TradeMarks

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Protecting your brand with a trademark registration is of fundamental importance to your business.  Trademark rights begin with the use of the mark during the normal course of trade.  Your trademark brands the goods and services of your business with a level of quality and goodwill that you have worked hard to achieve.  Your brand builds trust with your customers that continues so long as you preserver at maintaining the quality in your brand.  Protecting your brand with a trademark registration is relatively inexpensive as compared to the value placed in your brand by your customers and  as compared to the expense you have invested and continue to invest in building your brand.

“Trade-marks in Canada are an important tool to assist consumers and businesses.  In the marketplace, a business marks its wares or services as an indication of provenance.  This allows consumers to know, when they are considering a purchase, who stands behind those goods or services.  In this way, trade-marks provide a “shortcut to get consumers to where they want to go”, per Binnie J. in Mattel Inc. v. 3894207  Canada Inc.  2006 SCC 22, [2006] 1 S.C.R. 772, para. 21.

A registered Canadian trademark provides for broader scope of protection across the country as contrasted with common law trademark rights which are limited to regions of use of the common law trademark.  For example, it is possible to enforce a registered trademark in regions of the country where the registered trademark may not be in use.  The same cannot be said for common law trademarks.  Thus there is an advantage to trademark registration.

The test for confusion of a registered trademark is not as stringent as the test for confusion of a common law trademark.  For a common law trademark, instances of actual confusion may need to be proved as occurring to enforce a common law trademark, whereas for a registered trademark the test is that there is likelihood of confusion.  Again, there is an advantage to trademark registration.

While trademarks may comprise one or more words, a logo and/or a slogan, used in a descriptive or adjective sense, the form of the trademark has no bearing on the business level or marketing level of the trademark.  In our view there are three business or marketing levels associated with trademarks.  These levels are 1) Primary or House mark; 2) Brand marks; and 3) Secondary Marks.

The highest level of trademarks are Primary or House marks are trademarks used to identify your business and are often found on all letterhead, business cards, ecards, on each page of your web site, and are used in association with products you sell and services your provide.  All Primary trademarks or House marks should be registered.

Brand marks are trademarks used by a business to build goodwill and market share for different product lines or service categories offered by the business.  Brand marks should be registered when the importance of these Brand marks to your business approaches that of the importance of your Primary or House marks.  When the public starts to views your Brand marks as covering differing product lines of your business that differ in either quality and/or pricing and that are targeted to different market segments is an example of Brand mark recognition .  Another example would be to use Brand trademarks to promote a product line or service category without reference to the Primary or House mark in association.

Trademarks specific to a specific product or specific service are what we refer to as secondary trademarks and usually have a lower level of importance to a business.  In most businesses, the life span of secondary trademarks is relative short and does not warrant protection through registration.  Also, when the market share attributed to secondary trademarked product and services is low, then registration may not be warranted.  When secondary trademarks are used with a product line or service that is fundamental to the success of your business then registration of a secondary trademark is likely warranted.

For the most part, all primary or house trademarks should be protected with a trademark registration.  As for brand trademarks and secondary trademarks, these marks should be protected when there is a strong business case for the product and or services used in association with these marks.

Before you commit advertising and marketing resources to the promotion of your trademarks, we recommend you have a trademark search made to determine if the trademark is available for use and adoption.  It is good business practice to start to develop goodwill in association with a trademark that distinguishes your business from a competitor’s trademarked pruduct or services.  Thus the trademark search should also help in determining the degree of distinctiveness of the your trademark from other similar and potentially confusingly trademarks.

Once the trademark search is completed, you should be in a position to make a decision on adoption, use and applying for registration of your trademark.

Let us at Craig Wilson and Company assist you in obtaining protection for your trademark.  We can conduct trademark availability searches of Canadian Trademarks.  We prepare and prosecute trademark applications before the Canadian Trade-Marks Office through to registration.  We have experience in trademark Opposition Proceedings and Section 45 challenges to trademark registrations.

We can also have searches made and applications filed in foreign countries via our network of foreign trademark associates.

A Canadian trademark registration lasts for 15 years and and may be renewed for consecutive 15 year terms.

This web site refers to trademark or trademarks as one word.  In Canada, trademarks are commonly referred to as trade-marks with the hyphen.  Trademarks have  been referred to as two works namely, trade marks.