What are the Rules of Trademarking?
Are you wondering about using trademarks for your Canadian business?
Before you apply a trademark symbol (™) next to an image or word, it’s important to be familiar with the rules. Trademarks carry significant weight when it comes to valuable intellectual property. They represent not only services and/or goods of the producer, but also the reputation of the producer.
If you’ve been thinking about using the trademark symbol for your business, we’ve got you covered with this beginner’s guide.
What does the trademark symbol mean?
Using the ™ symbol means that you’re claiming that the image or word that you’re putting the symbol next to is trademarked and belongs solely to you. However, the trademark symbol is generally used for unregistered trademarks. The registered trademark symbol (®) is used for registered trademarks. What’s the difference?
Unregistered vs. Registered Trademarks
Who gets to use the unregistered ™ symbol is often decided on a first come, first serve basis. If someone is able to prove that they used the trademark first, they will be considered to hold the rights of that trademark, unless someone else registers it. An unregistered trademark owner can add the mark with the letters “TM” to notify the public that the words or symbols are already owned. The claim can be held up in court. But be warned — you don’t receive as much protection as the owner of a registered trademark.
Registration of your trademark gives you the exclusive right to use the trademark in Canada for 15 years. After that, registration is renewable every 15 years. Using the registered trademark symbol (®) is unlawful if you do not actually register your mark. That being said, you are not required to register your trademark. In fact, using an unregistered trademark for a period of time can establish, under common law, your ownership of your mark. But if your trademark isn’t officially registered, you could get into legal trouble and another company or individual could acquire the rights to use what you had considered to be yours.
The problem with registered trademarks? They’re expensive! That cost is often out of reach for a small business, so consider what makes sense for your budget and the importance of the proprietorship of the intellectual property you want to trademark.
Don’t stop at trademarking your just business name and/or associated imagery – why not consider trademarking your tagline, too? At Barker Social, we recommend it!
Coming up with a catchy tagline that evokes the values your business can be an integral part of your branding. For example, our own Barker Social Marketing trademarked tagline is:
Marketing worth shouting about!™
Our tagline is an essential component of identifying our brand’s values and it’s something we were excited to claim ownership of. If you’ve produced a tagline that you feel proud of, considering trademarking it to make it your own.
What can and can’t be trademarked?
Clearly Descriptive Marks
You can’t trademark a word that describes a feature associated with the goods or service you’re offering. For example, “Housekeeping Services” could not be trademarked because it too clearly describes the service you’re offering. Get creative!
Names and Surnames
Be careful when using names and surnames. You could trademark “Thor” Teas (a mythological, not actual, name) but you couldn’t trademark “Trudeau” Teas because it’s a real name.
Made Up Words
Words that are invented make for the strongest trademarks. “Jacuzzi” and “Zamboni” are good examples of this. The more unique the name, the better your chances are at avoiding conflict with other trademarks, and the stronger your trademark will be.
Be careful when combining words to make up a word, e.g.: “tea” and “terrific” to make “Tea-rrific”. While this may still be acceptable, your mark may be judged as clearly descriptive if it’s too obvious.
References to places of origin
You couldn’t trademark “Belgium” Waffles as Belgium is often recognized as the Belgian waffle’s place of origin. On the other hand, you could apply to trademark “London” Waffles if you were doing something uniquely British with your company, but your claim would still have to be looked into.
Words from other languages
For example, you can’t register “Cappuccino” because it’s a word that constitutes goods or services in another language.
Even though people might find it amusing, you couldn’t trademark “RCMP’s Choice” Doughnuts. This is because RCMP stands for the Royal Canadian Mounted Police, which is prohibited.
Deceptively Misdescriptive Marks
You can’t trademark something that’s deceptively misdescriptive. For instance, you can’t trademark “Uptown Casting Agency” if you’re actually a talent agency specializing in representing actors and finding them auditions, but not actually casting them in roles.
Marks similar to those of pending trademarks or previously registered trademarks
For example, “North End” Mechanics might be okay if there’s no potential confusion with a registered trademark or a pending trademark. However, if there were already a trademark on a “South End” Mechanics set at an earlier date, it would be considered confusing because both businesses are offering similar services.
The Bottom Line
It’s worth pursuing a registered trademark if you’re concerned about your intellectual property. However, if you’re operating a new small business, you may find that starting out with an unregistered trademark is enough to help you get situated.
For more information about trademarks in Canada, visit:
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