When, Why & How to Protect Your Brand

+1 (778) 869.7281
tm@trademarkfactory.ca
http://trademarkfactory.ca

+1 (778) 869.7281
1. EVERY successful business has them
2. Like fire insurance
3. Would you let your child go to a battlefield
without protection gear and ammo?
The Unbelievable Awesomeness of
Trademarks

+1 (778) 869.7281
What you will learn:
1. What are trademarks and why we need them
2. What cannot be protected as a trademark
3. Trademarks vs. trade names
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. Q&A

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Why listen to me?
Author of The Ultimate
Insider’s Guide to
Intellectual Property.
Copyright & trademarks
lawyer with almost 20 years
of experience.
Provided legal services to clients ranging from one-man startups
to:

+1 (778) 869.7281
Where Can You Get More Info?
1. The Ultimate Insider’s Guide to Intellectual Property:
http://ipbook.ca
2. Series of educational cartoons on trademarks:
http://trademarkfactory.ca/cartoons

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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 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)
2. Non-Traditional Trademarks

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Function of a Trademark
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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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.
What Cannot Be Registered as a Trademark

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1. Generic name of a product or a service
2. Descriptive names
3. Functionality of a product
What Cannot Be Registered as a Trademark

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

+1 (778) 869.7281
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.

+1 (778) 869.7281
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.

+1 (778) 869.7281
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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OR
ask yourself
1 QUESTION

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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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Trademark Factory®
Get your BONUS valued
$1,450+• Mention RTN Webinar;
• Get your FREE trademarkability
opinion;
• Order trademark registration
services before August 1, 2014

If yo u ha v e a ny
q u e s tio ns :
778.869.7281
http://ipbook.ca

When, Why & How to Protect Your Brand

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When, Why & How to Protect Your Brand