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Trademark Registration: 4 Things To Consider Before Beginning The Process
If you’re considering applying for a trademark, you may already have a design, or mark, in mind that you want to use to represent your business. A trademark shows the origin of a product or service, and is usually distinct to a brand, meaning another place shouldn’t use it, more so if it’s registered. Although you can have an unregistered trademark, which can provide some protection, it’s more challenging to enforce it.
However, if you want your business to set itself apart from competitors, you should have a trademark that’s not only registered but unique for all the right reasons. This branding is an important part of your business’s image and is something that should be seriously considered. So, if you’re thinking of registering a trademark, here are 4 things you need to consider before actually starting the process.
1. Is Your Trademark Distinctive?
As your trademark is effectively representing your brand, it should first and foremost be distinctive. This is so that whenever customers see it, they know it’s your brand and is where its strength lies. Furthermore, the more distinctive it is, the easier it is to enforce.
Business names, logos, slogans, and color schemes can all be registered trademarks in Canada, which is done via the Canadian Intellectual Property Office (CIPO). They can be placed into the following categories, depending on the type of trademark filed.
Arbitrary Marks
These are words that are unconnected to the products or services being offered by a business. Virgin and Camel are two examples of arbitrary marks because their names do not indicate what products or services they provide. Although this type of mark is considered strong, they often require an effective marketing campaign behind them, so consumers can identify the business and what products or services they provide.
Suggestive Marks
This type of mark will indicate the type of products or services a business provides, without being too explicit. Microsoft and Netflix are two examples of suggestive marks. Microsoft is an amalgamation of the words ‘microcomputer’ and ‘software’, whereas the words ‘internet’ and ‘flicks’, an informal word for films, make Netflix.
Suggestive marks are stronger than the next category, although there can be difficulties to prevent similar suggestive marks from being registered.
Descriptive and Generic Words
You cannot get more descriptive than this category of the mark, because, as the title suggests, the words used describe the goods or services actually being provided by a business.
As such, these words generally aren’t approved by trademark offices, simply because it would be hard to enforce exclusive rights to a generic word. Examples would include a shop selling jewelry called Jewelry, and a shoe shop calling itself Shoes.
Fanciful Marks
At the other end of the spectrum are fanciful marks, which are the strongest type of trademark a business can have. These are basically invented words that have no association with the products or services a business provides. Roku and Xerox are just two examples in this category. Fanciful marks are considered strong, however, like arbitrary marks, for consumers to know what the business does, an effective marketing campaign will be required.
2. Finding a Trademark Attorney
In respect of registering a trademark, current Canadian law requires the applicant to have a Canadian address or use a Canadian trademark agent like a trademark attorney. They’ll be experienced in the registration process and will advise you about how they’ll do this, as explained on this website.
Although you don’t necessarily need an attorney to register your trademark, having someone with legal expertise helping you means they can deal with any legal considerations as they arise. Without legal experience, or experience in registering a trademark, it can become extremely stressful, but a trademark attorney can help you avoid this just by merely doing their job.
3. Conducting a Detailed Trademark Search
You may have even looked at other businesses’ trademarks for inspiration, just to see what’s already being used. Or you may have done some online research to see if anyone has the same trademark as you, or anything similar. However, your search will not be as comprehensive as one done by an experienced trademark attorney. Their search will go beyond the remit of various search engines, so that any exact or similar matches may be discovered.
The CIPO won’t register a trademark if it’s either already in use or is similar to another already in use. So it’s vital to have conducted a deep search into something similar or exact so that you can make changes to your mark before your application is received by the CIPO.
4. Filing your Trademark
After all the above has been done, you’re ready to file your trademark with the CIPO. The most common way to submit this application is via CIPO website. Make sure you have your completed application, along with any required supporting documentation, and the means to pay the fee, ready to upload.
Once you’ve done this, the CIPO will issue an application number as your registration process moves onto the next stage. During this application stage, you may be contacted via telephone by the CIPO for further information with regard to your application, perhaps further clarification on the information you’ve submitted. Occasionally the CIPO might issue a formal notice, for which you’ll have 6 months to respond, otherwise, your application may be rejected.
Once your application is approved, it’ll appear in the Trademarks Journal. Any opposition to your registration has to be filed with the CIPO, within two months of this, using a Statement of Opposition.
If this is done, you’ll have two months to reply to it, before the CIPO makes its decision. It’s imperative that you respond to any communications from the CIPO within the specified time frame, otherwise, your application for registration could be canceled.
These points provide a decent starting point if you’re about to embark on registering a trademark. If you’re unsure of what to do, hiring a trademark attorney should be on the top of your priorities. This is because they know what to do, will make sure everything is done properly and will take the stress off of you during this process, so you can focus on running your business.
Also make sure you have all your documentation stored somewhere, in some form of chronological order, whether it’s online or tangible copies so that they’re easy to access.
This way, you’re able to find what you need, at any time, should you be contacted by the CIPO. This will not only give you peace of mind but also enable your application to progress smoothly, so you get your trademark registered.
