How to identify & prioritize high-value trademarks for prosecution on a budget.
Companies with virtually unlimited resources can afford to file for lots of trademarks (check out Apple's extensive list). But most growing companies have to make choices – do we trademark our company’s name, product name, slogan? What if we can only afford one?
The decision ultimately comes down to a key question: which name(s) do you want consumers to associate with your products or services?
Consider the winter parka manufacturer, Canada Goose. They make parkas with product names like Expedition and Langford. But for Canada Goose, their company name is a more significant trademark than their product names, and therefore a bigger source of value. You might tell someone you bought a “Canada Goose” parka, and you might mention the product name. But you would be unlikely to tell someone that you bought an “Expedition” parka, and not mention that it is a “Canada Goose.” Put another way, a store would do better advertising that it is selling “Canada Goose” parkas, as opposed to “Expedition” parkas.
By contrast, consider the accounting software TurboTax and QuickBooks. Both products are made by a company called Intuit. But the trademarks “QuickBooks” and “TurboTax” are more deeply associated with the company’s products than the company’s name; it’s the reverse situation from Canada Goose.
Sometimes you have enough resources and a desire to market both your company name and your product name. In the case of such companies, you’ll find people talking about their “Apple phone” or their “iPhone”. But in the early stages of a company, with limited resources, trademark choices can really matter.
When deciding on a trademark strategy, consider which product or company names are more distinctive? As your company grows its presence, which name do you want to be at top of mind for your customers?
If we’re saving money, why file for a registered trademark at all? Aren’t common law trademark rights free and automatic?
"With a valid registered trademark, you can stop others from using confusingly similar or identical trademarks anywhere in Canada"
Unregistered common law trademark rights are free, and they do vest automatically. Just by doing business using a brand name, logo, slogan, or other distinctive mark, you could be accruing common law trademark rights. The problem is that these rights are much harder to enforce. To stop someone from using your common law trademark, you must establish that they are “passing-off” their goods or services as yours. That means showing:
That you have goodwill in your mark;
That there is deception of the public due to a misrepresentation; and
That you have actually been harmed.
That can be an onerous legal test (which also means it can cost a lot to prove). You will need to be able to show that your common law trademark has a reputation that overlaps geographically with the defendant’s passing-off activities. That is challenging if, for example, your business has started attracting customers in Toronto, but the defendant’s activities are all based in Vancouver.
Enforcing a registered trademark is comparatively easier. With a valid registered trademark, you can stop others from using confusingly similar or identical trademarks anywhere in Canada - you have the exclusive right to use your trademark and you won’t have the Toronto/Vancouver problem. Registering a mark can potentially discourage others from using a confusingly similar mark. And you can even file for a trademark before you start using it.
These are just some of the advantages to a registered mark. Used wisely, there’s a place for both registered and unregistered marks in your trademark portfolio.
Want to know more? Ask us!
Slingshot can help you develop a trademark strategy and offers discounted trademark prosecution to help your growing business protect its branding assets.
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Paul Banwatt | Lawyer
John Durland | Lawyer
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