You may find yourself in need of a
trademark if you are known as another business name, if you are
promoting a strong brand name, if you are thinking about franchising or
licensing, if you are an importer or an exporter, or if you are an
association, an established business, an entertainer, a service company
or a publisher.
These all represent the perfect situation
to trademark a portion of a corporate name,
trade name, or brand name for your protection against competitors and
This is when your
business is known to your customers by a shortened
version of your corporate name, your distinctive element in your
corporate name, or another name altogether.
This situation is very
popular in the business world, and the main reason why many businesses
extensiveley research their distinctive element of their corporate name.
A great 'known as' example would be International Business Machines Inc.
who are 'known as' IBM.
Everyone knows the
importance of brand names to a product or service, and the company
selling it. All the marketing texts, and business guru's are placing
significant importance on "branding" instead of
We all go
to the store to purchase "Kleenex", but who goes to the store
to look for Kimberly-Clarke facial tissue?
Every business that offers a franchise is a
prime candidate for trade mark registration. The owner of a mark has the
right to register, and cancel, others as Registered Users of his mark.
That gives you, as the franchisor, great control over anyone who is
using your trademarked name.
A dispute between a Franchisee and Franchisor may
drag through the courts for months, even years, whereas, the owner of
the mark needs only give thirty days written notice of his intent to
cancel the Licensed User agreements. If the User continues to use the
marks after the right has been cancelled the owner can secure a court
order to remove all items, including stationery, signs, inventory,
invoices, etc., that bear the mark. The owner of the mark has a powerful
tool in dealing with franchisees.
The principals that apply to Franchisors apply
to Licensors. As a Licensor, you need to maintain product or service
control on all your licensees in order to maintain your name's
goodwill. With a trademark you can easily control to use of your name
by cancelling license agreements with those who do not maintain your
standards of product/service control.
Companies that take the time to source and
secure the Canadian marketing rights to a product that has never been
sold or made known in Canada, must spend money to promote the brand name
as used abroad and generate goodwill in Canada for this new product.
That is a lot of time and money spent, and as an importer, you should protect
your investment in the goodwill of the product.
You should also protect
yourself against an
exporter that may decide to sell their products direct.
Well over 140 foreign countries allow marks
that are registered in Canada to be registered abroad. Once your marks
are registered you will have protection against foreign exporters who
wish to penetrate your markets by producing a competitive product in a
Customs officials can deny the admission of any product
into a country that may infringe on the rights of a trade mark owner.
You also protect yourself against the importer who
decides to have your product made by someone else once the importer
registers your name in that foreign country.
Many business organizations, unions, and
Professional Associations have established a set of standards, which
their members are obligated to maintain. Such associations pride
themselves on their standards and encourage members of the public to
deal with association members.
The names of the associations may not be registerable as trade marks but the logos certainly are.
These logos are registerable as Certification marks
as they denote a standard of excellence that the member users of the
association must meet in order to maintain their membership. The public,
upon viewing the logo, will know that the service provider has meet the
defined standard and thus he can be trusted.
Businesses that have established goodwill in a
community, due to length of time in business, multiple locations within
a community or businesses that are operating or planning to locate in
another community; should consider trade mark registration.
When businesses start to experience success and
decide to expand, they become a prime candidate for the thief who wants
to steal their marketing ideas and promote a similar business in another
This area is highly overlooked and it is the
one that needs the most protection. Companies that offer only services
such as restaurants, construction companies, home builders, machine
shops, trucking companies, consultants, etc., are often the most
vulnerable as they do not have a product to protect but instead a
reputation that must be protected. This group of companies is
represented by more than half of the businesses listed in any yellow
pages, yet collectively they have less than 3% of all marks registered.
The stage names used by entertainers, their
signatures, and their caricatures are all prime candidates for trade
mark protection. Once the public starts to recognize an entertainer by
the stage name they will purchase the entertainer's marketed products.
is just a different situation where, you yourself are the product or
brand name that needs to be protected from potential infringement. Plus, with the recent
stories involving domain name registrations, and the entertainment
business; who wouldn't want to protect their name?
Authors or publishers of printed articles,
magazines, or software, with a changing customer base, should trade mark
the name or title of their written works.
If J.K. Rowling didn't
trademark her infamous "Harry Potter" brand, could you
imagine the trouble that could ensue from that?
Any and all of these situations may apply
to you and your business at one point in time. And certainly, you read
through this list and see the comparisons, now all you have to do is
decide to protect your business, your brand, and most of all... your