MAKING SENSE OF TRADEMARKS - WHAT, WHEN, WHY AND HOW

Transcription

1 MincovLawCorporation mincovlaw.com MAKING SENSE OF TRADEMARKS - WHAT, WHEN, WHY AND HOW If you can't explain it simply, you don't understand it well enough. Albert Einstein Like everything else in this world, if you dig deep enough, trademark laws have many subtleties and important little things about them. However, just like a tourist does not need to fully understand aerodynamics to decide whether they should travel by plane or by car, a business owner does not need to have read hundreds of cases about registrability of trademarks to decide whether their brand is worth protecting. A lawyer's job is not to stun his clients with his brilliance. A lawyer's job is to make the clients' life easier by clearly explaining what needs to be explained and then doing what needs to get done. This is the philosophy behind the Trademark Factory, a service that makes deciding whether or not to register trademarks as simple as and getting the trademarks registered in Canada as simple as buying a Big Mac. In this article, I am going to share the Trademark Factory process in order to demystify the complexities surrounding the trademarking process. On the highest level, the three steps that every business owner goes through are: 1. Do I have anything trademarkable? 2. Should I register my trademarks? 3. How do I register my trademarks? Let me walk you through these three steps. Protecting your ideas and covering your assets

2 1. Do I have anything trademarkable, a.k.a. Can I register my trademark? What's most important here is to clearly understand what is and what is not the function of a trademark. The function of a trademark is to allow the end consumer to tell your products and services from identical or similar products and services of your competitors. For example, cab companies rarely offer services that are vastly different from what other cab companies offer. Often, local governments even force all cab operators to charge the same rates. Through the use of touting or catchy trademarks, some cab companies try to lure first-time customers who may be looking for a cab on the web or through Yellow Pages. On top of that, trademarks make it easier for customers to give repeat business to a particular cab company. Again, the function of a trademark is not to compel the public to choose a cab over buying a bicycle, but to allow those who have already decided that they want to take a cab, to choose which one it is going to be. Trademarks can take many forms, as long as they perform this distinguishing function: they can be plain words ("ipad"), logos (the bitten apple design used by Apple), slogans ("I'm lovin' it" by McDonald's), characters (the Hello Kitty design), shapes of products (the Coca-Cola bottle), colors (the famous red soles of Christian Louboutin's shoes), melodies (the Nokia tune) or sounds (the roaring lion by MGM). As long as a business uses a particular identifier to distinguish its products and services from identical or similar products and services of its competitors, it can usually be protected as a trademark. 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. For example, BLUE SHIELD trademark is owned in Canada by two completely different entities: one in association with prepaid financing and administration of medical services, and the other in association with various items related to welding. The ability of the trademark to distinguish products and services is called distinctiveness, and is the first of three requirements of registrability of a trademark. The second requirement is that the trademark must not be unregistrable according to specific prohibitions set out in the Trade-Marks Act. In order not to turn this article into a boring textbook no one will want to read, I will only briefly cover the most common ones. 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. Indeed, registering such trademarks would give their owners the monopoly over the whole class of products and services, as opposed to allowing customers to tell specific products and services within that class. Neither can you register clearly descriptive trademarks, that is, 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. Often it is impossible to tell with certainty whether the Canadian Intellectual Property Office (CIPO) will consider a particular trademark descriptive, which may result in some back and forth between the trademark owner and CIPO.

3 Finally, the third requirement of registrability is for the trademark to not be confusingly similar to another trademark or a trade name previously registered or used in Canada by somebody else. If there is a trademark previously registered in association with identical or similar products or services, CIPO will refuse a subsequent confusing trademark application. 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. Unless specifically requested by an third party, CIPO will not check if your trademark is similar to unregistered trademarks and trade names. Yet, If you are planning to build your business around a brand which you have not yet started using, it may be a good idea to also make sure that nobody else in Canada is using a similar mark without registering it. This latter search is usually conducted by professional searchers. A simple test of whether or not to do this search is whether you would readily abandon your brand if the search reveals a similar mark used by someone else. If you are going to continue using your trademark anyway, there is no reason to waste money on a search the results of which will be irrelevant to both yourself and CIPO. 2. Should I register my trademark? Just because you have something that CAN be trademarked, does not necessarily mean that it should be registered as a trademark Unless you want to register your trademark simply to stroke your ego, which is also a good reason, I ve developed a simple 3-question test that will allow you to decide if it s the right time for you to register your trademarks. Think about the name, logo or the slogan that you have established that you can trademark, and ask yourself three questions: Would it be worth fighting for if you received a cease-and-desist letter demanding that you stop using your trademark in your business? Yes, you came up with your trademark. Yes, you started using it first. But what if someone else registered your trademark before you do? You would still probably be able to win in court. But it would cost you 20 to 40 times more. So if you ever see yourself fighting to defend your own trademark in court, you should minimize the risk of your trademark being hijacked by someone else. You do it by registering your trademarks. Would it be worth fighting for if your competitor started using your trademark or a similar name to promote their products or services? In Canada, you would have some limited protection even for your unregistered trademark, but this protection would only extend to geographical areas where people know your trademark well enough and, just as in the case of the cease-and-desist letter, it is a lot more expensive to win a case relying on an unregistered trademark. So think about this, will you be losing business if your competitor decided to use

4 your trademark to sell their products and services anywhere in Canada? Do people buy from you because of your trademark? Do they find you because of your trademark? If you were to franchise, expand or sell your business, would the buyer give you more money for your trademark? A registration automatically protects your trademark across Canada, regardless of whether people have any idea about your products or services in any particular part of it. This means that if you are to sell, franchise or expand your business, a registered trademark will allow you export the credibility that it has generated in one place to any other place in Canada. Another way to deal with this question is to ask yourself, do my trademarks have any value if I am no longer in my business? MCDONALD'S trademark has value regardless of whether the McDonald's Corporation is owned by anyone whose last name is McDonald. Will yours? 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 lawyer or a trademark agent to apply to register your trademarks in Canada. Indeed, about 20% of all trademark applications in Canada are filed by trademark owners themselves. Unfortunately, many of these never get registered. By CIPO's own statistics, 70% - 75% of all applications (including those filed by lawyers) initially receive what is usually called an "office action", a report where CIPO informs the applicant that the trademark application is rejected. There are three possible scenarios from here: the office action may contain specific instructions which, if followed, will lead to the approval of the application; the office action may reveal problems with the application that cannot be fixed and the application will not be registered; or the applicant or the applicant's lawyer can successfully convince the CIPO examiner to change their mind about the initial refusal. In most cases, trademark owners have no idea how to respond to these office actions because they are not written in a most human-friendly language. So while self-filing can be the most cost-effective strategy, it may end up costing you time and money. CIPO does not refund government fees for refused applications. And the earliest you are going to find out that there is something wrong with your application is in about 6 months after you file it. For business owners, the trademarking process is binary - their trademarks either get registered or they don't. The vast majority of trademark agents will eventually be able to get the job done, assuming that the trademark is at all registrable.

5 So how do you pick the one to help you with your trademark? I suggest that you do your market research and ask the following questions: - Can you quote a fixed fee for the entire process from start to finish? - Will you charge me for the initial search of registered trademarks to confirm that my trademark is registrable? - Will you charge me an hourly rate to respond to office actions? - Will you charge me extra every time you receive something from CIPO and notify me about it? - If CIPO refuses to register my trademark, will I get my money back? In Conclusion If your branding is important to your business, you should protect it by registering your names, logos and slogans as trademarks. They are your valuable assets. Trademarks don't need to be complicated for business owners. Now, there is a fully predictable, guaranteed way to register trademarks in Canada. It's called the Trademark Factory. And remember two things: 1. if it's remarkable, it's trademarkable! 2. If you aren't protecting your business's assets, you are not being serious about your business. Call us at MR.TMARK or to discuss how we can help you protect your brand. Dedicated to Protecting Your Ideas and Covering Your Assets Andrei Mincov 2013 by Andrei Mincov and Mincov Law Corporation. Andrei Mincov is an intellectual property lawyer, a registered trademark agent and the creator of the Canadian Trademark Factory (