Basics of Trademarks
- What is a trademark?
A trademark (also referred to as trade-mark or trade mark) is a way to claim and protect the rights to your brand, slogan, logo, or any other manifestations of your corporate image, and, with that, the goodwill and reputation they have acquired with customers. There are three types of trademarks: an ordinary mark, which encompasses most word, image, and sound registrations, a certification mark, which symbolizes that the product or service has met a certain standard of quality, and a distinguishing guise, or a unique way of packaging or distinguishing a product.
- What can I trademark?
Common examples of trademarks include brand names, product names, images of logos or designs, sound bites, and phrases. Generally, anything that directly represents your brand and is unique can potentially qualify for trademark registration.
- What can't I trademark?
You cannot register clearly descriptive words, words in another language, words that refer to the geographic origin of your product, trademarks that resemble those that have already been registered or are in the process of registration, prohibitive trademarks, and clearly mis-descriptive marks.
- What are the benefits to a trademark?
A trademark will grant you exclusive rights to sell your goods or services under the brand name that you have registered, which will protect the reputation and customer goodwill that you have or will develop under that brand.
- What are the steps to obtaining a trademark?
In order to obtain a trademark registration, you must submit an application for registration, a drawing, if applicable, and a government filing fee to the Canadian Intellectual Property Office (CIPO). It is recommended that you conduct a search of existing trademarks prior to application and determine what classes of goods and/or services your trademark falls into.
- What is the difference between a trademark and other types of intellectual property?
A trademark is meant to distinguish and protect your brand name or marketing features associated with it, and the goodwill and positive reputation developed behind them. A patent, on the other hand, protects inventions, an industrial design protects aesthetic designs and a copyright protects creative works such as music or literature.
- What is the difference between a trade name and a trademark?
A trade name is the name that your business operates under. A trademark is the name that you sell your goods or services under. The two can be identical – (i.e. your company is named Lays and you sell Lays chips) or different (your company is named A.B.C. Corp. and sells Lays chips).
- What is the difference between a registered trademark and an unregistered trademark?
A registered trademark has been examined, has been confirmed to be distinctive, and is subject to the protections under the Trademarks Act, including nationwide protection. In order to obtain a registered trademark, you have to apply for a registration with that country or region's intellectual property office and continue to renew it as required in that country or region. In return, your trademark registration is presumed to have validity, with any burden of proof to invalidate the registration resting on the challenger. An unregistered trademark has not been registered, and is governed under common law. It is valid only in the geographical area where it has been used, and the owner has to prove that it is a brand that has developed sufficient goodwill with consumers for those rights to be enforceable. This typically requires that the trademark has been used for a substantial length of time. Click to learn more about the differences between registered and unregistered trademarks.
- What is a common law trademark?
A common law trademark is another name for an unregistered trademark and the term is often used in the United States and Canada.
- Should I hire a trademark agent?
A trademark agent can help you with the trademark registration process which is lengthy and cumbersome. Where desired, a trademark agent can obtain a full trademark search for you to ensure that your trademark may be adopted without conflict and is registrable, and can also advise you on any issues which may arise during the registration process.
- Can two or more persons have the same trademark?
Yes, because a trademark is associated with particular goods and/or services. As such, the same trademark may exist in different classes of goods or services, provided that such use would not result in a likelihood of consumer confusion.
- Can a trademark owned by one owner prevent registration and non-identical use by a different owner?
No. As long as the second use is different enough so as to avoid a likelihood of consumer confusion (i.e. use unrelated industries), the second trademark may be registerable.
- I've formed my corporation, and my corporate name has been approved during the incorporation process. Does that mean I can use this name as a trademark?
This is determined on a case-by-case basis. There may be prior use of a trademark on an unregistered basis that could preclude you from adopting and registering the trademark. Further, another's use of a trademark that does not correspond to its corporate name may pose an issue.
- If I register my mark in a specific color or font, can someone else register the same trademark in a different color or font?
Potentially. As such, it is preferable to register your trademark in black in white and in a generic, all-caps font to broaden your protection against others.
- If I register a trademark in one class, can someone else register it in another class?
Yes. Trademarks are generally limited in scope to the classes in which they are registered.
- Does my trademark need to match my company name?
Your trademark does not have to match your company name. If the name, design, slogan, etc. of the good or service you are selling is different from your company name, you are permitted to register them as trademarks.
- Can I trademark dictionary words?
Typically, it is not possible to register a trademark for a good or service that is generic (i.e. a dictionary word). However, a word can be used in combination of a unique phase, on a logo design, or in combination with other distinctive matter.
- What are Nice classes of goods and services?
The Nice Classification of goods and services is an international means of trademark categorization into one or more of thirty-four classes of goods and eleven classes of services. It standardizes trademarks to allow for international registration through the Madrid Protocol. Canada has not yet made the Nice Classification mandatory, but will be doing so soon as it plans to fully accede to the Madrid Protocol system by 2018. We may now voluntarily classify goods and services in Canadian trademark applications according to the Nice Classification when filing trademark applications with CIPO.
- How do I navigate look-alike and sound-alike trademarks?
In cases of lookalike and sound-alike trademarks, the Trademark Office determines on a case-by-case basis whether this will be confusing to customers based on how similar the trademarks look or sound, how similar the industries in which the trademarks will be used are, and other relevant factors.
- Will my personal information be available to the pubic?
Your name and address will be available to the public and may be found in the Canadian Trademarks Database made available online by CIPO, along with information concerning your trademark. You may provide a business address instead of residential address.
- My spouse owned a trademark and he or she passed away. Do I own it now?
Unless your spouse has bequeathed it to someone else, you are the default heir of the trademark.
- May I assign or transfer my trademark registration to someone else?
Yes. Rights to a trademark is a form of property and may be sold or transferred.
- When should I register my trademark?
You may do so as soon as you think you have found a word, phrase or design that you intend to use in commerce with goods or services.
- How long does registration last?
Registration lasts fifteen years in Canada and ten years in the United States from the date the trademark is originally granted; however, you are entitled to an unlimited number of renewal terms as long as you continue to use the trademark.
- How much does registration cost?
The costs of a trademark registration vary. Aside from the fees of a trademark agent, in most cases, you will only need to pay a government filing fee and a government registration fee; in other cases, additional fees will apply. Please check the CIPO website for a complete schedule of trademark fees. If you choose to hire a trademark agent, that will be an additional cost on top of the fees listed in the schedule.
- What do I need to consider before filing for registration?
Before filing a trademark application, you should search the Canadian Trademarks Database to determine if your trademark is not confusing with a registered trademark, and potentially also search trade names registered in your province or country as those are often used as unregistered trademarks. You should also consider hiring a trademark lawyer or trademark agent to help you navigate through the trademark search and registration process.
- Can I file for a word and design together on the same application?
If the words are part of your design and will be used in conjunction for commercial marketing purposes, you are permitted to file them together as one trademark application.
If the words are distinctive from the design (i.e. a company slogan and a company logo), you will need to file separate applications.
- Should any symbols be part of my trademark?
If you have a logo or another visual symbol that is evocative of your brand, you may and should trademark it.
- Is a trademark search necessary?
A trademark search need not be done prior to filing an application for a trademark registration, but your application may be rejected on the basis of another registered trademark that is identical or confusingly similar. Moreover, the owner of a previously used unregistered identical trademark may seek to oppose your application to register the trademark.
- Is registration guaranteed and if not can I get a refund of the money I paid to apply?
Registration is contingent on your trademark being distinctive, not being successfully opposed by third parties, and complying with other provisions of the Trade-marks Act and Trade-marks Regulations. If your application is refused, no money will be refunded to you. The filing fee is a service fee for the conducted examination.
The Filing Process
- In whose name should I apply for my trademark?
Unless you are working in a joint venture or partnership under law, the trademark will only be granted to one person or entity, so you should apply in the name of the person or entity that will use or license use of the trademark.
- How long does obtaining a trademark registration take?
The trademark registration process can take anywhere from a few months to a few years, but most applications in Canada and the United States are generally processed within a year.
- Can a URL be trademarked?
No, a URL cannot be trademarked.
- How long can a trademark be registered?
A trademark can be registered for fifteen years in Canada and 10 years in the U.S., but can be renewed at the end of the registration period for another full registration period indefinitely as long as the trademark continues to be used.
- What is the renewal process for a trademark registration?
When a trademark in Canada is set to expire, it may be renewed by paying a renewal fee to CIPO. You will be sent a notice with a deadline shortly before the renewal date of your trademark.
- What happens if I haven't started using the trademark I applied for and my application is allowed?
A trademark must be used prior to registration in Canada. If you do not use your trademark in a commercial manner within a certain extendable period of time from the allowance of your registration, your application will go abandoned, which will result in you having to file another application and go through the registration process again to secure a trademark registration.
- What is the best way to describe my trademark in an application?
In order to get the maximum level of protection, you should be as broad as possible with respect to the goods and services that you intend to use the trademark with in future. As noted above, you will need to commence use of the trademark with those goods and services before the trademark can be registered.
- Can I add more products and services onto my trademark after it has been filed?
No, the description of goods and services can be amended but it cannot be amended to extend the scope of the goods and services as compared to those found in the original application.
- Am I protected between the filing and registration of my trademark?
Once you have filed an application, you will be assigned a priority date, which will correspond to the date on which your trademark application was received. You will have precedence over any application that have filed after your filing date unless they claim an earlier date of first use.
- Will the trademark examiner check unregistered trademarks?
The trademark examiner will not look for unregistered trademarks specifically, but your trademark will be advertised in the Canadian Trademarks Journal after approval from the trademark examiner. During advertisement, entities who operate under the same or a confusingly similar trademark may oppose your registration if they have prior use.
Trademarks and Business
- How do I choose an effective trademark?
When it comes to protecting your trademark in court, different trademarks have varying levels of strength behind them. Ranging from generic trademarks, which are weak because it is hard to associate them with anything specific and as a result they often fail to accumulate a significant level of consumer goodwill, to abstract or fanciful, which means that the trademark is not a word that is commonly present in the industry (i.e. Apple to describe computers, Reebok to describe sporting equipment). An effective trademark is typically abstract or fanciful as possible and will have little meaning in the industry before it is registered.
- What should I do if someone claims I am infringing on their trademark?
If you are alleged to infringe on someone else's trademark, this may be the start of a legal battle over your use of the trademark. You ought to contact a trademark lawyer for advice specific to your particular circumstances.
- Why should a start-up company care about trademarks?
When you are starting a new business or developing a new product, it is easy to focus on the immediate goals rather than thinking about the potential dangers of trademark infringement down the line when your trademark has value. However, protecting yourself as soon as possible means having the confidence and security in the ability to enforce your exclusive right to the trademark across the country or region when you need it to protect your brand.
- How do I go about rebranding?
If you are hoping to change the name of your product, logo, or anything else, you will want to file a new trademark application corresponding to the new name or logo and ensure that it meets all relevant requirements for registration.
- Someone else is using my company's name as a domain name – how can I stop them?
Domain names are generally distributed on a first-come, first-serve basis, and are not attached to trademark registrations. However, there are protections that exist if someone is cybersquatting on a domain name that is affiliated with your trademark. The World Intellectual Property Organization has created a solution called the WIPO Domain Name Dispute Resolution Service.
- How can I use my trademark to create a brand identity for my business?
Having a registered trademark increases the level of advertising and attention you can devote to your brand and the reputation it evokes without worry that it will be hijacked by someone else. As such, you can create a comprehensive trademark strategy that focuses on associating a positive response with your trademark.
- Why is it important to preserve evidence of use for my trademarks?
Evidence of use is crucial for two reasons. First, if you are operating under an unregistered trademark, you may need to prove both long-term ownership and accumulated goodwill to receive any protection, and evidence of using the trademark is paramount to doing both. Second, evidence of use will ensure that your trademark is never expunged for not being used in commerce.
Jurisdictional Trademark Issues
- In which jurisdiction should I register my trademark?
You should register your trademark in all or the most important jurisdictions in which you plan to distribute your product commercially.
- Is my trademark valid outside the jurisdiction in which it is registered?
Generally no, except where there is unregistered use or in the case of famous trademarks.
- Should I consider foreign trademark registrations?
If you foresee selling your goods and services in foreign countries, it may be advantageous for you to register your trademark in countries outside your home country to ensure that you can enforce exclusive rights to the trademark in that jurisdiction.
- What is the "Madrid System"?
The Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol) is a large-scale international effort to ease international trademark registrations and facilitate global commerce. It provides increased ease of international filings through a reciprocal trademark registration system between almost a hundred signatories. Administered by the World Intellectual Property Organization (WIPO), it allows trademark owners to register through a single application which entitles them to trademark protections in every country that is a signatory to the Protocol.
- Which countries are members of the Madrid System?
There are currently 97 member states in the Madrid System. Although Canada is not yet part of the system, it is planning to accede fully by 2018.
- What is "Convention Priority"?
Convention priority allows you to file trademark applications in foreign countries or regions within six months of filing in your home country and have the foreign application treated as if it were filed on the same date as your original application.
- Do all countries protect unregistered or common law trademarks?
Not all countries protect unregistered trademarks.
- Do I have to be a citizen or resident of the jurisdiction in which I am filing a trademark application?
No, you do not have to be a citizen or a resident of the country in which you are filing for trademark protection.
- What are geographical indications?
Geographic indications are any part of a name or design of a product that is capable of identifying where that product has originated (i.e. a name or a city or region, a picture of a common landmark, a color design using colours of a flag). As they are similar to a trademark in evoking an association made with the region by consumers, there are certain protections allotted to them by the World Trade Organization and many of its members. Geographical indications are often used as certification marks.