(ALMOST) EVERYTHING YOU NEED TO TO KNOW ABOUT TRADEMARKS
A trademark is a sign, text, combinations of sign and text, sound, and distinctive shapes or wrappings capable of distinguishing the goods or services of one enterprise from those of other enterprises in your marketplace. Trademarks are an important intellectual property. Over time trademarks come to stand for not only the actual goods or services a person or company provides but also the business’s reputation and brand.If your business name or trade name is used to distinguish your products and services from those of others in the market, they may also be registered as trademarks. By registering your trademark, you prevent others from capitalizing on your intellectual property by imitation or misuse, and you gain exclusive rights to use it throughout Canada for 10 years (a term that you can renew). You may also be entitled to enhanced damages if you have to bring an infringement claim. Incorporating your business or registering your business or brand name, in whole or in part, as a domain name does not confer trademark rights to your company. The domain is a URL address to your website and not a registered intellectual property. So, if you found an available domain name but the name is trademarked by someone else, your active website could constitute trademark infringement.
REGISTERING A TRADEMARK
The process from filing to registration generally takes 18 to 24 months if there are no objections from an examiner or opposition to the application. It can only be expedited in special cases, such as COVID-related products and services. For more information on expediting the requests for examination click here. When the process ends and your trademark is approved, you are entitled to retroactive protection as of the initial date of filing your trademark application. Before you use a mark or you want to go ahead with your trademark application, it is best that to conduct a trademark clearance search. It’s also good to run a search before you come up with a business name or expand your business geographically. A trademark clearance search can assess whether your selected name can be used as a domain, company name, trademark, or brand name. As a first step, you can do your own search by checking the items below.
- Canadian Trademarks Database
- World Intellectual Property Organization (WIPO) IP Portal
- The United States Patent and Trademark Office (USPTO)
- Search through your industry-specific website and news sources
- Social media platforms
- E-commerce platforms
- Internet domain registries
- App stores
- International dictionaries (to assess potentially offensive word meanings in other languages.)
- Make sure your trademark is not deceptive or misleading when it comes to the goods or services you offer.
- Make sure your trademark is not a name.
When you register make sure to define goods and services you will offer as broadly as possible, add good and services you plan to offer in the future. It is easier to remove than add a covered category. To register a trademark in Canada go here.
FILING IN THE US To register a trademark in the US you must go through the U.S. Patent and Trademark Office (USPTO). The USPTO registration will give your trademark domestic legal protection. In the U.S., all foreign trademark registrants are required to have legal representation. to register within the country.
- “The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 124 countries. Modify, renew or expand your global trademark portfolio through one centralized system.” - Madrid Protocol, 2021
- Once a certificate of registration is issued by WIPO, an examination process takes between 12 to 18 months, and if granted, the trademark registration will be valid for 10 years.
- VIDEO - How to do a registered trademark search with the WIPO Global Brand Database
For the most price and user friendly trademark search tool head to Haloo.
Written By Dana M