In my last three articles in this space, I discussed issues related to domain names. Today, I move on to a related topic, trademarks.

First, a trademark is a mark, which may be a word or a design, or some other indicia that is used for the purpose of distinguishing the wares or services of one trader from the wares or services of others. The relative effectiveness of a trademark depends on its degree of distinctiveness, such that fanciful trademarks are inherently distinctive because they are terms invented solely for a specific purpose (for example, KODAK), while descriptive marks (for example, CHAP-STICK) must acquire secondary meaning to become protectable.

In Canada, trademarks are a creation of the common-law. Therefore, you do not need to register your trademark to acquire rights therein. Rights stem from use. However, Canada does have trademark legislation, which also includes a registration system. What do you get by registering your mark? Unlike the common-law, where rights are limited geographically according to use, registration gives you the exclusive right to use your trademark throughout Canada. Registration also carries a presumption of validity and therefore, unlike the common-law, does not require that the registrant demonstrate a reputation or goodwill in the trademark before enforcing its rights therein.

All that said, once you have conceived your "killer" trademark, that presumably is fanciful and therefore distinctive, what should you do?

I recommend that you first conduct searches to determine if you are free to use the mark in association with your particular wares and services, without infringing the rights of others. Trademarks are specific to the goods and/or services with which they are used, and in many cases, depending on the relationship between the goods and/or services and the nature of the trade, it is possible for the same mark to be used for unrelated goods and/or services by two different traders. For example, consider the well known mark DELTA, which is equally famous for its use in association with hotels, airlines and water faucets.

Searches should be carried out on the Federal trademarks data base to ensure there are no registered marks or pending applications that would preclude registration of your mark. You should also conduct some common-law searches (via the Internet, business name directories, phone directories, etc.) to assure yourself that there are no other traders using your proposed mark for the same or related goods and/or services, but which have not yet filed an application for registration.

Also, keep in mind that trademarks are national in scope. That is, a mark that is registered and being used by one trader in the United States would not preclude registration of that same mark by a different trader for the same goods and/or services in Canada, unless that mark has become well known in Canada through its cross-border reputation.

Once you determine that the mark is available for use and registration, you need to prepare a suitable description of wares and/or services in association with which the mark is being or will be used. It is possible to file an application based on intent-to-use the mark in Canada, so you need to consider other possible goods and/or services in addition to those you currently offer. You will have up to three years to file a Declaration of Use for those goods and/or services. The goods and/or services need to be described in ordinary commercial terms and you need to be as specific as possible. If your descriptions are too vague or include terms that are not commercially recognized, the Examiner will object and you will need to amend your descriptions.

Once the application for registration is filed, it will be examined by the Trade-marks Office. The Examiner will search existing registrations and pending applications to determine if your mark might be confusing with any existing marks. The Examiner will also consider other issues such as whether your mark is clearly descriptive of the character or quality of goods and/or services.

Once your mark is approved it will be published for opposition in the Trade-marks Journal. Any other party will have two months within which to file an opposition to registration of your mark. If no oppositions are filed, your mark will be allowed and will move forward to registration once a registration fee is paid. If your application was based on intent-to-use, you will also need to file a Declaration claiming that the mark has been used in association with the goods and/or services listed.

Now, once you have your registration, it is important to remember that to maintain your rights, the trademark must always be maintained, protected, and correctly used. Your mark's strength, and therefore its value, is directly linked to public perception. This is why I tell all my clients – register what you use, and use what you register.

In my next article in this series, I will discuss how to properly use your trademark.

By Barry Hutsel.

Partner, Moffat & Co. / Macera & Jarzyna LLP

To contact Barry, email barry.hutsel@moffatco.com.

Or call 613-232-7302.