Trade Marks & Trade Names
What is the difference between a Trade Mark and a Trade Name?
A TRADE MARK protects the name of the product (brand name) or the name
of the company selling the product or a slogan, logo, advertising jingle or other method
of distinguishing your product or service from your competition. A Trade Name should be
Trade Marked for protection. A TRADE NAME is merely an operating business
name that is required by banking institutions to open an account. A Trade Name identifies
that a company is registered provincially to do business with a certain name. A Trade Name
does not provide any type of protection for exclusive rights to your business name.
What does a Trade Mark look like?
Authentic Canadian Trade Mark
CLICK TO VIEW LARGER PICTURE
How do I know if I need a Trade Mark or a Trade Name?
If you have any type of business that you are attempting to establish a recognized name
for your clientele, establishing a Trade Mark is critical. If you don't register, anybody
can use your business name without discretion and damage the credibility of your company.
As well, if any other company establishes a Trade Mark with your business name, your
business name becomes their property. They can force you to stop using the name, have your
phone numbers redirected to their office and confiscate any marketing materials using
their Trade Marked name. You can also lose any value in established advertising that you
have already spent money on.
Do I need both a Trade Name and a Trade Mark?
This depends solely upon your need to protect your name. Many people assume that their
name is protected with a registered Trade Name but it is not. A Trade Name should be Trade
Marked for protection. There is a risk in not establishing a Trade Mark for your business
name because it leaves your business vulnerable to operating: this is when someone else
can Trade Mark your business name and force you to change yours. You stand to lose a
considerable amount of business and the value of your established name.
Doesn't Incorporating protect my business name?
No. Incorporating registers your company with the provincial government but provides no
protection for your name.
What constitutes infringement of a Trade Mark or a copyright?
Infringement of a Trade Mark or a copyright occurs when someone uses your idea, logo,
business name, etc. or copyright material without your authorization or they use something
so similar to your idea that a reasonable person would come to the conclusion that the
product comes from the same manufacturer as yours or the Trade Mark is being used by the
same manufacturer.
What are the penalties for infringement?
Penalties for infringement include damages based on the profit that either you could
have made if you had sold the pirated products or profit that
the individual actually made, as well as punitive damages. In
addition, an injunction can be granted by the court to prevent further infringement from
occurring.
Infringement can result in serious damage to a company. It can mean that any and all
information that uses a Trade Mark or copyright that has been infringed upon can be
confiscated. Any phone numbers that have been used in conjunction with any advertising of
the infringed Trade Mark can be redirected to the party that owns the Trade Mark.
When is the best time to file a Trade Mark?
As quickly as possible, the Trade Mark Office accepts applications on a first one to
the gate priority. Any delay in filing your application can damage the possibility of your
application's success. Whenever possible, the initial patent search should be conducted
FIRST before doing anything else. It takes approximately four to six weeks to have a
thorough patent search performed. During this time, you can be raising funds to help pay
the cost of pursuing a patent application or several applications as well as Trade Mark
applications and marketing or licensing of your product.
Is it necessary to protect my business name with U.S. and international Trade
Marks?
Only if you want to protect your established name for business or potential future
business outside of Canada. If you have a good business name and you are planning to
expand your business internationally, you should Trade Mark your name before you give any
public knowledge of your intentions because someone else could Trade Mark the name before
you. The results could be damaging to your company because you would have to either
purchase the name or forfeit the name.
What is the difference between a Trade Name and a Logo? Do I need to protect
both?
If you intend to make use of a two dimensional rendering or drawing of your product
(i.e. on any packaging brochures, pamphlets or other advertising, marketing or promotion
material), we often recommend that our clients apply to register that two dimensional
rendering or drawing of their product as a Trade Mark under the Canadian or United States
Trade Mark Acts. This protects the way your product appears and is going to used to
promote the sale of the product, as opposed to protecting the actual shape of the product.
How do I start the process of establishing a Trade Mark?
The first step in determining whether you have a business name that can be protected is
to have a "name search" conducted. If your name is not already Trade Marked,
then the application can begin.
When should I begin the process of applying for a Trade Mark?
We are often asked when the best time to prepare and file an application to register a
Trade Mark with either the Canadian or United States Trade Mark Offices is. Overall, it is
in your best interest to apply as quickly as possible. Any delay in filing your
application can damage the possibility of your application being allowed and your
application being ultimately successful. There are basically two types of Trade Mark
applications:
- An application to register a Trade Mark which you are already using;
- An application to register a Trade Mark which you are PROPOSING OR INTENDING to
use.
TRADE MARK WHICH YOU ARE ALREADY USING
In the case of a Trade Mark which you are already using, it is the date that you began to
use that Trade Mark which is critical. For instance, if you began to use a Trade Mark
January 1, 1990 and someone else claims that they have been using essentially the same or
identical Trade Mark starting June 1, 1991, then you have priority over their application
based on your claim to prior commercial use of the Trade Mark. The same principle applies
if you claim to have used the Trade Mark since January 1, 1990 and someone else applies in
the Trade Mark Office to register the same Trade Mark any time after January 1, 1990,
including the case where they are not yet using the Trade Mark and their application is
based on a "proposal to use" the Trade Mark.
On the other hand, if someone files an application with the Trade Mark Office on
January 1, 1990 for a Trade Mark which they are proposing to use and you file an
application some time later to register the same Trade Mark but your application is based
on actual use of the Trade Mark starting on a date after January 1, 1990, the party who
has filed their application on January 1, 1990 will be successful and you will not. This
will be the case even if the party who files January 1, 1990 takes several years to
complete their application and you commence using the Trade Mark before they do. In this
case, the general principle which the Trade Mark examiner applies is that the date which
counts is the EARLIER of the date of filing of your application OR the date of actual use
of the Trade Mark. Even if you begin using the Trade Mark before someone else does, if
they have filed their application before you, their application will succeed and your
application will fail.
You cannot rely solely upon earlier date of use of the Trade Mark to ensure successful
registration of your Trade Mark.
TRADE MARK WHICH YOU ARE NOT YET USING
(at the time of filing your application)
In the case of a Trade Mark which you are not yet using, it is critical for you to obtain
the earliest possible filing date. If you file an application based on "INTENTION TO
USE" the Trade Mark and someone else files an application on the same basis, the
EARLIER DATE OF FILING will determine whose application has priority.
If you file an application based on your intention to use the Trade Mark and someone
else files an application subsequently, unless the subsequent applicant can prove that
they began using the Trade Mark before your date of filing, then your application should
be successful.
Even if someone has been using the Trade Mark from a date prior to the date of filing
of your "proposed use" application, unless the party which is claiming prior use
of their Trade Mark files an application at the same time that yours is still pending
before the Trade Mark Office, then your application should normally be allowed. It is
possible under the Trade Mark Act for the party who claims prior use of the Trade Mark to
be able to contest your registration of the same Trade Mark. However, such
"contesting proceedings" are expensive and by no means certain in terms of
whether or not they will be successful in overturning the registration of someone else's
Trade Mark.
FILING IN THE UNITED STATES
When filing an application in the United States Patent & Trade Mark Office, such an
application must be filed within six months of the date of filing of your corresponding
Canadian application in the Canadian Trade Mark Office in Ottawa. If you can file your
United States Trade Mark application within six months of the Canadian filing date, BOTH
APPLICATIONS WILL BE GIVEN THE SAME FILING DATE.
Again, it is important to file a United States Trade Mark application as quickly as
possible in order to increase the probability of your application's success.
How long does a Trade Mark last?
In Canada, a Trade Mark is registered for an initial period of fifteen years, but may
be renewed again and again, so long as you are making active use of the Trade Mark.
How long does the process of establishing a Trade Mark take?
A trademark application can take up to one year or more to complete.
Where do I go for help to initiate the Trade Mark process?
We at Stemp & Company are available to meet with you at any time to discuss your
concerns with respect to Trade Mark applications and enforcement of Trade Marks. All of
the work with respect to both Canadian and United States Trade Mark applications is done
in our offices in Calgary, and we do not need to employ the services of United States
Trade Mark attorneys or agents. This results in significant cost savings for you.
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