Small Business Week: Making sense of trademarks – what, when, why and how

You cannot register as a trademark the common name of the product or the service itself. For example, you cannot register “apple” in association with ...

Unlike large companies that can drown their competition with advertising dollars, small and midsize businesses only have a fighting chance of success if they can convince the market that there is something unique about them.

Often, names, logos and taglines that a business uses as a shortcut to its successful marketing messages are so valuable that they should be protected as trademarks.

Among myriad issues surrounding trademarks, there are three that every business owner must be perfectly clear about.

Can you register your trademark?


The function of a trademark is to allow the end consumer to tell your products and services from identical or similar products and services of your competitors.

As long as they perform this distinguishing function, trademarks can be anything from words, logos, taglines and characters to shapes of products, colours and melodies. This is why our tagline is "If it's remarkable, it's trademarkable!"

Importantly, trademarks don't give their owners a monopoly over the name or the logo itself. They only give a monopoly over their association with specific products and services for which the name or logo is used.

This is how the same trademark Blue Shield is owned by two completely different entities: one provides medical insurance, the other sells welding equipment.

The Canadian Trade-marks Act prohibits registration of certain trademarks. For example, you cannot register as a trademark the common name of the product or the service itself; For example, you cannot register "apple" in association with apples, or "accounting" in association with accounting.

Nor can you register clearly descriptive trademarks, that is, terms with dictionary meanings that are used to directly describe such products or services. For example, you cannot register «colour» for printers or «safe» for cars.

Finally, you cannot register a trademark confusingly similar to another identical or similar trademark registered in association with identical or similar products or services. This is why it is important to conduct a search of trademarks registered in Canada to make sure that you are not investing in a brand that will never truly be yours.

Should you register your trademark?


To decide if you should register your trademarks, ask yourself three questions:

•Would it be worth fighting for if you received a cease-and-desist letter demanding that you stop using your trademark in your business? A registered trademark significantly improves your chances and therefore reduces your costs in a dispute against anyone claiming ownership of your trademark.

•Would it be worth fighting for if your competitor started using your trademark or a similar name to promote their products or services? A registered trademark makes it a lot easier and cheaper to win a dispute against anyone who is unlawfully using your trademark anywhere in Canada.

•If you were to franchise, expand or sell your business, would the buyer give you more money for your trademark? A registration automatically protects your trademark across Canada, making it a valuable asset of your business.

You don't need to answer yes to all three questions. If you answer yes to at least one of them, then you should register your trademark as early as possible.

How do you register your trademark?


You are not required to use a trademark agent to apply to register your trademarks in Canada, so self-filing may appear to be the most cost-effective strategy. However, by Canadian Intellectual Property Office's (CIPO) own statistics, around 75% of all applications are initially rejected, and most self-represented applicants have no idea what to do in these circumstances, which costs them time and money. CIPO does not refund fees for refused applications. And the earliest you are going to find out that there is something wrong with your application is about six months after you file it.

The vast majority of trademark agents will eventually be able to get the job done, assuming that the trademark is at all registrable. I suggest that you do your research and ask a trademark consultant the following questions:

•Can you quote a fixed fee for the entire process from start to finish?

•For what and how much will you charge me on top of your filing fees?

•What will you charge me to respond to office actions?

•If CIPO refuses to register my trademark, will I get my money back?

Remember, if you aren't protecting your business's assets, you are not being serious about your business.

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