What Every Small Business Owner Should Know About Trademarks

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tm@trademarkfactory.ca
http://trademarkfactory.ca

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3 Common Mistakes When Registering
Trademarks1. Not registering trademarks that need to be registered.
2. Spending too much money registering worthless
trademarks.
3. Wasting too much time filing trademark applications that
have no chance of being approved by Canadian
Intellectual Property Office.

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2 Reasons for these 3 mistakes
1. Business owners don’t know what they don’t know.
2. They are afraid to ask a lawyer.
L et me fix that!

+1 (778) 869.7281
Why listen to me?
Copyright & trademarks
lawyer with almost 20 years
of experience.
Provided legal services to
clients ranging from
one-man startups to:

+1 (778) 869.7281
What you will learn:
1. What trademarks are and why we need them
2. Trademarks vs. trade names
3. What cannot be protected as a trademarks
4. Trademarks do not give an absolute monopoly
5. Registered vs. unregistered trademarks ( ® vs. ™ )
6. 7 benefits of trademark registration
7. When you should register your trademarks
8. Trademark registration process
9. Tips & Tricks

If yo u ha v e a ny
q u e s tio ns :
778.869.7281
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Definition of a Trademark
A trademark is a feature unrelated to the characteristics
of your products or services which allows your business
to help customers and consumers distinguish your
products and services from the identical or similar
products and services of everyone else.

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Forms of Trademarks
1. Traditional Trademarks
• Word trademarks (product or service names, slogans)
• Design Trademarks (logos)

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Forms of Trademarks
2. Non-Traditional Trademarks
• Color Trademark
• Sound Trademark
• Shape Trademark
• Animated Trademark
• Hologram Trademark
• Smell Trademark
• Taste Trademark
• Texture Trademark

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Function of a Trademark
To distinguish products and services of one business from
identical or similar products or services of another business.

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The function of a trademark is not to help a person choose a
burger over a pizza, but for a person who wants to eat a
burger decide which one.

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Trademarks address the question “which?” rather than “what?”

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Purposes of Trademarks and Trade Names
Trademark Trade Name
Identifies products or services Identifies a business or a company
Customers buy trademarks Customers do business with trade names
Customers buy trademarks from trade names.

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Trade Names
1. Every business (other than merely a numbered company)
has a trade name.
2. Rights in a trade name are similar to rights in
unregistered trademarks.

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Trade Names
3. Even if you have unique trade names
• Doesn’t guarantee other businesses can’t use it;
• Doesn’t mean that your trade name, or brand, is a
trademark.
4. Trade names can only be registered as trademarks if used to
identify products or services.

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Example: Awesome Software, Inc.
1. Trade name NOT used as a trademark:
2. Trade name used as a trademark:
“Awesome Software Inc. offers such great titles as Text,
Calculator, and Presentations” .
“We offer Awesome Software™ Text, Awesome
Software™ Calculator and Awesome Software™
Presentations”.

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Example: Microsoft
Trade name used as a trademark:
The trade name is protected as a trademark because
“Microsoft” is used to identify their products such as
Microsoft® Windows® or Microsoft® Excel®.

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Registration of a Trade Name
1. Corporate registries may register trade names, even if
such registration would violate prior rights.
2. Even if your trade name is registered, it does not mean
that you can legally use it.

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When should you register
your trade name as a trademark?
Understand your customer first!

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2 types of customers
Customers who look for
specific products orservices
Customers who look foryou
“I’ve heard thatAirSuckerAS-78
is a great vacuum cleaner, I
would like to buy one of these”.
“I’ve heard thatABCmakes
great vacuum cleaners, which
model would you recommend?”
No need to register your
trade name as a trademark
Register your trade name
as a trademark!

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REMINDER: The function of a trademark is to distinguish
products and services from identical or similar products or
services of another business.
Trademarks are not designed to grant their owners a
monopoly over the products or services themselves.
Trademark vs. Product / Service Itself

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1. You can’t claim the generic name of a product or a service
as to be a trademark
2. You can’t “trademark” descriptive names
3. You can’t “trademark” the functionality of a product
What Cannot Be Registered as a Trademark

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Example: Product Wizmo
You cannot stop others from selling wizmos by claiming that
“Wizmo” is your trademark.
The proper function of a trademark is to distinguish your
wizmos from all wizmos out there on the market.
The function of a trademark is not to allow you to corner the
market for wizmos.

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Using Brand Names As Generics
1. Good for marketing / Bad for trademark
• “I need a kleenex” or “Let me google that for you”
2. Good for trademark / Worse for marketing
• “I need a Kleenex tissue” and “Let me use Google
search engine for you

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Clearly Descriptive Trademarks
Describe characteristics and features of products and services:
• COLOR for printers
• SAFE for cars
• JUICY for apples
• SWEET for ice cream
• PERFECTLY CLEAN for dry-cleaning services

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Cannot Trademark Functionality
If the shape of your product is dictated by the product’s
functionality, you cannot claim trademark rights over the
shape.

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Trademarks only provide protection in association with specific
products and services:
Association with Products and Services

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Products: If the trademark is placed on the products
themselves or on the packaging.
Services: If the trademark is used or displayed during the
performance or in advertising of the services.
Limitations of Monopoly of Trademarks
The word “use” has a very specific meaning in trademark law:

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Registered ® and Unregistered Trademarks
™Unregistered trademarks are protected in Canada (“common-
law trademarks”).
If you use any identifier as a trademark (that is to distinguish
your products or services from similar products or services of
others), it is considered to be a trademark.
But need good evidence that the trademark is known in the
area where your competitor uses it.

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7 Main Advantages of Registered
Trademarks1. Automatic protection across Canada even when no one
knows about it in a specific area.
2. Makes it very difficult, if not impossible for an identical or
similar trademark to be registered in association with
identical or similar products or services.
3. It is much easier to win a trademark dispute if you have a
registered trademark.

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7 Main Advantages of Registered
Trademarks4. Free and automatic protection against registration of
identical or similar marks by others.
5. Found in trademarks register.
6. .CA domain names.
7. Canadian TMs make it easier for Canadians to file their
trademark applications in other countries.

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How to Properly Mark Trademarks
For unregistered trademarks:
use ™ symbol next to the trademark
For registered trademarks
use ® symbol next to the trademark (careful!)

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7 Benefits of Trademark Registration
#1
Protection is
FEDERAL

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#2
Protection BEFORE
use

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#3
Presumption of
VALIDITY and
OWNERSHIP

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#4
Valuable ASSET
=

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#5
FREE and
AUTOMATIC
protection

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#6
Found in the
REGISTER

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#7
Makes it easier to
protect the brand
outside Canada

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BONUS
A new, wonderfully
amazing and
amazingly wonderful
experience

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3 Situations To Register Your Trademarks
1. Imagine receiving a cease-and-
desist letter demanding that you
change the name of your
business, your products or your
services.
If the cost of rebranding would be
high or if you think you might
consider fighting over this in court
—register your trademarks.

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2. Imagine seeing your
competitor use YOUR
trademark to advertise
THEIR products and
services.
If you think you might
consider fighting over this in
court—register your
trademarks.

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3. Will your trademarks help you get
more money for your business if
you decide to franchise, license
out, expand or sell your business
in the future?
If your brand has value to
potential buyers and franchisees
—register your trademarks.

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Trademark Registration Process (≈18 months)
1. Preliminary steps:
• Search of registered trademarks
• Optional search of unregistered trademarks
2. File Trademark Application
• Describe the trademark
• Set out the products and services
• State the basis of registration
• File application online
• Pay government fee $250

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3. Wait 6—7 months before CIPO looks at the application
• If CIPO doesn’t like something about the application, it
will issue an “office action”.
• You will then have another 6 months to respond to the
office action.
• You have 2 kicks at the can. If unsuccessful for the 2nd
time, application will be refused.
• If everything is OK, the application will be advertised in
the Trade-marks Journal.

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4. Post-Advertisement
• 2-month opposition period.
• If the trademark is opposed and you lose the opposition
proceedings, the trademark will not be registered.
• If nobody contested your application or if you
successfully defended it at the opposition stage, the
trademark will be allowed.

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5. Post-Allowance
• If your trademark is allowed, you need to pay another
government fee of $200.
• If your application is filed with the “use in Canada”
basis, you will receive certificate of registration.
• If your application is filed with the “proposed use” basis,
you need to file declaration of use—and then you’ll
receive certificate of registration.

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3 Ways to Register Trademarks
1. You can do it yourself
Pros:
•Cheap (if you know
what you’re doing)
Cons:
•Takes time to
learn;
•High likelihood of
rejection;
•No money-back

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2. You can use other law firms or trademark agents
Pros:
•Better chances of
registration;
•A professional
does the work.
Cons:
•Unpredictably
expensive;
•No money-back
guarantee

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3. Trademark Factory®
Pros: Cons:
•Our services are
not free

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Tips and Tricks
1. Do a search of registered trademarks in Canada and U.S.
• Free search on CIPO and USPTO websites
• Free visual search at
http://mincovlaw.com/goodies/trademark_search
2. Let us do the search for you for free:
3. Use Google to determine the uniqueness of your brand.

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Tips and Tricks
4. Use http://namechk.com
5. Register domain names with your brand name
http://domainsbot.com
6. Use the ™ sign next to your unregistered trademarks
7. Consider registering your trademarks!

What Every Small Business Owner Should Know About Trademarks

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