What Every Small Business Owner Should Know About Trademarks

+1 (778) [email protected]

http://trademarkfactory.ca



3 Common Mistakes When Registering Trademarks 1. Not registering trademarks that need to be

registered.

2. Spending too much money registering worthless trademarks.

3. Wasting too much time filing trademark applications that have no chance of being approved by Canadian Intellectual Property Office.



2 Reasons for these 3 mistakes

1. Business owners don’t know what they don’t know.

2. They are afraid to ask a lawyer.

Let me fix th

at!



Why listen to me?

Copyright & trademarks lawyer with almost 20 years of experience.

Provided legal services to clients ranging from one-man startups to:



What you will learn:1. What trademarks are and why we need them

2. Trademarks vs. trade names

3. What cannot be protected as a trademarks

4. Trademarks do not give an absolute monopoly

5. Registered vs. unregistered trademarks ( ® vs. ™ )

6. 7 benefits of trademark registration

7. When you should register your trademarks

8. Trademark registration process

9. Tips & Tricks



If you have any questions:


778.869.7281

[email protected]

http://ipbook.ca





Definition of a Trademark

A trademark is a feature unrelated to the characteristics of your products or services which allows your business to help customers and consumers distinguish your products and services from the identical or similar products and services of everyone else.



Forms of Trademarks

1. Traditional Trademarks

• Word trademarks (product or service names, slogans)

• Design Trademarks (logos)



Forms of Trademarks2. Non-Traditional Trademarks

• Color Trademark• Sound Trademark• Shape Trademark • Animated Trademark• Hologram Trademark • Smell Trademark• Taste Trademark• Texture Trademark



Function of a Trademark

To distinguish products and services of one business from identical or similar products or services of another business.




The function of a trademark is not to help a person choose a burger over a pizza, but for a person who wants to eat a burger decide which one.




Trademarks address the question “which?” rather than “what?”





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Purposes of Trademarks and Trade NamesTrademark Trade Name

Identifies products or services Identifies a business or a company

Customers buy trademarksCustomers do business with trade names

Customers buy trademarks from trade names.



Trade Names

1. Every business (other than merely a numbered company) has a trade name.

2. Rights in a trade name are similar to rights in unregistered trademarks.



Trade Names3. Even if you have unique trade names

• Doesn’t guarantee other businesses can’t use it; • Doesn’t mean that your trade name, or brand, is

a trademark.

4. Trade names can only be registered as trademarks if used to identify products or services.



Example: Awesome Software, Inc.

1. Trade name NOT used as a trademark:

2. Trade name used as a trademark:

“Awesome Software Inc. offers such great titles as Text, Calculator, and Presentations” .

“We offer Awesome Software™ Text, Awesome Software™ Calculator and Awesome Software™ Presentations”.



Example: Microsoft

Trade name used as a trademark:

The trade name is protected as a trademark because “Microsoft” is used to identify their products such as Microsoft® Windows® or Microsoft® Excel®.



Registration of a Trade Name

1. Corporate registries may register trade names, even if such registration would violate prior rights.

2. Even if your trade name is registered, it does not mean that you can legally use it.



When should you register your trade name as a trademark?

Understand your customer first!



2 types of customers

Customers who look for specific products or services

Customers who look for you

“I’ve heard that AirSuckerAS-78is a great vacuum cleaner, I would like to buy one of these”.

“I’ve heard that ABCmakes great vacuum cleaners, which model would you recommend?”

No need to register your trade name as a trademark

Register your trade name as a trademark!





778.869.7281

[email protected]

http://ipbook.ca





REMINDER: The function of a trademark is to distinguish products and services from identical or similar products or services of another business.

Trademarks are not designed to grant their owners a monopoly over the products or services themselves.

Trademark vs. Product / Service Itself



1. You can’t claim the generic name of a product or a service as to be a trademark

2. You can’t “trademark” descriptive names

3. You can’t “trademark” the functionality of a product

What Cannot Be Registered as a Trademark



Example: Product Wizmo

You cannot stop others from selling wizmos by claiming that “Wizmo” is your trademark.

The proper function of a trademark is to distinguish your wizmos from all wizmos out there on the market.

The function of a trademark is not to allow you to corner the market for wizmos.



Using Brand Names As Generics

1. Good for marketing / Bad for trademark• “I need a kleenex” or “Let me google that for

you”

2. Good for trademark / Worse for marketing• “I need a Kleenex tissue” and “Let me use

Google search engine for you



Clearly Descriptive Trademarks

Describe characteristics and features of products and services:

• COLOR for printers• SAFE for cars• JUICY for apples• SWEET for ice cream• PERFECTLY CLEAN for dry-cleaning services



Cannot Trademark Functionality

If the shape of your product is dictated by the product’s functionality, you cannot claim trademark rights over the shape.





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Trademarks only provide protection in association with specific products and services:

Association with Products and Services



Products: If the trademark is placed on the products themselves or on the packaging.

Services: If the trademark is used or displayed during the performance or in advertising of the services.

Limitations of Monopoly of Trademarks

The word “use” has a very specific meaning in trademark law:





778.869.7281

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http://ipbook.ca





Registered ® and Unregistered Trademarks ™Unregistered trademarks are protected in Canada (“common-law trademarks”).

If you use any identifier as a trademark (that is to distinguish your products or services from similar products or services of others), it is considered to be a trademark.

But need good evidence that the trademark is known in the area where your competitor uses it.



7 Main Advantages of Registered Trademarks 1. Automatic protection across Canada even when no

one knows about it in a specific area.

2. Makes it very difficult, if not impossible for an identical or similar trademark to be registered in association with identical or similar products or services.

3. It is much easier to win a trademark dispute if you have a registered trademark.



7 Main Advantages of Registered Trademarks4. Free and automatic protection against registration

of identical or similar marks by others.

5. Found in trademarks register.

6. .CA domain names.

7. Canadian TMs make it easier for Canadians to file their trademark applications in other countries.



How to Properly Mark Trademarks

For unregistered trademarks:

use ™ symbol next to the trademark

For registered trademarks

use ® symbol next to the trademark(careful!)





7 Benefits of Trademark Registration

#1

Protection is FEDERAL




#2

Protection BEFORE use




#3

Presumption of VALIDITY and OWNERSHIP




#4

Valuable ASSET=




#5

FREE and AUTOMATIC protection




#6

Found in the REGISTER




#7

Makes it easier to protect the brand outside Canada




BONUS

A new, wonderfully amazing and

amazingly wonderful experience





778.869.7281

[email protected]

http://ipbook.ca





3 Situations To Register Your Trademarks

1. Imagine receiving a cease-and-desist letter demanding that you change the name of your business, your products or your services.

If the cost of rebranding would be high or if you think you might consider fighting over this in court—register your trademarks.




2. Imagine seeing your competitor use YOUR trademark to advertise THEIR products and services.

If you think you might consider fighting over this in court—register your trademarks.




3. Will your trademarks help you get more money for your business if you decide to franchise, license out, expand or sell your business in the future?

If your brand has value to potential buyers and franchisees—register your trademarks.





778.869.7281

[email protected]

http://ipbook.ca





Trademark Registration Process (≈18 months)1. Preliminary steps:

• Search of registered trademarks• Optional search of unregistered trademarks

2. File Trademark Application• Describe the trademark• Set out the products and services • State the basis of registration• File application online• Pay government fee $250



Trademark Registration Process (≈18 months)3. Wait 6—7 months before CIPO looks at the

application• If CIPO doesn’t like something about the

application, it will issue an “office action”. • You will then have another 6 months to respond

to the office action. • You have 2 kicks at the can. If unsuccessful for

the 2nd time, application will be refused.• If everything is OK, the application will be

advertised in the Trade-marks Journal.



Trademark Registration Process (≈18 months)4. Post-Advertisement

• 2-month opposition period.• If the trademark is opposed and you lose the

opposition proceedings, the trademark will not be registered.

• If nobody contested your application or if you successfully defended it at the opposition stage, the trademark will be allowed.



Trademark Registration Process (≈18 months)5. Post-Allowance

• If your trademark is allowed, you need to pay another government fee of $200.

• If your application is filed with the “use in Canada” basis, you will receive certificate of registration.

• If your application is filed with the “proposed use” basis, you need to file declaration of use—and then you’ll receive certificate of registration.



3 Ways to Register Trademarks

1. You can do it yourself

Pros:•Cheap (if you know what you’re doing)

Cons:•Takes time to learn;•High likelihood of rejection;•No money-back




2. You can use other law firms or trademark agents

Pros:•Better chances of registration;•A professional does the work.

Cons:•Unpredictably expensive;•No money-back guarantee




3. Trademark Factory®

Pros: Cons:•Our services are not free





778.869.7281

[email protected]

http://ipbook.ca





Tips and Tricks

1. Do a search of registered trademarks in Canada and U.S. • Free search on CIPO and USPTO websites• Free visual search at

http://mincovlaw.com/goodies/trademark_search

2. Let us do the search for you for free:http://trademarkfactory.ca

3. Use Google to determine the uniqueness of your brand.



Tips and Tricks

4. Use http://namechk.com

5. Register domain names with your brand name http://domainsbot.com

6. Use the ™ sign next to your unregistered trademarks

7. Consider registering your trademarks!



778.869.7281

[email protected]

http://ipbook.ca

What Every Small Business Owner Should Know About Trademarks

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trademark trademarks

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forms of trademarks

worthless trademarks

unregistered trademarks

trademark registration

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