Trade Mark Registrations are granted to protect a “name” or a “logo” of a product or a business. Examples of trademarks are words, such as, “Kodak”, and “Xerox”, these being known as “made up” words. They do not exist in any dictionary but have been “made up” for identifying a particular product. They are excellent trademarks. Christian names are often used as trademarks and are easy to register. Dictionary words can sometimes be Trade Marks, provided they are not “descriptive”. Three popular trademarks are “Super”, “Miracle” and “Magic”. These names are so common however that it is difficult to register them.
Other trademarks include acronyms eg., IBM, or AT & T, and surnames, such as “Ford” or “Smith’s”. Surnames are, generally speaking, not good trademarks for use by a start‑up business.
In general, surnames are not truly “distinctive” of a business, or product, and may not be registered as trademarks without satisfying a very heavy burden of proof.
There are other words which should not be selected as trademarks, by start‑up businesses. These include geographical place names if they have any connection with the product, and descriptive words, which describe the product itself or what it does.
Logos are self‑explanatory. A well-designed logo can be of great benefit in identifying a product. A typical example is the so‑called “Golden Arches” of McDonald’s Restaurants.
A Trade Mark should ALWAYS be carefully searched before it is used. Be sure and obtain advice from a Registered Trade Mark Agent, or a lawyer knowledgeable in Trade Marks, before finally selecting your Trade Mark. Internet searches can be made in Canada, and in the US.
The addresses are shown in this booklet. Computer searches can also be made through various search houses, some offering a twenty-four-hour response.
If you locate a Trade Mark or name similar to your own, and if the goods or the business are similar, then, in general, it is better to select another Trade Mark.
There is no sense in picking a Trade Mark which is too close to the Trade Mark or Name of some other business. If you do, you may become involved in expensive litigation, and you may be forced to change the name.
Do not choose a trademark which has a slight difference in spelling, from a registered trademark. Minor changes are not enough to avoid confusion. The whole purpose of a trademark is to create your own unique identity. Stay away from similar marks.Minor changes are sometimes a suggestion that you are trying to get “a free ride” at the expense of another company.
Once you have selected a Mark that is clear, the next step is to register it yourself. The purpose is twofold.
Registration gives public notice to others who make searches that they should not use your Trade Mark. Registration also gives you exclusive rights across Canada for the use of the name, or logo.
PARTNERSHIP NAMES & COMPANY NAMES
Trade Mark Registrations are often confused with registrations of business names and partnerships, and companies. This is a serious mistake.
Registrations of partnerships and business names are merely a formality for opening a bank account. Such registrations do NOT provide any protection whatever for the exclusive right to the use of the name.
Exclusive rights can be obtained ONLY by registering as a Trade Mark in the Federal Trade Marks Office. The same is true of company names. Incorporation does NOT give any protection for the company name. Corporate names are granted without regard to Trade Marks. So, you may incorporate, and still, find you are infringing a registered trademark. This can be an expensive mistake. Always insist on having a separate trademark search made before you incorporate.
Trade Marks are FEDERAL, company names are provincial, in most cases.
Trade Mark Registrations are granted by the Trade Marks Office a branch of the Federal Government in Ottawa, and similarly in Washington. A good trademark, when registered, can often be a valuable asset of your business. In rare cases, a small business may have registered a trademark and used it.
Later a multi-national corporation may decide they like that mark. They may make an offer to buy the name. This may be rare but it has happened and will happen again.
The small business may find itself receiving a very large sum, for what they thought was of little importance. This cannot happen though unless you register your trademark.
An application for the Trade Mark is first of all filed with the Trade Marks Office and the fee paid. The Trade Marks Office officials will then examine the application, and search earlier Trade Marks. They may make objections. These objections must be answered within a time limit. Once they are answered the Trade Mark is then advertised in the Trade Marks Journal. If no other person files an opposition to the Trade Mark, within sixty days, then the Trade Marks Office will request a registration fee. Once this is paid they will automatically register the Trade Mark.
The procedure can take up to a year.
The forms and regulations are available on the Internet.
Do not attempt this for yourself. The rules are highly technical. It needs years of experience to select the right form and file the application in the right way.
If there is anything mistaken with your application, your registration will be worthless.
Use a Registered Trade Mark agent experienced in this field. It will save you many times the cost of professional fees, to get it right first time.
Once registered, a Canadian Trade Mark remains in force for 15 years and can be renewed every 15 years upon payment of a fee.
U.S. renewals are more complex. Check with your lawyer.