Guest post by Andrei Mincov (Trademark Factory)
Unlike large companies that can drown their competition with advertising dollars, small and midsize businesses only have a fighting chance of success if they can convince the market that there is something unique about them. Often, names, logos and taglines that a business uses as a shortcut to its successful marketing messages are so valuable that they should be protected as trademarks.
Among myriads of issues surrounding trademarks, there are three that every business owner must be perfectly clear about.
1. Do I have anything trademarkable, a.k.a. Can I register my trademark?
Trademarks can take many forms, most notably, names, logos and taglines. However, their proper function is always the same – to allow the end consumer distinguish your products and services from identical or similar products and services of your competitors.
Importantly, trademarks don’t give their owners a monopoly over the name or the logo itself. They only give a monopoly over their association with specific products and services for which the name or logo are used. This is how the same trademark BLUE SHIELD is owned by two completely different entities: one provides medical insurance, the other sells welding equipment.
Some categories of trademarks cannot be registered. For example, you cannot register as a trademark the common name of the product or the service itself. For example, you cannot register “APPLE” in association with apples, or “ACCOUNTING” in association with accounting. Neither can you register terms with dictionary meanings that are used to directly describe such products or services. For example, you cannot register “COLOR” for printers or “SAFE” for cars.
Finally, you cannot register a trademark confusingly similar to another trademark registered in association with identical or similar products or services. This is why it is important to conduct a search of trademarks registered in Canada to make sure that you are not investing in a brand that will never truly be yours.
2. Should I register my trademark?
To decide if you should register your trademarks, ask yourself three questions:
Would it be worth fighting for if you received a cease-and-desist letter demanding that you stop using your own trademark? A registered trademark significantly improves your chances and, therefore, reduces your costs in a dispute against anyone claiming ownership of your trademark. The best example is the recent case, Woodpecker Hardwood Floors v. Wiston, where a Richmond flooring company that’s been around for over a decade realized that its competitor, another Richmond flooring company trademarked the word “Woodpecker” as its own. The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.
Would it be worth fighting for if your competitor started using your trademark or a similar name to promote their products or services? A registered trademark makes it a lot easier and cheaper to win a dispute against anyone who is unlawfully using your trademark anywhere in Canada. Again, the Woodpecker case presents a great example.
If you were to franchise, expand or sell your business, would you get more money for your trademark? A registration automatically protects your trademark all across Canada, making it a valuable asset of your business.
You don’t need to answer yes to all three questions. If you answer yes to at least one of them, then you should register your trademarks as early as possible.
3. How do I register my trademark?
You are not required to use a trademark agent to apply to register your trademarks in Canada, so self-filing may appear to be the most cost-effective strategy. However, most self-represented applicants don’t know what to do when their application gets rejected some 6 months after it was filed (which happens for 75% of all applications).
While most trademark agents know how to draft applications that are less likely to be rejected and how to respond to objections raised by Canadian Intellectual Property Office (CIPO), I suggest that before you let a random trademark firm handle your case, that you do your research asking the following questions:
Can you quote a fixed fee for the entire process from start to finish?
For what and how much will you charge on top of initial filing fees?
What will you charge to respond to office actions?
If CIPO refuses to register my trademark, will I get my money back?
Remember, if you aren’t protecting your business’s assets, you are not being serious about your business.
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I am a Toronto competition/antitrust lawyer and advertising/marketing lawyer who helps clients in Toronto, Canada and the US practically navigate Canada’s advertising and marketing laws and offers Canadian advertising/marketing law services in relation to print, online, new media, social media and e-mail marketing.
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