Whether or not you decide to register your mark, the proper use of your trademark is crucial to preserving your current and future rights. A few simple rules should always be followed when using trademarks:
Bear in mind that trademarks or service marks are adjectives that refer to a particular brand of product or service. In contrast, business names are nouns that identify a particular business. Thus, the rules listed above apply to the use of trademarks and service marks, not business names. For example, a business name may be used in the possessive.
It may be useful to periodically perform a " trademark audit" within your business or marketing department to assure that proper use is being made of all your company's trademarks and service marks. Since trademark rights arise from use, proper use is the key to maximizing the value of your trademark and trade name assets.
What is a trademark ?
A trademark is any word, name, symbol or other device used to identify one's goods and distinguish them from goods offered by others. trademark laws also recognize service marks which are similar to trademarks and serve to identify a company's services from those offered by others. Topics addressed below include how to properly select and use trademarks, service marks and business names. The same principles are generally applicable to each, thus the distinction between the three will be ignored unless there is a different consideration worthy of note.
Selecting a trademark
Choosing a name for your new business or a trademark for your product or service is like selecting your company's wardrobe. The name or trademark you select defines the image of your company or product and will affect your ability to appeal to a particular group of customers.
Aside from the many marketing considerations in selecting an identity for your business or goods, it is important to choose a logo, name or trademark that:
Choose a Strong trademark or Name
In the spectrum of possible business names or trademarks, the most protectable marks are those that are fanciful (words like EXXON and KODAK that have no meaning) or arbitrary (real words that have nothing to do with the identified business or product, like CAMEL for cigarettes or SHELL for petroleum products).
Arbitrary or fanciful marks are most valuable because the owner of such a trademark can keep others from using a confusingly similar mark, often even in unrelated businesses or fields, from the moment that trademark is first used.
When selecting a business name or product mark, resist the temptation of using words that describe the business (VEGETARIAN MARKET), the product (MIRACLE MOP), the geographic location of the business (EDMONTON MOTORS) or the surname of the owner (SMITH'S PHOTOGRAPHY). Beyond being ho-hum, such names or marks are not likely to be protectable until after they have been used continuously for many years. Even then, it may be difficult for the owner to stop someone else from using a similar name or trademark on a non-competing business or product.
Worse yet are words or phrases that generically describe the product, service or type of businesses. Generic words or phrases cannot be protected, even after long and continuous use. For example, no matter how long Ma and Pa have used "BAKERY" as the name of the bread and donut shop, they cannot keep anyone from opening up a shop next door using the same name.
One also should consider the use of unique graphic elements, type styles, color combinations and the like to enhance the distinctiveness of a name or mark. Creative and unusual design elements can yield an additional dimension to consumer recognition and trademark protection. If Ma and Pa had also used clever lettering on the "BAKERY" sign, at least they could keep others from using similar lettering in a competing business.
Before adopting any business name or trademark , it is wise to investigate whether "your" terrific new name, or something similar, is currently being used by someone else. A search of computerized databases containing names and marks already in use can be performed for a reasonable cost. Once a search has been performed, you will have a better picture of other users of your name or mark. There is also a wealth of free searching you can perform on the Internet. To view our guide on how to perform your own search click HERE. To order a search prepared by our staff click HERE.
The idea in the trademark business is to avoid confusing consumers into wrongly thinking there is some relationship between you and another company, because of a similarity in your business name, logo or trademarks. If there is someone else already using "your" proposed name or mark, then you must decide whether consumers would likely be confused if you were to proceed with adopting "your" name or mark. trademark lawyers and trademark Agents can help you assess the wisdom of proceeding. But bear in mind, few new businesses or products can afford a name change or a lawsuit - even one that likely can be won - right off the bat. Consequently, prudence often dictates picking a trademark or name that nobody will argue is infringing.
To Register or Not to Register
Once you have decided on a name or mark, how do you " trademark it?" Happily, trademark and trade name rights generally arise from actual use. Thus, if you are using your new name or mark, unless that trademark is descriptive or generic, you already own trademark or trade name rights within the geographic area where you are using the mark. No registration is required to obtain trademark or trade name rights within that geographic area.
However, additional benefits can be obtained by registering your trademark with trademark Office. For example, if your trademark is federally registered, your rights extend nationwide, even into geographic areas where you have not actually done business. Federal registration also provides you with the presumption that the trademark is valid and enforceable in the event of a dispute. Over time, a registered trademark becomes "incontestable," which eliminates some defenses that might otherwise be available to an infringer. In addition, you have a chance to recover attorney's fees, treble damages and/or obtain seizure of infringing goods if your trademark is federally registered. Federal registration involves a formal application process and the payment of a filing fee.
If you have not begun to use a mark, but are planning to do so, it is possible to obtain a priority date by filing an "intent to use" or "proposed use" application with the trademark Office. The intent-to-use provisions of the trademark Laws of almost every country allow businesses to obtain rights to a trademark before actual use so that a marketing scheme can be developed without fear that someone else will begin using your trademark in the intervening time between selection and actual use.
State registration, while less valuable than federal registration, does provide constructive notice to others that you claim rights to the registered mark. State registration is generally very inexpensive and can be accomplished without the help of a lawyer.
Federal trademark registration usually makes sense for businesses that intend to spend substantial effort and money marketing or advertising their business or products. Federal registration is less important for businesses that do not anticipate generating revenues sufficient to justify or support litigation costs. Many of the benefits of registration are not realized unless the trademark owner is prepared to protect the trademark rights the business has business has acquired. Finally, if you DO NOT care if someone doing business in another geographic market adopts your business name or mark, THEN federal registration is probably not for you.
We trust, now that you have read this article, that you will come to the conclusion that you should include an IP specialist on your list of professional advisors.
If this article has left you with unresolved questions then we ask that you direct them to us. We ask that you take the time you to learn all about
ARVIC, who we are, what we can do for you and why you should employ us. For free consultation or practical information on any trademark
related issue you are invited to contact us.
Arvic Search Services Inc.
Suite 260, 2323 - 32 Ave. N.E. Calgary, Alberta Canada T2E 6Z3
Phone: 403-234-0844 Toll Free: 1-888-227-8421 Fax: 403-294-0944 or Email Us