Trademark Canada, US & International
Stemp & Company provides Canada, US & International trademark services, trademark attorneys/lawyers; etc. that include advice, searches and application
What's the difference between a trademark and a trade name?
A trademark protects the name of the product (brand name) or the name of the company selling the product. It can also be a slogan, logo, advertising jingle or other method of distinguishing your product or service from your competition.
A trade name should be trademarked 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.
Why would I need a trademark or trade name? Or both?
If you have a business that you is attempting to establish a recognized name for, establishing a trademark 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 trademark 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 trademarked name. You can also lose any value in established advertising that you have already spent money on.
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 trademarked for protection. There is a risk in not establishing a trademark for your business name because it leaves your business vulnerable: someone else can trademark 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.
How do I get a trademark?
The first step is to have a "name search" conducted. If your name is not already trademarked, then the application can begin.
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 being ultimately successful.
There are two types of trademark applications:
- An application to register a trademark which you are already using.
- An application to register a trademark which you are proposing or intending to use.
1. Trademark which you are already using
In the case of a trademark which you are already using, it is the date that you began to use that trademark which is critical.
For instance, if you began to use a trademark January 1st 2015, and someone else claims that they have been using the same trademark starting June 1st 2016, then you have priority over their application, based on your claim to prior commercial use of the trademark.
The same principle applies if you claim to have used the trademark since January 1st 2015 and someone else applies in the Trade Mark Office to register the same trademark any time after January 1st 2015. This is including when they are not yet using the trademark and their application is based on a "proposal to use" it.
On the other hand, if someone files an application with the Trade Mark Office on January 1st 2015 for a trademark which they are proposing to use, and you file an application some time later to register the same trademark, but your application is based on actual use of the trademark starting on a date after January 1st 2015, the party who has filed their application on January 1, 2015 will be successful and you will not.
This will be the case even if the party who files January 1st 2015 takes several years to complete their application, and you commence using the trademark before they do. In this case, the Trade Mark examiner will usually decide that the date which counts is the EARLIER of the date of filing of your application, or the date of actual use of the trademark. Even if you begin using the trademark 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 trademark to ensure successful registration of it.
2. Trademark which you are not yet using
In the case of a trademark 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 trademark, 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 trademark and someone else files an application afterwards, unless that applicant can prove that they began using the trademark before your date of filing, then your application should be successful.
Even if someone has been using the trademark from a date before the date you file your "proposed use" application, unless the party claiming prior use files an application at the same time that yours is still pending, then your application should normally be allowed.
It is possible under the Trade Mark Act for the party who claims prior use to be able to contest your registration of the same trademark. However, such "contesting proceedings" are expensive and not certain in whether or not they will be successful.
Frequently Asked Questions
How does filing for a trademark or a trade name in the US work?
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. 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.
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 or a copyright?
Infringement of a trademark or a copyright occurs when someone uses your idea, logo, business name, etc. or copyright material without your authorization. Or, they could 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 trademark 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 trademark 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 trademark can be redirected to the party that owns the trademark.
When is the best time to file a trademark?
As quickly as possible! The Trade Mark Office accepts applications on a first 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 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 trademark 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 trademark your name before you give any public knowledge of your intentions because someone else could trademark the name before you. The results could be damaging to your company, because you would have to either purchase or forfeit the name.
What's 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 trademark under the Canadian or United States Trade Mark Acts. This protects the way your product appears and is going to be used to promote the sale of the product, as opposed to protecting the actual shape of the product.
How long does a trademark 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 trademark take?
A trademark application can take up to one year or more to complete.
Should I license my trademark?
One area which is often overlooked is the licensing of your trademark rights to a manufacturer. If you license the right to produce your product to a manufacturer, you must also make sure that you own the right to the trademark or brand name which the manufacturer is using or plans to use. If the manufacturer wants to use its own selected name for the product, you should not allow the manufacturer to own the rights to that name.
If, under your license agreement, the manufacturer loses its right to manufacture your product (for example, failing to meet a minimum annual sales quota), then you can cancel the license agreement and give the manufacturing rights to another manufacturer. In that event, you must also make sure that the rights to use the trademarks which are associated with the product (such as brand names, letters, numbers, combinations of words, letters, numbers, logos, slogans, jingles and graphic designs) are also canceled and transferred to the new manufacturer.
If you are unable to do this because the original manufacturer still owns the trademarks, then you and the new manufacturer are at a huge disadvantage since the public knows your product by the original brand name, not by any new name which you may have to select. As far as the public is concerned, the product appears to be new because the trademarked names are new. This can cause you enormous loss.