bg_image

Understanding the latest changes to Canadian Trademark Law

Posted on by trademarkangel

Updated on May 27, 2019 and on Jan 6, 2024

New trademark law is coming into effect on June 17, 2019

For several years, Canada continued to be among the select few developed countries that were not a signatory to global accords and agreements that enabled businesses to protect their brands by way of international trademark applications. But eventually, Canada took strategic measures for bringing into line its trademark regulations with international conventions followed by the majority of nations. It was in 2014 on 19th June that the Canadian Parliament tabled a bill which incorporated the most important proposed amendments in the nations trademark laws which were originally drawn up while preparing the Trademarks Act, R.S.C. 1985. c.T‐13.

The bill came into effect from 19 June 2014 becoming a law and exactly after three years on 19th June 2017, the government issued draft conventions which when ratified will lead to the de‐facto execution of the changes that were initiated in 2014.

This article is an earnest endeavor to highlight the revisions and adjustments to trademark laws brought about by the Stephen Harper government in 2014 and their short‐term as well as long‐term repercussions on Canadian and non-Canadian business organizations. However, before elaborating on the changes, it won’t be out of place to mention the implications arising out of Canada not adopting the international trademark laws on firms doing business in Canada but not registered in that country. Companies and corporate entities having a branch in Canada but incorporated in some other country were required to hire a local or regional trademark agent who would file applications on their behalf.

Filing a separate trademark (apart from submitting an international trademark application) request in writing was crucial in order to hold onto the uniqueness of a brand and to protect the same from getting duplicated. The antiquated trademark regulations also meant that homegrown companies looking to explore global markets and set up branches in other countries could not benefit from the international conventions. Canadian commercial establishments, intending to do business abroad either had to establish a new factory or branch office or had to submit umpteen trademark applications.

And needless to say, both options were time‐consuming, subject to red tape complications and resulted in a drain of scarce resources. A specific set of professionals and establishments hugely benefited from the isolationist policy followed by Canada‐intellectual property rights lawyers, trademark attorneys and lawyers, and the large law firms. So it was these individuals and institutions that protested most vociferously when Canada decided to merge its trademark stipulations with the global standards as their vested interests were at stake.

While a few of the proposed amendments came into effect almost immediately after the bill was passed in Parliament, the remaining ones were kept in abeyance on the premise that these needed to be molded for easy adoption by those for whom these were meant. The government has backtracked several times on effecting the remaining changes ‐ they were supposed to be in force soon after they were passed. However, with the government introducing some draft legislation, asking the public for their feedback on the same, the changes come could come into effect very soon.

So, let us review the changes in detail:

  1. The most noticeable benefit Canadian and non‐Canadian companies will reap is that they will ultimately be in a position to submit applications internationally hinged on registrations filed in their home countries. Simply put, foreign companies intending to operate in Canada and vice‐versa will no longer have to file separate applications. In other words, once a firm files for trademark registration in its native country, it will just need to submit an international claim based on the original trademark by simply ticking off the countries where it wishes to file a trademark.The global application form can be filled up in any one of the internationally recognized languages and the fees (payable to trademark bureaus) worldwide will be less than filing separate trademarks. Most significantly, the firm will be relieved from the hassle of hiring a local law firm or agent in every country as it legal representative.
  2. In addition, use of the word “use” will be done away with. The trademark application procedure in the days to come will become more simplified as registrations will not anymore be pivoted on the desired use. Nobody will be required to declare or specify use while filing for a trademark. You simply submit your application without having to clarify the dates of the first use in Canada. This modification implies that the onus of safeguarding your brand is on you and not on the government.This is fully justified since you cannot expect the Trademark Office to come to your rescue if you are not concerned about protecting your trademark. Nevertheless, that does not imply you stand to lose control over your brand if some other company or entrepreneur makes it to the Trademark Office before you and files a trademark application. You can oppose registration of their trademark or take the person or establishment to court for claiming that you were the first user of the trademark. In the latter case, it will be a long‐drawn and expensive process which you can conveniently avoid by simply being an early bird and filing your trademark in the first place.
  3. Now, it’ll be a lot easier for companies or individuals to register a trademark for brands that have a distinctive shape on the basis of which these can be differentiated from other similar products. Previously, the rules and regulations pertaining to the filing of trademarks for such products were shrouded in nebulous clauses which made it incredibly difficult for the applicants to comprehend the literature and file such an application.Thankfully, those stipulations have been jettisoned for good and even the terminologies (i.e. distinguishing guise) have been dispensed with. If you own any brand which your existing customers can easily distinguish from other comparable products, then the procedure for submitting a trademark application is simple and easy and devoid of any complicated legalese.
  4. Canada will be adhering to the Nice Classification of Goods and Services. According to this categorization standard, all products and services are sorted into 45 classes ‐ 34 product classes and 11 services classes. Going forward, all applications for trademark registration will first have to specify the product or service class under which the specific brand falls before a trademark application is filed. Canadian legislators were completely at a loss to find a way of aligning the national Canadian trademark law with the international conventions by circumventing this goods and services classification system. Another significant fallout of this specific amendment is the fees or charges you pay to the Canadian government for submitting a trademark application will be determined by the total number of classes under which you are filing. The net effect will be that you will end up paying somewhat more than what you may have to pay right now if you filed your application today. Currently, you make a single payment of CAD 250 to the respective authorities for a trademark registration, regardless of the number of products and/or services your application includes. You also have to pay an extra CAD 200 for the trademark registration fees once your application is allowed. In future, you will not be required to pay the CAD 200 registration fee but you will have to pay CAD 330 for the initial class under which you submit the application and an additional CAD 100 for every extra category or class you seek a trademark for. So, in effect, you stand to save 120 dollars if you file in a single class and 20 dollars if the application is for 2 classes and so on and so forth. You might be saving quite a lot if you file immediately for a brand that branches out into numerous related products or services. If you submit your application in the near future, you’ll need to pay the mandatory CAD250 instead of the CAD330 that is being proposed.As of January 1, 2024 CIPO has further increased all fees. For the first class of goods or services to which the application relates, the fee is C$458.00 and for each additional class of goods or services to which the application relates as of the filing date is C$139.00. Renewal fees are now C$555.00 for the 1st class and C$173 for each additional class.
  5. Divisional or sectioned applications will be accepted and processed. This will make it easier for businesses to proceed with a part of the trademark application, which was non‐problematic by dividing the application into two parts while keeping the problematic part of the application separate. So it will be possible to divide a single application into two separate applications.
  6. The renewal period will come down to 10 years from 15 years. This alteration is again an inducement for businesses and entrepreneurs who are yet to file an application for a trademark as the anticipated shortening of the registration term period might propel them to rush to the trademark office. This reduction should not be viewed as something that is going to adversely affect your business.
  7. Some changes are proposed to the deadlines and order of opposition proceedings. The rules on onus will make it more difficult for opponents to show entitlement, because use information will no longer be part of the filing information, and because it is likely going to be very difficult to show a lack of intent to use a mark. It’s likely we’ll sees many more oppositions going forward.
  8. Some changes will be made to procedure and timing in the cancellation proceedings. The elimination of the use requirement will result in many marks on the Register that are not used at all, or not used for some of the products or services. So as result there will likely be more challenges for non‐use.
  9. Canadian Intellectual Property Office will start examining trademarks for distinctiveness and may be able to request proof of distinctiveness. This new examination may make registration of non-traditional trademarks more difficult.
  10. During the assignment or merger process it will no longer be necessary to submit documentary proof unless the Trademarks Office asks for it.

To say last but not the least, Canada should have, long ago, scrapped the archaic and outdated official marks popularly known as superpower marks awarded to higher education establishments and almost all public bodies. Unfortunately, this is not going to happen (at least not for now). These superpower marks override the normal trademarks and enclose in its sweep an extensive range of products and services (all of them, to be precise). Such official marks are not subject to the regular terms and conditions guiding general trademarks and never expire.

Closing up, it would not be out of place to suggest that if you are a business owner who has a brand that is not yet registered with the Trademarks Office then it is high time you should have filed a trademark application. In fact, the best time to submit a trademark registration is now.

Steps To Follow When Starting Your Online Business

Posted on by trademarkangel

You’ve grown weary of attending to your 9‑to‑5 job as you do not foresee any prospects of career progression. You are very keen to go it alone by starting your online venture as you have seen many of your colleagues and friends strike gold by following that route. However, you have absolutely no idea on how to get started.

Since the time Internet emerged, online technology has progressed by leaps and bounds (and still continues to), rendering the process of incorporating a web‑based startup, remarkably easy. Nowadays, corporate organizations, as well as big and small brick‑andmortar businesses, need to have an online presence (read website) in order to be viable and competitive. Regardless of whether you want to turn your online venture into your chief source of livelihood or wish to develop the Online Business business as a secondary source of income, you can achieve success if you follow specific steps. 

A typical web‑based online business has some inherent advantages over an offline or physical commercial establishment that makes the former more lucrative than the latter. For instance, your incorporation and overheads costs are lower, you can make do with less staff at least in the initial years, and overseeing the entire setup is more manageable. Abide by the steps outlined below if you are sincere about beginning your online undertaking, increasing its visibility across the web, attracting niche traffic, and raking in the moolah which is what ultimately matters.

1. Company formation and registration with IRS/Canadian Revenue Agency

The entire process of registering and incorporating a new online business has become much easier in the present times. You do not have to fill up endless forms and documents, make endless visits to the respective authorities for submitting the transcripts, pay a small fortune as registration fees, and finally wait for the approval‑these formalities used to be de rigueur in the past. Though you can hire an accountant or solicitor for entrusting them with the formalities of opening an online startup, you can also do the work of the consultant yourself as the rules and regulations are easy to follow.

First of all, you’ll need to decide whether you want to opt for a partnership or sole proprietorship mode or wish to fulfill the obligations of a public or private limited company. Each and every form of business has its own advantages and disadvantages. At the end of the day, it is completely up to you to decide which route you will take depending on your preferences and requirements.                      

Once you are through with the first step, your next task will be to decide upon a company name. Make sure the name is something that has a good recall value. In other words, it should be one that you or anybody else for that matter can easily remember.

Thereafter, you will have to accumulate all the details required for registration including company name, business address, and nature of the online business, share capital details, shareholder(s) details, and company director details. The next step would be to prepare the Memorandum and Articles of Association (a must if the venture is a public limited or private limited company). Thereafter, you’ll have to register your business with the IRS for which you will have to log in to its official site www.irs.gov.

You will receive an online business registration number for the state you are based in. Once you click on the link for your respective state, you’ll be taken to the portal of the state from the IRS site. You get a registration number for your state and if you want you can also a federal EIN (Employer Identification Number).                         

In order to obtain both the numbers, just follow the steps listed below: 

  1. Click on your state’s link
  2. Furnish the relevant information as outlined in the application form for your state
  3. Thereafter, you will be landing at the IRS’s online application page for EIN registration
  4. Give additional info (if required) to apply for your EIN number
  5. Once you receive your EIN, check out of the IRS site
  6. Key in your EIN number in the application form for your state

In case you are a Canadian citizen (naturalized or residency), you’ll have to register your company with the Canadian Revenue Agency. There are four distinct CRA program accounts and you will have to apply to anyone for registering your startup by fulfilling BRO (online business registration) formalities. Once you are through, you’ll receive a business number which will lend a legal sanction to your venture. 

BRO can connect you with the sites of provincial programs for Nova Scotia, Ontario, and British Columbia. Log in at www.canada.ca for taking advantage of the BRO for registering your startup as a: 

  • Proprietor or owner
  • Third party petitioner
  • RepID or GroupID representative
  • Domestic worker, caregiver or babysitter employer 

2. Picking up a domain name and registering it

Once you decide on the commercial segment you wish to enter and are through with the company’s incorporation, your next response would be to register record your online firm’s domain name. Your sites URL (uniform resource locator) is its domain name which is unique as no other site owner can stake claim to the web address once you have registered it. Registering or recording the domain name of your web‑based venture is similar to patenting an offline business‑you become the sole owner of the online platform and enjoy specific intellectual property rights. 

You can apply for a domain from any of the several firms dealing with online domain registration. Many of these firms that are termed as domain name registrars run promotional offers from time to time that let you have a domain or several domains free of cost if and when you opt for a web hosting package. It is also recommended that one should avoid purchasing a domain from the hosting provider. It is better to have the hosting and domain account separated. However, always make sure that the domain or web address is registered under your name and not in the name of the registering company. 

If the domain is not registered under your name, you may not be able to lay claim to it in case you shift to another hosting firm in future. Alternatively, if you are entrusting the creation of your site to a professional web designer and developer, ensure that you buy out the sites domain and the hosting account. Much before you register the domain, you’ll need to select a title or name for the same. 

See to it that the domain name you eventually choose is unique and distinctive or in other words, no other site should have the same name. You can opt for your name if you wish to lend a personal touch to the product or service you would be promoting. However, if you find that somebody else already owns a domain by that name, you can tweak the name a bit by prefixing or suffixing another word, for instance, simongarfunkeltrainer.com in place of simongarfunkel.com 

Your other option, when it comes to choosing an exclusive domain name, is to base it on the purpose that the product or service is going to serve. A domain name that mirrors your online business niche will go a long way in attracting the customer segment you are targeting.

3. Website hosting

Once your web‑based startups’ domain name has been registered, you will have to book space on the servers of the hosting firm in order to host your e‑commerce site. Though many individuals register the domain with one firm and books server space with another, you are better off entrusting the tasks to one company. That way, you’ll be able to keep a leash on your overall costs as many firms offer free domain names when you subscribe to their web hosting packages. 

Before you select a hosting firm, check out the background of at least 4‑5 such companies. Also, compare and contrast the different hosting features they are offering like uptime scalability percentage, disk storage capacity, drag and drop site builder, subscription periods, optimization for email, and so on. Alternatively, find out if the firms are providing SSL security, e‑commerce and online marketing tools, feedback forms, and most importantly, round‑the‑clock customer support. 

There are many well‑established companies that provide a high quality of service with respect to website hosting like GoDaddy.com, Bluehost.com, JustHost.com, iPage.com, and WebHostingHub.com. Cloud servers or hosting has recently been popular for their security and ease of use. So exploring the hosting services provided by Linode or Cloudflare can be one of those options. Cloudflare also offers a free SSL certificate with each hosting account. 

4. Filing Your Trademark

Applying for a trademark should be your next step. Registering the brand’s trademark is essential not only because you invested so much time, effort, and resources to conceive a distinctive name, logo, and slogans but also to protect it from infringement by competitors.

If most of your business is done in the US, then protect your brand name in the US by registering your trademark with the US Patent and Trademark Office (PTO). 

If most of your customers are in Canada, start with registering your trademark in Canada. 

You can file your trademark yourself or ask for help. Hiring a trademark professional will help you to increase the chances of successfully registering your trademark while minimizing the stress. 

Remember: trademark registration is the cheapest form of protection you can get for your brand. 

5. Check to make sure you are not infringing on anyone’s intellectual property rights

If you are about to sell products, make sure that you are not infringing on anyone’s patent rights. Likewise, for literary, musical and artistic works, it’s useful to make sure that there is no copyright infringement.  If you are the creator, then you will own copyright, however, if not, make sure you have rights to sell these products.   With a name you give to your products, check to make sure you are not infringing on anyone’s trademark.

Very often people overlook intellectual property aspect of opening a business, which can cost them dearly.

6. Website design and development 

After your website has been hosted, your next response would be to design and develop the online business website that will be the firm’s online face. You can either build the portal yourself or outsource the project to a webmaster. In case you take the DIY route, you can take advantage of the multiple design and development tools (that are provided by numerous hosting companies free of cost) for creating your portal. 

There are many open‑sourced website building and blogging CMS platforms including but not limited to WordPress, Joomla, Drupal, and Magento that you can employ as well. WordPress is by far, the most popular CMS platform as it is not only remarkably easy to set up but also offers near unlimited templates that are compatible with customization as per your preference. You can also employ Adobes Dreamweaver for website creation but then you will have to be mentally prepared to devote the time necessary for mastering this tool which might take months. 

However, outsourcing the website design and development project to a professional design company or webmaster will ensure that you have an advanced as well as the user‑friendly portal. With so many design companies competing with each other for clients, you can get the job done without having to spend a ton. And if you can get your site designed and developed by a learner, a college student, for instance, you may have to pay even less.

While you get your site developed, bear in mind that both the visual and textual content of the portal equally matter. Also take note that if you entrust the project to a designer, you automatically own the sites hosting account as well as its domain name. Also before launching a website, it is a good idea to know where exactly its files are located. For easier management and understanding, WordPress is the best platform to build your site on. It is pretty easy to manage and make changes. Hence, it will be a lot easier for you to make new blog posts, change prices, add photos or changing sections without even asking a developer to take care of those. 

7. Promoting your site via online advertising and by hiring freelancer

Following the hosting of your online business website on the net, your main thrust obviously will be to amplify its visibility across all online platforms, including the automated social networking sites. Formulating an SEO strategy would be indispensable if you want to divert a high volume of traffic to your site. Search engine optimization would imply creating original textual content that elucidates the nature of your business and should be punctuated with relevant keywords that will be preferred by search engines crawler bots. 

SEO would also require you to take care of lots of other aspects including but not limited to uploading fresh blogs, PRs, guest blogs, creating profiles on Facebook, Twitter, Instagram, and LinkedIn, podcasting, advertising on Google, Bing, and Yahoo. A robust SEO plan will be instrumental in popularizing your site in a short period of time since it will be wishful thinking to expect users to log in to your site within a few days of its hosting. 

The focus should be on content marketing with the ultimate objective of publicizing the portal on social media. As you may not be in a position to invest in Google PPC of Facebook advertisements initially, you can hire freelance content writers. Another good strategy is to get popular bloggers write positive reviews in exchange for a free product or tickets to a movie. There are lots of online platforms where you can hire great freelancers at a fraction of the cost.

Online Business Conclusion: 

Once your Online Business business portal is up and running i.e. it has been hosted, there are several steps you can take to amply its footprints in the online realm. For instance, you can titillate users with a white paper imprinted with rebate coupon codes, freebies on purchasing a specific value of products, and so on. You can keep track of your site’s performance and growth by using analyzing tools like Google Analytics which is available for free. 

To say the last but not the least, you’ll have to give due consideration to aspects of taxation, accounting, legal matters, and banking.

When should I not file a trademark?

Posted on by trademarkangel

This may seem like an odd question to ask, but it’s a good one to consider when beginning your journey into a trademark registration territory. Trademark Angel is here to help guide the way!

So, you shouldn’t file you are a trademark if:

  1. You haven’t searched the availability of the mark first

Filing without searching can be a surefire way to get into trouble. It’s like driving down a highway without any headlights. It’s often the case that you’ll make it all the way to the USPTO examiner (a potentially lengthy process all on its own) before he or she cites a prior registration as an obstacle to your own registration goals. What a waste of your business’ time!

In fact, even if your application makes it all the way to official registration. Third parties still have another five years to petition for cancellation based upon prior use. This is why it’s always better to search the availability and potential success of your proposed trademark before beginning the process of registration.

While an initial trademark search may be done on the USPTO website. It’s a good idea to consult with a trademark professional before looking into the use of a potential logo.

  1. Filing may prompt an unwarranted objection

You may not know this, but trademark applications are a matter of public record.

This means that many sophisticated trademark owners hire “watching services” to keep an eye out for any new trademark filings that infringe upon their own trademarks!

Sometimes, it’s best to fly under the radar; not filing a trademark won’t give you the same benefits as official registration. But it does allow you to keep some of the bigger businesses off your back!

  1. The mark is too descriptive, generic or scandalous

Remember: the Trademarks Office may refuse registration of a mark that merely describes an ingredient, quality, characteristic, function, feature, purpose or use of your particular goods and/or services. A seasoned brand lawyer will be able to help with this: they can often point out when a mark might be flagged as too descriptive or generic, and prompt you to come up with something more distinctive.

Example of a descriptive trademark: SUPER GROW within the fertilizer market.

Exception to the rule: Descriptive trademarks may be registered after a period of extensive use. A good example is BEST BUY.

It’s also important to note that, in the US, descriptive marks can be registered on the Supplemental Register if they are already in use (and can be proven as such) in a US-centric marketplace.

On the other hand, scandalous or deceptive marks can likewise be flagged, in which case a trademark lawyer could point out the respective issues and assist you in coming up with something more registrable.

Example of a deceptive trademark: ALL BRAN for cereal that does not contain any bran.

Examples of scandalous trademarks: DICK HEAD for restaurant services; JACK-OFF for adult entertainment.

  1. The anticipated lifespan of the mark is short lived

You should know that the earliest that one can expect a registration to be officially issued is about six months after a successful filing. This does not take into account any potential objections to the registration, or whether or not the proposed label is already in use. Either of these variables can mean a considerably longer registration time than anticipated.

This means that, if the intended use of the mark is limited in duration, there may not be much value in spending the resources to file an application. Although registration provides many important benefits, the trademark owner may simply rely on “common law rights” which come from using the mark in the sale or provision of goods or services.

  1. The trademark owner already owns a similar registration

It is not necessary to register a mark for everything under the sun. In the U.S., the “related goods” doctrine often protects goods and services that are closely related to current trademarks by the same company.

For example, if an owner has a trademark for t-shirts. It may not be worth filing a new application to register that same mark for sweatshirts or hooded shirts. In fact, if a third party started selling sweatshirts under the same mark, it would likely be considered trademark infringement; consumers would realistically expect the goods to come from the same source!

There are many other instances in which applying for trademark registration may not be necessary or advisable.

However, registering a brand is often the most prudent way to maximize brand value and minimize risk conflict, especially with competing businesses. In these cases, a trademark professional can provide you with the pros and cons of your particular trademarking goals. Which means you get to spend less time worrying about trademark registration and more time running your business.

Trademark Angel is here to help.

Please feel free to contact us, no obligation. With any questions about the possibility of logo registration for you and your growing business!

Why conduct a trademark search?

Posted on by trademarkangel

Conduct trademark search is one of the most important and overlooked aspects of the trademark registration process. The purpose of a trademark search is to check if the brand you selected is available for use and registration.

Without a proper search, another company may prevent you from using the mark you selected if such use will create trademark confusion in the marketplace.

Let’s suppose you come up with a great name for your new product, gluten-free noodles that you will sell online, and your Google search results didn’t find any exact matches. You check Facebook and Twitter and your name is available there.

As a next step, you make plans to move forward with the selected name and your new product line. You buy a domain name and order a logo. You hire a developer who creates a cool website. You go ahead and order ingredients, packaging, equipment, advertising materials and start the production phase. To boost sales and make your brand more visible online, you invest in SEO.

You are all set, right? No! You haven’t done a proper trademark search to check if the use of the name you selected conflicts with a mark already used or registered by others.

Then one day, out of the blue, you receive a cease and desist letter demanding that you stop using the name that apparently another company is already using and has registered with the Trademarks Office. The letter you receive states that your continued use of THEIR name constitutes trademark infringement and unfair competition.

This company demands that you immediately stop using the name in which you have already invested a ton of money, time, energy and resources. But how can you stop using it now? A website alone cost you a couple of thousands of dollars. I am not talking about all the noodles that have already been produced and waiting its turn to be sold.  The letter threatens with legal action if you don’t comply within 10 days of receipt. In addition, you can be liable for attorney’s fees and damages for using someone else’s trademark.

You have a tough decision to make: ignore and potentially face a legal action or re-brand!

So, instead of this major mega-headache and inevitable re-branding, wouldn’t it have been better to conduct trademark search, right from the beginning?

A professionally done trademark search will

  • Prevent you from spending resources and money on a mark that may not be available
  • Provide you with time and flexibility to modify your mark before you launch your product or service
  • Help you avoid the costly business disruption associated with a forced rebranding if you adopt a name that’s not available
  • Help you avoid the costs of litigating a dispute
  • Help you sleep soundly at night knowing the name you selected is yours
  • Provide you with insight on how to deal with a mark that may potentially be problematic

Most trademark agencies and law firms will charge you for a trademark search. Not Trademark Angel. We will do it absolutely free and there is no obligation to buy.

Get your trademark search without a fuss,

With no obligation, free – on us!

What Every Business Should Know about Trademarks Registration?

Posted on by trademarkangel

When small businesses talk about intellectual property, it’s always one of their highest priorities. In fact, a growing business’ intellectual property (including things like trademarks registration, copyrights, and patents) is what separates continued long-term expansion from early floundering and regrettable plateaus in growth that could have been avoided.

If you’re unfamiliar with intellectual property or unsure of what composes intellectual property, take a look below at some of the questions we’ve gone ahead and answered for you.

1) What’s the Difference Between Copyrights, Trademarks, and Patents?

This is a common question, but luckily it has a simple answer! Copyright protects creative pieces that most often take the form of literature, music, songs, or visual art. Patents are used to protect new processes, inventions or even improvements to design. A trademark protects a product or service name, a company logo, or a tagline (slogan).

2) What Are Trademark Rights?

The official registration of a trademark is an important way to increase and extend trademarks registration rights, but registration is not always necessary. In fact, trademark rights are maintained through the continued use of the trademark itself in your products or services.

3) Can I Register a Trademark for Every Product and/or Service that My Business Offers?

You’re able to obtain registration for any specific goods and/or services that are integral to your business (and that are listed in your application!).  But take note: the more products or services you want to cover, the more you’ll pay in application filing fees.

4) Why Do I Need My Trademarks registration?

Even though you may have the name of your brand or business on a public website or storefront does not mean that it is fully protected by trademark law. In order to get full protection, you’ll need to register your trademark with the United States Patent and Trademark Office (USPTO) or the Canadian Trademarks Registration Office or the Trademarks Office in your jurisdiction. Having a registered trademark will make it much easier to enforce trademark rights, pursue any infringers, and take them to federal court for the unauthorized use of your trademark.

5) My Business Name is Incorporated; Do I Still Need a Trademark?

Unfortunately, simply incorporating or registering a corporate name does not create any trademark rights, nor does it constitute any type of government approval for you to use the name as a trademark.

6) I Have a Domain Name; Do I Still Need a Trademark?

Unless you are using the domain name as a trademark (a source indicator) on your website, merely registering it as a domain name does not by itself create trademark rights.

7) What Happens if I Stop Using My Trademark?

In many jurisdictions, including Canada and the US, trademark rights are maintained through the continued use of the trademark. This means that, if a company stops using, abandons or neglects a trademark, a court may find that it has abandoned its rights. Then, other companies would be free to adopt and use the mark as their own. In fact, in the US, you must file mandatory post-registration documents to prove that the products and services listed in your registration have remained in use.

8) Can I File a Trademark Application Just to Preserve a Name or Motto? Can I Just Protect my Company Brand?

Unfortunately, you cannot register a trademark if you have no intention of using it; it doesn’t work if your goal is to just “keep people away from it” or “make it yours”.

Also, you always have to list specific products for your trademark even if you are protecting your “company brand”. A trademark (no matter what kind of kind of trademark it is) is always filed for specific products. You simply cannot file a trademark without listing the specific products or services that are sold or will be sold under this name.

9) Is it True that Trademarks are Territorial?

Yes. You’ll have to register your trademark with the trademark office in every country where you want trademark protection. Just because you registered in Canada does not mean that you are going to be protected in the United States, and vice versa.

10) Should I Save on Professional Fees and File my Trademark Myself?

Not a good idea. While it’s possible to file yourself, working alongside a trademark professional will ensure that all the necessary steps are taken care of, which will help minimize costly registration mistakes and possibly speed up the registration process.

11) I Found Such a Cool Name that Clearly Describes my Products!

Be careful; remember that the more closely your new trademark merely describes the product, its functions, or its features, the more likely you’ll have problems registering it.  You are always better off picking a name that is not merely descriptive.

12) So When Can I Use Trademark Symbols?

It depends on where you’re located. In Canada, there are no marking requirements to prevent you from using the trademark symbol. However, it’s always a good idea to use them when you do have ownership of said trademarks. In the US, however, you may not use the ® symbol with a trademark until that trademark is officially registered (not just filed).

13) If you are an Amazon Seller, Registering your Trademark is Very Important!

If you are a private label seller on Amazon, registering your trademark is extremely important as registration will allow you to get into Amazon Brand Registry 2 to have full control over your products and services!

We understand that this can be a lot of information to take in when it comes intellectual property, trademarks registration, and trademark protection! If you have any other questions about the trademarking processor if you’d just like to talk with a trademark expert about your plans for registration—please feel to give Trademark Angel a call and say hello! We are happy to assist with any step of the trademarking process to support you and your expanding business.

Principal or Supplemental Register for your trademark?

Posted on by trademarkangel

Descriptive trademarks: The United States Trademark Act, also known as the Lanham Act, allows you to register your marks with the United States Patent and Trademark Office (USPTO). Unfortunately, many people don’t know is that there are two avenues through which you can register your trademark: the Principal Register, and the lesser known Supplemental Register.

Before we go into these avenues, it’s important to understand how trademarks are identified, and thus the different kind of trademarks that you may own. Only then will these avenues of trademark registration make sense.

First things first: A trademark (a logo, word, slogan that identifies your company, product or service) can only be registered as a trademark if it’s proven to be distinctive. A distinctive trademark is one that consists of unique, invented or suggestive words that help to distinguish your company from the marketplace. In contrast to this is the descriptive trademark, which is typically used to describe or name the characteristics/qualities of the services being offered. In other words, descriptive trademarks simply describe the goods or services for which the mark is used.

Why does this matter? Owning a descriptive trademark precludes you from using the Principal Register during trademarking, and instead potentially funnels you into the Supplemental Register. What does that mean? Well, there are certain compromises that you’ll have to face using the Supplemental Register. Does that mean you shouldn’t use this avenue? Of course not! But it’s important to note what the Principal Register offers before deciding whether the Supplemental Register is the right one for you.

The Principal Register is used for distinctive trademarks, and it usually offers more thorough legal protection and reparation from trademarking-related damages. Registration on the Principal Register has many benefits, including:

  • providing the registrant with prima facie evidence of ownership of the mark
  • the legal presumption of a mark’s validity, and
  • acknowledgment of a mark’s exclusive and continuous use

A mark can be distinctive right from the beginning, or it can become distinctive through extensive use. A good example of a mark that started out descriptive, but turned distinctive, is that of the electronics giant Best Buy®.

A descriptive trademark can become distinctive if it attains what is called a “secondary meaning”; in other words, the public begins to associate the descriptive trademark not with the particular qualities or types of products or services being offered, but with the business/producer itself. How is this achieved? Typically, through large amounts of publicity, nationwide and/or influential sales, or long-term use. Case-in-point: “Best Buy” evolved from merely a catchy description of an electronics store and its services and, due to rapid growth and national marketing campaigns, soon became synonymous with the business itself. When people heard the term “Best Buy”, they knew what company it was addressing. This is precisely what turns a descriptive trademark into a distinctive one.

You might be thinking that having a descriptive trademark alone is not going to be good enough for you and your business, especially if changing the name is not an option. But how am I supposed to make myself as big as Best Buy® without having a trademark?!

The good news is that the Supplemental Register (used for descriptive trademarks) can be a vital alternative if registration on the Principal Register is a failure. For example, you might attempt to file your trademark on the Principal Register, but learn that your trademark is not distinctive enough to qualify for such registration. If you get a response that your potential trademark is “merely descriptive” and thus refused, it may be possible to move the application over to the Supplemental Register. And if you can, you should!

The Supplemental Register does not cover the same legal bases of the Principal Register, but it is capable of legally distinguishing your business’ goods and services and offering you protection.

Examples of descriptive trademarks that haven’t reached the level of a distinctive trademark include the names of new magazines, which are often merely a description of the magazine’s contents/prospective audience.

A few examples of magazines on the  Supplemental Register are BOY STYLE MAGAZINE, an online magazine for boys fashion; MARIJUANA BUSINESS MAGAZINE, a publication within the field of the cannabis industry; and PALEO MAGAZINE – a magazine within the field of health, nutrition, and diet.

These magazines experience a number of benefits that come with Supplemental Registration:

  • The mark will appear in trademark searches and thus prevent registration of similar marks either on Principal or Supplemental Registers
  • Registrants can use the ® symbol once the mark is registered
  • A mark on the Supplemental Register may still be used for writing cease-and-desist letters
  • A mark under the Supplemental Register can assist in achieving registration in foreign countries (under the Paris Convention)
  • It can be used to prove exclusive use for a period of five years, upon which it may then qualify for Principal Registration
  • The marks on the Supplemental Register are not open for third-party oppositions, so these marks cannot be opposed like their counterparts on the Principal Register

The goal for these magazines, through their sales and circulation, is to reach the status of being able to be registered on the Principal Register once their brands reach an acquired distinctiveness (like Best Buy®). However, there are still many benefits of having a trademark on the Supplemental Register.

It’s important to note what a trademark on the Supplemental Register cannot do (in contrast to a trademark on the Principal Register) so that you know what benefits you may experience when qualifying for the latter avenue.

  • A trademark on the Supplemental Register doesn’t convey the presumptions of ownership, validity and exclusive rights to use the trademark, and so must be proved when in court.
  • A registration on the Supplemental Register cannot be used to stop the importation of counterfeit products.
  • A registration on the Supplemental Registration cannot become incontestable after registration, no matter how long it stays in use. This is unlike a registration on the Principal Register, which is eligible to become incontestable after 5 years of continuous use.
  • Having a registration on the Supplemental Register does not preclude you from pursuing accusations of trademark infringement in federal court; it’s merely more difficult to do so, as you must prove that your mark has acquired a distinctive (or secondary) meaning for the court to take your suit seriously.
  • A registration on the Supplemental Register will not get you in the Amazon Brand Registry.

Furthermore, it’s important to note that, while you can file a trademark on the Principal Register on the basis of future use (i.e. intent-to-use) a trademark may only be filed or transferred to the Supplemental Register if it’s already in use in the US.

In conclusion, the avenue of the Principal Register provides you with the strongest trademark in legal terms. It’s common, though, for a new or unknown trademark that is descriptive to not qualify for this status, which is when you might consider the avenue of the Supplemental Register, which still offers you adequate legal protection.

You might apply for registration on the Principal Register and then upon failure amend your application for registration on the Supplemental Register. If you already know that your mark is descriptive, then you can also file directly on the Supplemental Register, although most applicants prefer to file on the Principal Register and then only amend if prompted to do so by an examining attorney. Either way, it’s helpful to know what avenues are available to you and your growing business.

Principal or Supplemental Trademark

Trademark Angel is here to help you decide what path is best for you and your trademark and to walk along that path to successful registration alongside you. Whether it’s trademark registration on the Principal Register or Supplemental Register, Trademark Angel has the experience and the expertise to get your company protected, trademarked, and on the path to sustained growth.

P.S. If you would like to know how to choose or select a great trademark for your business watch this quick video.

Should I file my different trademarks separately?

Posted on by trademarkangel

Let’s say you have three different trademarks to register: your company name, your company logo, and your flagship product name. Since each trademark registration requires a separate application fee, this means you’ll need to pay this fee three times to get your company fully trademarked. This also doesn’t take into account your attorney’s or trademark agent’s legal fees. Sounds like a pain!

So, a trademark attorney that you’ve hired suggests that you combine filings. After all, if your company logo and company name always appear together, why not simply file them together as one trademark to save both time and money?

Do not let this shortcut tempt you. Combining filings like this might seem to make a lot of sense, but the complications that arise will only cost you in the long run.

The “combined” trademark can’t be separated

If you decided to combine filings, and the USPTO approves your registration, then you now own a trademark that can no longer be separated into its composite parts. If you combine your company name and company logo into one trademark, that means you can no longer display the company name by itself, or the company logo by itself, and be protected by trademark law. In short, you own trademark rights to the combined image (because that is how the USPTO approves it), but not to its individual components. That can mean a lot of headaches down the road if you ever plan on evolving or changing your company brand.

It may not be an issue now, but it can turn into one

Companies regularly change logos. It’s a sign to the public that the company is evolving, changing, and progressing with consumer needs. More so, design motifs and style often change over time, as well. Who knows if your logo is going to look antiquated and backward in ten years’ time?

So, after a few successful years, you think to update your company logo. You decide that having the product name visible along with the logo is no longer important (perhaps your company logo has grown ubiquitous!). But stop—you don’t actually own the trademark to your product logo. You own the trademark to the combined image of product name and logo, but because you filed them together, they cannot be separated and viewed while still retaining trademark status; that’s not the way trademark registration works, unfortunately.

What you would need to do: file one trademark to protect your product name, and then file yet another for the updated logo (since there is no trademark on the logo itself!). You combined filings to make things easier, not more difficult!

A real-world example: Many companies incorporate their names into the design of the logos themselves, like PepsiCo. Do you think that PepsiCo only registered the Pepsi logo as it appears on their soda cans? Of course not.  PepsiCo owns the rights to all iterations of the Pepsi logo, as well as the word “Pepsi” itself and the phrase “Pepsi Cola”. If they had decided to file the “Pepsi” name and Pepsi logo as one unique trademark, their ability to police the use of these iterations (in both name and logo) would be greatly limited. (In fact as of the writing date, PepsiCo owns 544 trademarks!)

Just a sample of PepsiCo trademarks:

  1. PEPSI – simple word mark, which protects the actual text.

2.cheap lawyer– stylized mark. Protects the text in its stylized form.

 

3.amazon ip accelerator– logo without words.

4. amazon ip accelerator– combined logo (in most cases, it’s not necessary to file a combined logo separately if a word mark and logo are registered)

If  marks 1 and 3 are filed, trademark 4 is not necessary unless you have a deep pocket. Stylized form trademark only make sense if your font is really unique (if not, skip it).

In short, combining trademark applications might save money in the short term, and it might even get around any problems that your separate trademarks (company name or company logo) are facing to get approved.

However, combining these elements together binds you over time—you are now limited in how you can use your logo and company or product name, and you’ll need to re-file for a new trademark registration if you ever decide to change something like your company logo. Don’t get strung up by these issues that can be avoided from the very start!

However, you might be encouraged to combine trademark filings if the following is true:

  • One of your trademarks can’t be registered by itself due to competing trademarks, or
  • Your trademark is descriptive and thus cannot be registered by itself

If these exceptions don’t apply to you, then save the stress of trademarking complications by ensuring you file your trademarks separately!

Trademark Angel is here to see your company from its exciting beginnings into a thriving and internationally-recognized entity. Partnering with us means partnering with trademark experts who are committed to your success for the long years ahead.

Book your FREE NO-OBLIGATION phone call or ask for a free no-obligation trademark search.

Differences between Canadian and US trademarks

Posted on by trademarkangel

Updated Dec 30, 2024

Generally, the US and Canada trademarks have similar trademark application requirements. Nevertheless, some differences exist between the two.

1. Extra filing fees for goods (products) or services in two or more classes

In the US, all goods and services are classified (divided) into 45 distinct classes.  The filing fees in the US depend on the number of selected “classes” of goods or services in the trademark application. There is no discount on government fees regardless of the number of classes.

On the other hand, in Canada, the government fees are discounted from the 2nd class, so the full fee is only paid for the 1st class of goods or services.

2. Registration of trademarks

Canada and the US have separate trademark registration systems. A trademark which is registrable in the US may not be registrable in the Canada, and vice versa.

3. Change of filing basis

In the US, applications can be filed on the “use” basis or “intent to use” basis.

In the US, an applicant can file a trademark application based on “intent to use” if he/she has not sold any products in the US yet. He/she can later change the filing basis to “use.”

In July 2019 Canada got rid of the bases so now when an application is filed, there is no filing basis. Use is still important but right now there is no way of knowing if a mark is in use or not when it’s filed.

4. Non-traditional marks

Canada recently started accepting applications for non-traditional types of trademarks.

The United States has been more open in registering non-traditional trademarks. In the United States, sound trademarks have been registered for over 60 years, and other non-traditional marks like motions, scents, textures and holograms have been registered.

5. Principal and Supplemental registers

A single trademark register (place where trademarks can be registered) is used in Canada.

In the US Federal law, both Principal and Supplemental registers are present. The Supplemental Register simply provides limited protection for trademarks which are not registrable on the Principal Register.

Trademarks which only describe the goods or services of the applicant are ineligible for registration on the Principal Register, but such marks may be eligible for registration on the Supplemental Register. If a mark is registered on the Supplemental Register, the trademark owner can use the trademark together with the ® symbol, and the trademark will be cited by the United States Patent and Trademark Office against any pending applications.

6. Evidence of Use

For US trademark applications filed on an “intent to use” basis, a mandatory Statement of Use must be filed before a trademark is registered. Generally, an applicant get 6 months to file Statement of use after the trademark has been allowed. Up to 5 6-month extensions of time may be obtained.

7. Post registration maintenance

Both in Canada and the US, the renewal period is every 10 years.

However, in the US, there is an extra step: a mandatory post-registration Declaration of Use must be filed between the 5th and the 6th year after registration in order to maintain the trademark. At the time registrant, once again, must prove use of the trademark in order to maintain it.

8. Use of the ® Symbol

Trademark owners are not required to use the ® Symbol in the United States and Canada.

In the US, the ® symbol can only be used with a registered trademark.

9. Opposition period

The opposition period is two months in Canada.

In the US it’s only 30 days after a trademark has been advertised for opposition purposes.

10. Time from filing to registration

It takes on average of 9-11 months after filing to achieve registration in the US.

In Canada, it takes much longer: currently it takes 36 months or even more from filing to registration.

11. Extensions of time

In the US, the number of extensions you can get is strictly regulated. One cannot get an extension of time to respond to an office action and five extensions of time are available once a trademark is allowed.

Canadian Trademarks Office is more lenient when it comes to asking for an extension of time.

11. Official trademarks

“Official marks” are available in Canada only. These are special marks used by governments, public authorities, Royalty, and universities. Official trademarks include the Red Cross, Olympic rings, the Royal Arms and the national flags of most countries.

The US does not have official marks.

Conclusion:

Although the US and Canadian trademark law have some similarities, there are still differences between the two countries’ law.

Knowing the similarities and differences between Canadian and American trademark laws can assist brand owners ineffective trademark portfolio management in both countries.

Trademark Angel can help you determine which trademarks need to be protected and in which jurisdictions. You can contact us today for a free trademark consultation. We are here to help you with your trademark issues.

What is a trademark?

Posted on by trademarkangel

A trademark is a unique identifier, which can be a word, symbol, logo, tagline, or a combination of these, used in connection with products or services. Trademarks can also take unconventional forms such as smells, textures, sounds, or even specific colors. However, in today’s commercial landscape, the majority of trademarks are word marks, logos (symbols), or taglines (slogans).

The primary purpose of a trademark is to distinguish the goods or services of one individual or business from those of others in the marketplace. In essence, a trademark serves as the identity of your product or service, often referred to as a “brand” in business contexts. By providing a unique identifier, a trademark ensures that consumers can easily recognize and trust your offerings, setting them apart from competitors.

Additionally, trademarks play a critical role in safeguarding your brand and business. They prevent other individuals or companies from offering products or services that are confusingly similar to yours, thereby protecting your brand’s integrity and consumer trust. This legal protection ensures that your reputation and the goodwill associated with your brand remain intact.

A trademark also embodies the reputation of its owner. It represents the quality, reliability, and value that customers have come to expect from a specific provider. In this sense, it is not just a symbol or a word; it is a promise of consistency and excellence.

It’s essential to understand that owning a trademark doesn’t grant an absolute monopoly over a word, symbol, or phrase in all contexts. Instead, it provides exclusive rights over the association or “mental link” between that identifier and the goods or services you provide. This distinction is critical in ensuring fair competition while protecting intellectual property.

Think of a trademark as a shortcut for consumers, guiding them to the products or services they seek without confusion. It acts like a lighthouse, helping customers navigate through a sea of options and directing them toward the brand they know and trust.

Ultimately, a trademark is more than just a legal tool—it is a vital element of brand identity, consumer trust, and market differentiation.

If you would like to know whether you have a trademark  and whether your trademark is registrable, please contact us!