Trade-marks

Trade-marks are the words, designs or combinations thereof which suppliers use to persuade you, the consumer, to purchase their products or services.  Trade-marks are also the tool which those suppliers use and rely upon to distinguish themselves from their competitors as being the source of those products or services.

You see and hear trade-marks all around you daily in the advertising you which are bombarded with.  They are the written words, the sounds those words make when spoken, the graphics, and all of the connotations which those names, sounds and graphics conjure up when you see or hear them – all of which is, of course, influenced by the tone and delivery of the advertising.  The owners of these trade-marks spend a significant amount of effort and money creating and reinforcing the association between their trade-marks and the products or services with which these trade-marks are associated.  The objective for many of these trade-mark owners is for their trade-marks and the products or services with which those trade-marks are associated such as, for example, cars, boats or clothing, to become synonymous in the mind of the consuming public with being successful, powerful and/or cool.

The trust and/or feelings which you, as a consumer, associate with a particular trade-mark is called “goodwill”.  Goodwill is the desired recognition and identifier of source, as in the source of the product or service, which a trade-mark carries with it.  Consequently, the owners of the trade-marks, whether they are sellers of products or providers of services, want you to recognize that those trade-marks are theirs and no one else's.  They don't want you to be confused when you go to buy their products or services (ie: thinking that you are buying their running shoes when, in fact, you are buying a competitor’s shoes) resulting in you buying someone else's goods or services.  In other words, trade-marks are intended to identify the true source of particular words and/or services.

Many businesses invest a significant amount of time, effort and capital in selecting, developing and commercializing the trade-marks associated with their products and/or services—a process which is sometimes referred to as “branding”.  A well-developed and commercialized trade-mark may have significant goodwill attached to it and therefore may become a valuable asset of the business with which it is associated.  As such, the supplier may wish to take steps to protect this valuable asset.

In Canada, a supplier of products and/or services may, through the use of a trade-mark, acquire some common law protection for its rights to that trade-mark.  As such protection is subject to certain limitations, a supplier may seek to further protect and expand the ambit of protection of its trade-mark by registering the trade-mark with the Canadian Intellectual Property Office.  Once registered in Canada, such a registration will, subject to certain limited exceptions, provide the owner with the exclusive right to use that trade-mark throughout Canada in association with the products and/or services which are identified in the trade-mark registration.

The trade-marks which we see day to day typically combine distinctive elements with non-distinctive elements.  The distinctive elements may or may not be protectable.  The non-distinctive elements are ordinarily not protectable, the rationale being that it would be unfair to allow one supplier to have the monopoly over a word or element which another supplier might reasonably require in order to describe his, her or its products and/or services.   For example, a shoe manufacturer would not be entitled to a monopoly over the word, “shoes”, in association with footwear as a competitor may legitimately need to use that word to describe its products. If, however, such a supplier used the word, “shoes”, in conjunction with a distinctive word(s) or design(s), the combination may be protectable such that competitors would not be entitled to the use of the word, “shoes”, in combination with that distinctive element or something confusingly similar to that distinctive element, but could use the word, “shoes”, on its own or in combination with other dissimilar words and/or elements.

Consequently, in the ordinary course, the most protectable and strongest trade-marks are those which are the most distinctive.  The more unique a trade-mark is, the greater the likelihood that it will be protectable and the broader will be its broad ambit of protection.  Coined or made-up words, or known words which are used in a unique or unusual manner, will generally function as strong trade-marks.

It is very common for initial inquiries to be about trade-marks which people or companies have already been using for some time rather than about trade-marks which they are thinking about using but have not yet used.  We often hear during an initial conference that an individual or company had presumed all along that they had the trade-mark rights to their trade-mark because they had registered a business or corporate containing the trade-mark.  This is incorrect.  The fact that someone has secured a business or corporate name in a corporate registry of a particular government does not give the registrant rights in the corresponding trade-mark.  They are separate registration systems and are governed by almost exclusively separate bodies of law.

TRADE-MARK - THE PROCESS

The steps involved in securing trade-mark protection in Canada and the United States, and the services which we provide in this regard, include the following:

1. The investigation, including the searching of trade-marks (word and/or design) and reporting our opinions to our clients as to the likelihood of successfully securing protection for the subject trade-marks;
2. The preparation of a trade-mark application including working with our clients to an appropriate description of the products and/or services associated, or to be associated with the trade-mark, as well as establishing the dates of first use of the trade-mark, if applicable;
3. Filing the trade-mark application with the appropriate trade-mark office which, most typically, will be Canada and the United States;
4. When the application comes before a trade-marks examiner during the examination stage, if required, we negotiate with the examiner with a view to securing approval of the application.
5. Once an application has been approved by the trade-marks examiner, it will proceed to the opposition stage.  During the opposition period, the application is published in a government publication for a specified period (two months in Canada and one month in the United States).  During this period, any interested party can oppose the application to register which opposition would ordinarily be based on the opponent’s assertion that it has a prior and better right to the trade-mark than the owner of the application being opposed.  Although relatively rare, opposition proceedings are quasi-litigious and can be expensive.  Until the opposition proceedings are resolved, the application is removed from the ordinarily processing cycle.
6. Once the application has successfully completed the opposition period, it will be allowed.  If the application was filed based on use, that is, the applicant was using the trade-mark with respect to the products and services identified in the application, the next step will be registering the trade-mark.  If the application was filed based on proposed use, that is, the applicant had not commenced using the trade-mark when the application was filed, then the applicant commence using the trade-mark with the products and services identified in the application and provide evidence of such use to the trade-mark office before the application can proceed to registration.
7. Tracking deadlines relating to the prosecution process and providing timely warnings of upcoming deadlines so that the appropriate steps can be taken;
8. Tracking on-going deadlines including renewal deadlines and, in the United States, tracking deadlines for satisfying proof of use requirements.