when, why & how to protect your brand

+1 (778) [email protected]

http://trademarkfactory.ca



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



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



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:



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

http://ipbook.ca/

http://trademarkfactory.ca/cartoons



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.



Forms of Trademarks

1. Traditional Trademarks

• Word trademarks (product or service names, slogans) • Design Trademarks (logos)

2. Non-Traditional Trademarks



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.



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



1. Generic name of a product or a service

2. Descriptive names

3. Functionality of a product

What Cannot Be Registered as a Trademark



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.



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.



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

Association with Products and Services



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:



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.



How to Properly Mark Trademarks

For unregistered trademarks:

use ™ symbol next to the trademark

For registered trademarks

use ® symbol next to the trademark (careful!)



7 Benefits of Trademark Registration

#1

Protection is FEDERAL




#2

Protection BEFORE use




#3

Presumption of VALIDITY and OWNERSHIP




#4

Valuable ASSET=




#5

FREE and AUTOMATIC

protection




#6

Found in the REGISTER




#7

Makes it easier to protect the brand outside Canada




BONUS

A new, wonderfully amazing and

amazingly wonderful experience



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.




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.




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.



OR ask yourself 1 QUESTION



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



Trademark Registration Process (≈18 months)

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.




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.




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.



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




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




3. Trademark Factory®

Pros: Cons:•Our services are not free




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 y o u h a v e a n y

q u e s t i o n s :http://trademarkfactory.ca

778.869.7281

[email protected]

http://ipbook.ca

when, why & how to protect your brand

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