What Are Trademarks?

Trademarks are any name, word, slogan, design, shape, combination of colours, series of musical sounds, logo, or any combination of these used to distinguish your products and services from your competitors.  Graphically oriented trademarks, called Logos, are properly referred to as Design Marks. There are three common spellings for the word "trademark", namely "trade-mark", "trade mark", and trademark. We often use them interchangeably.

 

Why are Trademarks Important?

Your trademark represents you and your reputation.  As you build your business, your investment builds a good reputation. Your trademark is a symbol representing your reputation and all the investment and hard work you put into building that reputation. After a while, people will purchase your product or use your service because they recognize your trademark.

In order to protect your investment, you should consider protecting your trademarks. If you have strong trademark protection, you can defend your good reputation from competitors.
 

Different Types of Trade Marks?

A trademark can be almost anything you use to identify your company or your companies reputation. There are two general types of trade-marks - Registered Trade-Marks and Common Law Trade-Marks. Registered trade-marks are trade-marks that have been registered with the government.  A common law trade-mark is an unregistered trade mark that has been used so extensively and for so long that it has become famous. Other common terms for trademarks include trade names, certification mark, quality marks, source marks, and logos.

 

"Trademarks", "Trade-marks" or "Trade Marks"?

There are three common spellings used, namely "trademarks", "trade-marks" and "trade marks". All are correct; although in the United States, the word "trademarks" is more commonly used.
 

Common Law Trade-Marks

If a company uses its trade-mark for years, invests in advertising and promoting the trade-mark, then the trade-mark may be entitled to common law protection.  The company can bring a lawsuit against a competitor claiming that the competitor is "passing off" the competitor's products as the company's. The burden of proof is on the company to prove that their trade-mark has become famous. Simply using the trade-mark for a few years may not be enough to convince the court that the trade-mark has become famous. Common law trade-mark rights may be geographically restricted.

While you do not have to register anything in order to get common law trade-mark rights, the time and expense necessary to make a trade-mark famous can be considerable. For this reason, most companies try to get their trade-marks registered.

Registered Trademarks

A registered trademark is a trade mark which has been registered with the government's trademark office. The Canadian trade mark office is called CIPO (Canadian Intellectual Property office) and the United States Trademarks office is called the USPTO (United States Patent and Trademark Office).

Essentially, a registered trade-mark is a government granted monopoly to use that mark with your products or services. The trademark does not have to be famous; it only has to pass a few simple tests. First of all, the trademark can not be confusing with another trademark. Also, the trademark cannot be descriptive of the products or services being sold with the trademark and the trademark cannot be a surname (for example Smith, Johnson, etc.).

As soon as your trademark is registered, you have exclusive use to that trademark.  If you have to sue others to stop them from using your trademark, you don't have to prove that the mark is famous.
Unlike common law trademarks, registered trade-marks are enforceable in the entire country.  You can also apply for and be granted registered trademarks in several different countries.

TM v. ®

The law requires trademark owners to identify their registered trade-marks with the registration symbol ( ® ). It is not lawful to mark your products or otherwise identify your trade-mark with the registration symbol unless you have been granted a registration. Simply filing a trademark application is not enough! A registration must actually be granted before you can use the registration symbol.  To identify your trademarks before a registration is granted, you can use (and it is advisable to use) the trademark symbol (TM).

 

How do You Get a Registered Trademark?

If you want to register your trademark, then you will have to file a trademark application with the appropriate trademarks office.  After the trademark application is filed, the trade-marks office examines the application and does a search to see if there are any other similar trademarks. If the trademarks office believes your trademark is not descriptive, is not a surname and is not confusing with any other trademarks, then the trademark application is published. Any party, including your competitors, may then oppose your trademark application by filing a statement of opposition within two months of the publication. If no one opposes your trademark application, then all you have to do is file proof that you have made sales using the trademark and pay an additional government fee.

If the trade-marks office believes that your trade-mark is confusing with another trade-mark, or that the application is deficient in some way, then they will issue a report. You then have a few months to respond to the report to either convince the trade-marks office that their analysis is wrong or correct the deficiencies in your application. If your response is sufficient to overcome the trade marks office's objections, then your mark will be approved for publication.  The process of responding to official reports and amending the application in reply is referred to as prosecution. A trade-mark generally takes between 18 to 24 months to proceed through prosecution.

You do not have to commence use of the trademark before filing the application since the application can be based on your intention to use the trademark in the near future.

What is a Confusing Trademark?

Two trade-marks would be considered confusing if the marks are similar, either in spelling, pronunciation, or appearance AND there is similarity in the goods and/or services used with the two marks. For example, the trademark CLEAR CHOICE for use with "spring water" may be confusing with the trademark KLEER-CHOICE for "carbonated water". However, the trademark EXTREME for use with "network computer software" would probably not be confusing with the trademark EXTREME for use with "potato chips".

 

What is a Descriptive Trademark?

A lot of people think that a good trademark should describe the products or services being sold with the trademark. This is far from the case. The trademark COLD ONE for use with "alcoholic beverages, namely beer" sounds like it would make a good trademark since it nicely describes the product. However, if a brewing company could register that trademark, it would effectively block their competitors from describing their product (cans of beer) as being cold. Therefore, the trademarks office will deny any exclusive rights of words or phrases which describe the nature, character or quality of the products or services being used with the trademark.

 

Trade Mark Searches

Before you start using your trademark, it is a good idea to have a trademark search conducted. A trademark search can reveal if there are any similar registered or common law trademarks which may cause your business a problem.  Trademark searches can be ordered to find registered, applied for and even common law trademarks.

A trademark search is also a good idea if you want to register your trademark since the search may find applied for or registered trademarks which could interfere with your trademark application.

How Long do Trademarks Last?

Trade-mark registrations have to be renewed every 15 years. However, if you continue to use the trade-mark, and if you pay the maintenance fees as they come due, than your registered trade-marks can last as long as you want them to. You can loose your registered trade-mark if you fail to use it for an extended period of time.

 

How Do I Get Started?

Give us a call. We can give you advice on selecting a good trade mark, avoiding possible trade-mark disputes and we can register your trade mark. We can also help you resolve any trademark disputes (or potential trademark disputes) you may have with another person or company. We can also advise you on what you or your company can do to strengthen your trademarks.  Our offices are located in Toronto, Canada- Etobicoke, near Mississauga Ontario. Give us a call for a consultation. See our Contact page for information on how to reach us.