Trademark basics for start ups

Emilie Feil-Fraser  00:00

Hi, I'm Emilie Feil-Fraser and intellectual property lawyer at Gowling WLG based in Vancouver, BC.

Lori Hall  00:07

Hi, I'm Lori Hall, trademark partner at Gowling WLG and the Hamilton office. Welcome to our Go XL module on trademark basics for startups.

Emilie Feil-Fraser  00:18

If you're running a small business, you'd likely develop a business name or brand to establish and distinguish your goods and services in the marketplace.

Lori Hall  00:26

It's not all about fancy logo design, though. Did you know you can get exclusive rights to your brand in Canada. If you registered as a trademark? Did you also know that if you don't check to see what else is out there, there's a risk that your daily develop brand could be infringing on another entity's already existing trademark rights?

Emilie Feil-Fraser  00:45

Today, we're going to guide you through the following topics. First, we'll give you a brief overview of trademark law and what's important for your business. Then we'll walk through the steps for developing a strong trademark, including the due diligence you should conduct. And finally, we'll give you a checklist of what you'll need to put together for a trademark application.

Lori Hall  01:03

Trademark due diligence and protection might seem like a low priority when there's so much on your business to do list. But putting in a little offer now will likely save you lots of time and money down the road.

Emilie Feil-Fraser  01:17

Just remember that our discussion today isn't intended as legal advice. We recommend contacting a trademark professional before proceeding with any of the steps discussed today. First of all, what is a trademark? Generally speaking, a trademark is any word symbol, design, slogan, sound, or combination of these elements that distinguishes your business's goods or services from those of others in the marketplace. Google, Kodak, Sony, Nike these are a few examples of trademarks that immediately call to mind the goods and services that they're associated with. A trademark allows a consumer to link a good or service as a source, and can also be a badge of quality based on the goodwill and reputation that the source has acquired. A trademark particularly a registered trademark, adds value to a business and can help leverage Goodwill for new product lines or services.

Lori Hall  02:08

What kinds of rights come with a trademark? Simply by using a trademark under Canadian trademark law owners generally considered to acquire certain rights in a trademark. These are usually called common law trademark rights because they are acquired automatically through us. However, these rights are often geographically limited in scope, and can be difficult to enforce.

Emilie Feil-Fraser  02:31

By contrast, registering a trademark gives you robust rights and protections. If you attain a trademark registration in Canada, you have the right to exclusive use of the trademark throughout Canada in perpetuity provided the trademark continued to be in proper use, and renewal fees are paid every 10 years. This means that you can stop other people anywhere in Canada from using a trademark that's the same or confusingly similar to your trademark.

Lori Hall  02:58

So how do you apply for a trademark, you must apply to the Canadian Intellectual Property Office to register a trademark. The application process in Canada usually takes about two years, and there are quite a few steps involved. Which is why it's a good idea to get a trademark professional to help you. Your trademark professional can also help you file corresponding trademark applications and other countries were once registered, you will get similar protection according to the laws of those jurisdictions. So your trademark registerable not all trademarks are available or registerable.

Emilie Feil-Fraser  03:34

For example, if another entity is using or has registered trademark in Canada has the same or confusingly similar to your trademark, and associated with goods and services that might overlap with yours, your trademark will not likely be registerable. There are other reasons a trademark might not be registerable.

Lori Hall  03:51

For example, if the mark is primarily merely a surname, if it is clearly descriptive of the associated goods or services if it's a geographic location and is clearly descriptive or mis descriptive of the origin of the associated goods or services, or the mark is superlative, and might not be registered ball marks like Fraser's foods or Vancouver close or the best would not likely be registerable. Without evidence these marks had acquired distinctiveness in Canada. There are also certain other marks that relate to universities or government bodies which are prohibited.

Emilie Feil-Fraser  04:30

That's why it's very important to do some due diligence on your trademark upfront before you invest lots of time and money into developing it as a brand. your due diligence will help you find out whether your trademark might be infringing on other entities existing trademark rights and secondly, whether it's likely registerable. Usually the due diligence takes the form of searches searches of the trademarks registers of the countries you'll do business in Google searches, domain name searches and searches of company directories. Among other things, when searching, you're looking for marks that are confusing with similar to or identical to your proposed marks that are being used in the same area of business that you're currently in or that you plan to enter in the future.\

Lori Hall  05:13

It's a good idea to get a trademark professional to help you with these searches. Because setting the proper search parameters can be tricky. It can be difficult to find design marks, or marks that are phonetically similar but spelled differently than your mark. Depending on the results, you may find you have to tweak or pivot to use a different trademark because the one you're searching for is already in use.

Emilie Feil-Fraser  05:37

To help you can you increase the likelihood of registrability of your mark? The field is more likely to be clearer, the more your trademark is distinctive, keep it simple, memorable and unique. It can be tempting to use descriptive trademarks because they tend to tell the consumer more about who you are, what goods or services you're offering, or where you're located. But the more descriptive the trademark, the more obstacles to registration there can be. For example, the trademark chose Marina Pub has the benefit of telling the consumer exactly who, what and where you are, but it's a weak brand and may not be registered as a trademark. By contrast, coined words like Kodak, Google, Nike, and Sony are the strongest trademarks because they're inherently distinctive. But you may have to invest more at the outset educating consumers about what kind of goods and services you offer. I certainly didn't know what a Google was the first time I heard that word.

Lori Hall  06:31

Here are six quick steps for developing your trademark and determining whether it likely meets the criteria for register ability. First, identify all markets and channels of trade your business is currently in and potentially will be in including other countries, if applicable. Next, identify all products and services your business intends to sell or provide. Include areas you may expand to in the future. For example, will you one day sell branded apparel, provide consulting services, make sure to include them in your list.

Emilie Feil-Fraser  07:07

Third, prioritize how much you want to communicate who you are and what you do by way of your trademark versus how strong of a brand you want to develop? Are you a Joe's Marina pug or you the next Kodak.

Lori Hall  07:19

Fourth, brainstorm the brand elements you want to convey? Do you want to include design elements or make a logo of your brand? Are there specific colors, words, ideas or elements you want to communicate? Once you have a short list of proposed trademarks, consult with a trademark professional and conduct searches to determine whether other entities trademarks overlap with your proposed trademarks, or if there are other registered ability obstacles. If there are be flexible about pivoting, or reimagining your desired trademark.

Emilie Feil-Fraser  07:55

When you're ready engaged a legal professional to file a trademark application on your behalf. Remember, it takes a couple of years for trademark to issue to registration in Canada and there can be various hurdles along the way. If you're not currently using your trademark, the most important date to establish your rights is your filing date. Alternatively, if you're already using your trademark, your rights will be a combination of your first use date and your filing date. In any event, it's a good idea to file as early as you can.

Lori Hall  08:21

Once you've settled on your chosen trademark, and you're confident that all potential risks have been uncovered, you are now ready to prepare and file your trademark application.

Emilie Feil-Fraser  08:34

It is so important that all information on your trademark application is accurate. filing a trademark application with errors could result in your inability to enforce your rights and your trademark down the road.

Lori Hall  08:44

Let's go through a checklist of the key things you'll need to include in a trademark application and some common mistakes to avoid. You can access the full checklist in the link below this presentation.

Emilie Feil-Fraser  08:56

The first thing you need in your application is the applicant's full name and address. If the applicant is a company, this means the full legal name of the company including the corporate signifier like inc or Ltd. If your business structure includes subsidiaries or other related companies, make sure the applicant is the entity within your structure that you want to own the intellectual property. After filing, you can fix a clerical error and the applicants name fairly easily by way of an affidavit. But it's more complicated to fix an application filed in the name of the wrong entity.

Lori Hall  09:26

Your application must include a visual representation or description of the trademark. If your trademark is a standard character mark, which means is comprised only of words, letters, numbers, punctuation marks, or other standard characters you might find in a keyboard. Your application must include a visual representation of the trademark in black and white on a background and a statement that is that it is a standard character mark. If your trademark is a design mark, which means it includes a logo, stylized characters or other design elements, your application must include a picture of the mark not exceeding eight centimeters by eight centimeters. If the design Mark includes a color, the names of the colors must be specifically described, and the visual representation must include those colors.

Emilie Feil-Fraser  10:18

Don't file the application for the wrong trademark. If you follow the wrong spelling of your trademark or the wrong logo design, your chamber could be cancelled for non US. Similarly, if you wish to sue another party for infringement, and you discover that the trademark on your registration document is not consistent with how you've used your trademark, it could be much more difficult for you to enforce your rights using that registration. You can't correct the digital representation of the trademark once it's filed. If it's wrong, you have to start fresh with a new application if you plan to use your trademark in both a standard character and design format.

Lori Hall  10:52

In other words, if you have both a watermark and a logo, you may want to consider filing multiple trademark applications. For example, one for the word mark and one for the logo. As each type of trademark will entitle you to a different scope of protection, and a different set of register ability criteria. We recommend asking your trademark professional for help with these strategic decisions.

Emilie Feil-Fraser  11:17

Another thing you need to include in your trademark application is a statement in ordinary and commercial terms, describing the goods and services that your trademarks associated with. This includes goods and services your business currently offers as well as goods and services your business may offer in the future. Remember, you can always narrow the scope of your trademark application but you can never expand it.

Lori Hall  11:39

Your statement but all must also be very specific. A statement that your trademark is associated with clothing for example is not enough, you need a list of specific types of clothing you plan to brown with your trademark. Your lawyer or trademark agent can help you draft a compliance statement of goods and services in ordinary commercial terms.

Emilie Feil-Fraser  12:00

As of June 17 2019, the goods and services in all Canadian trademark applications must be classified according to an international classification system called the nice classification. Your camera professional can help you categorize each of your goods and services into the proper nice class.

Lori Hall  12:20

The fees associated with your trademark application will depend on the number of nice classes in your application. The base fee charged by the Canadian Intellectual Property Office is 330 for the first class of goods and services, and 100 for each additional class. These numbers exclude legal fees and disbursements. As these fees can quickly add up, it's better to have a focused application that is practical about the goods and services that you're claiming, rather than an application that's overbroad. This will also help prevent your registration from being cancelled down the road. If it turns out you're not using trademark on the goods and services specified in your registration.

Emilie Feil-Fraser  13:02

Canada may not be the only country you want to seek trademark protection. Luckily, there's an international treaty called the Madrid protocol that streamlines the process of filing concurrent trademark applications in other member countries. Many key strategic jurisdictions are members of the Madrid protocol, including the United States, the European Union and the United Kingdom.

Lori Hall  13:23

If you file in other countries within six months of your fight of filing your Canadian application, you can claim priority in the foreign jurisdictions to your Canadian filing date. If you're not ready to file trademark applications in foreign just jurisdictions that soon, you can always file them after the six month window is up, it just means you won't be able to claim the benefit of the earlier Canadian filing date. Instead, the filing date will be designated as a date your foreign application was actually filed. Whether you're claiming priority or not. Be aware that other jurisdictions may require additional application criteria, such as proving use of the trademark in that country before your trademark is registered.

Emilie Feil-Fraser  14:05

And that's it. Thanks for joining us today. Lori  and I hope we've been able to provide you with some guidance on the selection of trademarks, the risks involved and some practical tips for filing a trademark application.

Emilie Feil-Fraser  14:16

If you want to learn more, check out my article trademark basis for startup, which summarizes the key principles we talked about today. You'll find a link to the article above this presentation as well as a downloadable PDF copy of Lori's trademark application checklist we went through and copies of the slide deck.

Lori Hall  14:33

If you'd like to explore other intellectual property topics, we encourage you to visit our Go EXL homepage to gain early access to other videos like ours on our virtual IP platform.

Emilie Feil-Fraser  14:46

And don't hesitate to get in touch with either one of us directly. If you have any questions. We're here for you and we're happy to help. Thanks again.