Industry Insights

What is a Trademark?

A trademark may be a word, design, logo, or phrase that is used to distinguish the goods and services of one party from the goods and services of another party. For example, the trademark UPS differentiates its delivery services from those branded with the trademark FedEx.

What is a Registered Trade-mark?

A trademark may be registered or unregistered. A registered trademark is one that has completed the trademark application process under the Trade-marks Act. A registered trademark has the advantage of all the legal rights granted under the Trade-marks Act which are significant; for example, a registered trademark grants the owner rights that are enforceable across the country. An unregistered trademark may only be enforced in the geographic area where it enjoys a reputation. So, a registered trademark that has been used and become known only in Ontario is enforceable in British Columbia against an infringer while an unregistered trademark with the same facts could not be enforced in British Columbia.

What is the difference between a Trademark and a Business Name?

The main function of a trademark is to distinguish goods and services from those of a competitor. A business name, corporate name, partnership name, trade name etc., identifies the source of goods and services.

What is a “good” Trademark?

Below is set out a hierarchy of trademarks. The trademarks near the top will have a wider ambit of protection, stronger goodwill, and be easier to enforce. Trade-marks lower in the hierarchy will enter a marketplace that is crowded with competitors who have similar trade-marks, enforcement action will be necessary, and the trade-mark will likely never acquire great distinctiveness.

1. Coined – Exxon, Kodak, Kijiji
2. Arbitrary – Blackberry, Apple
3. Suggestive – Greyhound
4. Descriptive – Pools & Spas
5. Generic – Zippers, Escalators

When can I use a Trademark?

The general rule is that so long as you are not infringing the rights of any other person; use your trademark as early and as often as you can. The more that a trademark is used the greater is the reputation and goodwill that accrues to the trademark. The filing of a trademark application has no effect on this general rule that will continue to apply even after an application is filed.

Why file a Trademark application?

A trademark once registered grants the owner the exclusive right to use the trademark across the country in association with the goods and services set out in the application. Without a registered trademark, an unregistered trademark may only be enforced in the geographic area where it enjoys goodwill and a reputation. It can be very expensive to try and establish such a reputation in court, whereas with a registered trademark a reputation is assumed.

Furthermore, if you let others with or without knowledge of your trade-mark claim the registered trade-mark rights associated with your trade-mark by filing an application before you, you will have to spend a lot of time and money to attempt to fix the record while also dealing with the uncertainty of the outcome of the process.

When can I file a Trademark application?

Subject always to other people’s superior rights, there is no restriction on when you may file a trademark application. However the sooner an application is filed the better. Certain rights will accrue to you once an application is filed. By delaying the filing of a trademark application you may find yourself in a very time-consuming and expensive procedure as you try and remove applications based on inferior rights that were unfortunately filed before yours.

What is the Trademark application process?

The trademark application process will take at least 12-14 months. The application process generally goes through the following stages:

1. Filing of application
2. TM Office Examination
3. Publication in Trade-mark Journal
4. Registration

The application process may be permanently stopped in many different circumstances, for example, the trademark application is confusing with a trademark already registered or another party is successful in blocking the trademark application.

What complications can occur in the Trademark application process?

A trade-mark application can be delayed or blocked entirely if the Trade-marks Office determines that the application is not legally permitted to be registered and also if another party proves that the application should not be registered, for example, because the trade-mark is confusing with a trade-mark already registered.

Should I file a Trademark with the help of a lawyer or trademark agent?

Many things may be done in the legal area without the help of anyone. However it will be a lot more difficult to achieve success without knowledgeable assistance. A person may file a trademark application without help and may register the trademark. Unfortunately the resulting trademark may be unenforceable because it was put together incorrectly. It has happened to me more than once that clients, who obtained trade-marks registrations on their own, asked me to use their unenforceable trade-marks against infringers. Experienced trademark lawyers know how to knockout poor trademarks, even though the infringer is in the wrong. Because there are too many laws and rules concerning trademarks, I can’t recommend that people file trademark applications on their own.

What should I budget for a Trademark application?

At least $2,500.00. Every application has a life of its own and costs will be determined based on what occurs in the application process.

Should I file a Trademark application in the U.S.?

If the U.S. is an important or potentially important market for your goods and services, then you should take steps to file a trademark application in the U.S. For trademark law, delay in attempting to secure your rights can only hurt you. Costs for a U.S. trademark application are generally the same as in Canada. It is preferable to use a U.S. lawyer experienced in U.S. trademark law for U.S. trademark applications. Moreover, if a trade-mark application is filed in the U.S. within 6 months of the filing date for the same trade-mark in Canada, the application in the U.S. will be considered to have been filed on the same day as the Canadian application and vice versa.

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Ryan K. Smith is a Lawyer and Trade-mark Agent at Feltmate Delibato Heagle LLP. He is a corporate and commercial lawyer with expertise in software, marketing, and intellectual property matters. You can reach Mr. Smith at (905) 287-2215 and [email protected]. This article represents general information only and does not constitute legal or other professional advice or an opinion of any kind.