Protecting your intellectual property – trademarks

Bryan Santone, H Two Consulting Inc., Toronto, ON

For this month’s blog, I decided to work with Elliot Gold, a patent and trademark lawyer and intellectual property (IP) expert at a leading Canadian IP and technology law firm (Ridout & Maybee LLP). The intent here is to share some initial insights about understanding and protecting IP – which is something that both product and service-based businesses need to consider at various stages of growth and development.

In the simplest terms, every company and every product has a name. If you chose the names of your company and products appropriately, you can maximize the future potential of your brand. If you do not chose appropriately, you can limit your ability to grow value in your brand and the ability to enforce rights against others.

What is a trademark?

A trademark is the identifier for a product/service. It can be virtually anything that is used to identify and distinguish the source of a product or service from those of others (a word, phrase, logo, sound, 3D shape). A trademark represents the reputation of a product and the source of the product.

The Supreme Court of Canada has stated: “The power of attraction of trademarks and other brand names is now recognized as among the most valuable of business assets.” Once a company achieves a certain level of success, its brand becomes perhaps its most important asset. The brands of the world’s most well-known companies are each worth billions of dollars (for example COCA-COLA, GOOGLE, APPLE, MICROSOFT brands are each valued in the billions of dollars).

When launching a business, a few critical issues should be addressed when choosing your business name and names for your products and services. Consider the following:

• Chose a company name or mark that is capable of becoming distinctive. It is important to choose a mark that has no particular descriptive meaning to ensure that it is capable of evoking a desirable association to your product / service. Invented words with desirable tone or suggestions tend to be the best marks to choose (MICROSOFT GOOGLE BLACKBERRY for example). It is generally recommended to avoid choosing “descriptive marks” as it will be difficult to prevent others from using those marks and it will be difficult to acquire distinctiveness (e.g. you can’t stop someone from calling their product SUPERB ICE CREAM, if in fact they sell ice cream).

• Clear the mark. Make sure there is no one else in the marketplace of similar products using your mark or anything confusingly similar in each country you do business. Search the following websites to determine whether prior registrations or applications exist that would impact your ability to use your mark (www.cipo.ic.gc.ca; www.uspto.gov). You should also search the internet generally, paying particular attention to the marks and product names of your key competitors and others in your field of business. Ultimately, it is best to have a lawyer help navigate through a search strategy.

• Register the mark. Rights of a trademark stem from registration under the Federal Trademarks Act or from use of the trademark by the trademark holder. A Canadian trademark registration gives the trademark owner the exclusive right to use the trademark throughout Canada in association with the goods and services defined in the trademark registration for a period of 15 years. Registration of a trademark can subsequently be renewed for further multiple periods of 15 years. The registration also gives the trademark owner the right to sue others who may be infringing on the registration by using a similar trademark to that of the registered trademark. In contrast, the rights which stem from the use of the trademark, otherwise known as common law rights, are limited to the territorial area in which the trademark has been used, or where the trademark owner can establish a reputation based on that trademark. The rights will be similarly limited in scope in association with the goods and/or services with which the trademark has been used. You should register in each country that you do business.

• Mark your products. The ™ symbol may be used immediately in conjunction with any mark, sign, symbol, etc. which is being used as a trademark (whether registered or not). The ® designation is limited to trademarks which have been registered somewhere in the world.

The above introduction indicates that there are very complicated and important decisions to be made when deciding to protect your IP that must be made early on in the business life cycle. Elliot has been instrumental in helping me to understand IP and when/why it is important for my businesses. If you need additional assistance, Elliot can be reached at EGold@ridoutmaybee.com.