Trademark matters: It’s Caroline vs. Carollyne at the Canadian Intellectual Property Office
UPDATE: September 29, 2015
Decision in Section 45
The Canadian Intellectual Property Office / Registrar has reached a decision to maintain my trademark CAROLLYNE in it’s entirety.
The decision could still be appealed to the Federal Court.
My name is Carollyne Yardley. I am a Canadian artist who is being forced to contend with expensive and growing legal fees because a large U.S. toy manufacturer wants to cancel my Canadian trade-mark registration for my CAROLLYNE trade-mark. Yes, you read that correctly.
Listen to Interview on CFAX1070 with Ian Jessop, 20:39 minutes
I want to share my story in the hope it helps other artists and small business owners to protect their brands and business.
Gowling Lafleur Henderson LLP, who represents American Girl (a subsidiary of the Mattel Corporation), asked the Canadian Registrar of Trade-marks to send a “Section 45 notice” to me against my CAROLLYNE trade-mark registration. Section 45 refers to Section 45 of the Canadian Trade-marks Act. The Section 45 notice requires me to show use of my CAROLLYNE trade-mark in association with the goods and services covered by my trade-mark registration within the 3 years immediately preceding the date of the notice. If I am unable to do so, the Registrar of Trade-marks may cancel my trade-mark registration. This process is known as “expungement”.
The expungement proceeding was started because my trade-mark registration was cited by an Examiner at the Canadian Intellectual Property Office against American Girl’s trade-mark application for CAROLINE, the name of a doll in their “American Girl” line of products, which they plan to start selling in Canada. If my CAROLLYNE trade-mark registration is cancelled, then American Girl would be able to overcome the Examiner’s objection.
Several years ago I left a successful career as the co-owner and Creative Director of an software application company, to devote myself full-time to the business of painting and art. I have worked hard and earned recognition from all parts of the globe as a rising talent in Canada’s art scene.
As you’ll notice from visiting my website, I coined the term ‘Squirrealism’ to describe my signature style of using squirrels in paintings, photographs, and digital art to create strange characters living in wonderful worlds. My painting techniques follow the classic methods of fine portraiture, where meticulous and minute brushwork demands hundreds of hours to complete a single work of art. That is why I recognized, well before I jumped into art as a full-time career, that I needed a solid business plan and my artistic livelihood could not rest on paintings alone.
So in 2008 I hired a trade-mark agent to file a Canadian application to register the mark CAROLLYNE with certain goods and services which I market under that mark as part of my fine art and commercial media business. Those listed wares include cards, bookmarks, books, and dolls, which overlapped with the goods covered by American Girl’s CAROLINE application.
As an interesting note, American Girl’s fictional character “Caroline” is a young American girl who helps her parents and community in the War of 1812 – against British Canada. We have a large American corporation trying to cancel my Canadian trade-mark registration for CAROLLYNE because it interferes with its application for CAROLINE.
Thanks to my previous business experience, I knew the importance of keeping business records to demonstrate use of the CAROLLYNE trade-mark in association with the goods and services that I market under the trade-mark. I have filed my evidence of use, and await the proceedings to be carried out. Protecting my brand and growing my business is important to me, as it is for any successful business owner.
In future blogs, I will keep you up to date on my proceeding and use it an opportunity to explain in greater detail why artists need to protect their brands and the importance of solid business planning.
Other related links:
CBC Radio, As It Happens, Carol Off (Radio Listen Now 5:25)
Canadian artist takes on giant toymaker Mattel over trademark of her name
National Post. Article by Tristin Hopper
Toymaker Mattel fighting Canadian ‘Squirrealism’ painter Carollyne Yardley over trademark to her own name
Globe and Mail
B.C artist facing down Mattel in expensive copyright fight
Times Colonist, Article by Sandra McCulloch
Artist goes after U.S. giant Mattel over trademark to her own name
CTVNews Vancouver Island
Victoria artist takes on toy giant
Vancouver Island artist takes on U.S. toymaker over name
Canadian Art Fights Mattel’s American Girl Over Trademark
Canadian Intellectual Property Office