In Coastal Culture Inc. v. Wood Wheeler Inc., Coastal appealed a decision of the Registrar rejecting its opposition to the registration of the trademark DIRT SHIRT by Wheeler.  Wheeler applied to register the trademark DIRT SHIRT based upon use in association with its wares and services since May 1997.  Coastal opposed on the basis that Wheeler’s alleged use of the DIRT SHIRT mark was based on prior use of the marks P.E.I. DIRT SHIRT and THE ORIGINAL P.E.I. DIRT SHIRT.Coastal submitted that Wheeler should not be able to remove components of its trade-mark in order to rely on the date of claimed first use.  Coastal further submitted that the words “THE ORIGINAL P.E.I.” and “P.E.I.” formed the first part of the trademarks and were a dominant part of those marks.  Wheeler submitted that the DIRT SHIRT mark was the dominant feature on its wares, in spite of the addition of the words “P.E.I.” and “THE ORIGINAL” and submitted that this minor deviation did not constitute non-use of the mark, and should not disentitle it to registration. 

The Federal Court agreed with Coastal, granted the appeal and refused Wheeler’s application to register the trade-mark DIRT SHIRT.  Although the Federal Court accepted that the words THE ORIGINAL may be a minor variation of the alleged mark, it held that there was no evidence that Wheeler ever sold wares with the DIRT SHIRT mark, absent P.E.I.  The Federal Court concluded that the word P.E.I. had always been an element of the alleged mark, and thus the use of the trade-mark DIRT SHIRT, as a standalone mark, was not established.