Stores Inc. appealed to the Federal Court after the Registrar of Trademarks decided that all six trademarks should be expunged from the Register. TSA Stores Inc., agreed that two of the six trademarks had not been used during the said three year period, and that they should be expunged. But they insisted that four of the trademarks were in use on their website.

TSA Stores Inc., operated a website which sold sporting goods to Canadian consumers, although it was based in the United States.  There were no physical TSA Stores located in Canada.

TSA Stores Inc. contended that the the use of the four trademarks on the TSA Stores website resulted in use in Canada. They were able to demonstrate that their United States based website was being visited by Canadian customers who were then having goods sold through the website shipped to them in Canada. The court accepted that this constituted evidence of use in Canada during the three year period.

The result was that they were allowed to keep the four of their trademarks registered, although amendments were made to two of the trademark descriptions pursuant to the judgement.

Should you have any questions concerning trademarks, please do not hesitate to contact us.

[1] TSA Stores, Inc. v. Registrar of Trade-marks 2011 FC 273 (Simpson, J.)