Use It or Lose It: How to Acquire and Protect your Trademarks

Madelaine Lynch is a 3L JD Candidate at Osgoode Hall Law School, enrolled in Professor David Vaver’s 2021-2022 Intellectual Property Law & Technology Intensive Program. This article was written in affiliation with Madelaine’s placement at ventureLAB.

Trademarks are an excellent way to protect your brand. Unlike patents or copyrights which protect specific products or works, a trademark distinguishes your company from others. It protects the goodwill and reputation of your business. The important thing to remember with trademarks is that they must always function to identify your company as the source of the goods or services. Your company name, the names of your products etc. do not protect the goods themselves, but rather they protect your brand. For example, the word LEGO and the LEGO logo function as trademarks because they identify the brand. However, the LEGO bricks themselves are not trademarked.

Trademarks come in a variety of forms. For instance, you may want to register the distinctive part of your company name (i.e. Apple is the trademark not Apple Inc.), a tag line or a logo. While these are the most common and obvious types of trademarks, you can also register colours, shapes, holograms, moving images, modes of packaging, sounds, scents and tastes. For example, the distinctive smell of Crayola Crayons is a registered scent mark, described as “a unique scent of pungent, aldehydic fragrance combined with the faint scent of hydrocarbon wax and an earthy clay”.

Unregistered vs Registered Trademarks

To some extent trademarks can be protected without registration. This is known as common law protection, which offers a limited scope of protection compared to a registered mark.

An unregistered trademark can be identified using the ™ symbol. This is optional but it puts the public on notice that you are intending that word, phrase, or design to function as a trademark. However, if you were to attempt to bring a competitor to court over their unauthorized use of your unregistered trademark, you may be in for a lengthy and expensive battle. Unregistered trademarks are protected only in the limited geographic region that they are used. This means that if your company only operates in Toronto and the mark is only known in Toronto, you likely won’t be able to enforce your trademark against a competitor in Vancouver. This is because your goodwill may be limited to Toronto, so consumers in Vancouver are unlikely to mistake the competitor’s product for yours.

If a competitor is using your mark (or a confusingly similar mark), you cannot sue for trademark infringement. Rather, under common law this is known as “passing off”. This can be a difficult thing to prove, since you need to demonstrate that the trademark is associated with the reputation of your business, that the public was confused by the marks and that you suffered damage as a result. This often requires you to undertake surveys and to provide financial evidence of lost profits in order to support your claim.

In contrast, a registered trademark is much easier to enforce (albeit all litigation is costly). A registered mark can be identified using the ® symbol, but again this is not legally necessary. The rights of a registered trademark are national, meaning even if you only operate in Toronto, you would be able to prevent someone else (for the same class of goods or services) from using the same mark in Vancouver. This would also give you the ability to stop someone using a confusing similar mark in the same line of business or in a confusingly similar business.

Although a registered trademark is easier to enforce, unregistered trademarks can still be beneficial, especially in the early stages of a company where money may be tight. They allow you to build your brand and establish your distinctiveness in the marketplace, which is sometimes necessary to the success of your trademark application. Since Canada (as well as the US) is a first-to-use system, as soon as you start using your trademark (even if unregistered) you begin to acquire rights. This means if someone else wants to register your trademark you can oppose them on the basis that you were using it first. Using an unregistered trademark can also help build the distinctiveness of the mark, which can be beneficial for certain types of descriptive marks, which will be discussed below. That said, if you have a distinctive mark and the means to protect it, registration is the strongest form of protection.

What can be a Trademark?

Not everything is eligible for trademark protection. A trademark needs to identify your company as the source and also has to be distinctive. This means it needs to identify your company and only your company. It cannot be a word that identifies the broad class of goods or services in which you operate, as that would not identify your company specifically. There is a spectrum of distinctiveness when it comes to the registrability of trademarks:

A generic mark is not eligible for trademark protection. This means that this name has become the name the public uses broadly to identify the goods or services and no longer identifies the brand. For example, escalator used to be a trademark, but is now generically used to identify all types of moving staircases. Often, genericization is something that happens to existing marks, and is not often an issue for registration of new marks.

Descriptive marks are also not considered registrable. A descriptive mark is something that describes the quality, character or function of the goods or services. For example, American Airlines is a descriptive mark. It does in fact describe an American-branded airline company.

However, all hope is not lost for descriptive marks, and this is where the use of an unregistered trademark can save the day. A descriptive mark can become registrable if it comes to identify your company as the source, meaning it acquires distinctiveness through use over time. American Airlines was able to register its name as a trademark as the name became distinctive through use and consumers associated it with the company.

A suggestive mark sits right in the middle of the trademark registrability scale. These types of marks are generally registrable as they only hint at the type of goods or services rather than describing them outright. For example, Airbnb is a suggestive trademark. It doesn’t outright describe an online vacation rental business, but the inclusion of “bnb” alludes to a bed and breakfast. However, the complete trademark “Airbnb” does not directly describe vacation rentals, or bed and breakfasts for that matter. As such, it is a step above a merely descriptive mark and is thus considered registrable.

Arbitrary marks are the next strongest on the trademark registrability scale. These types of marks use common, but unrelated, words to describe their business. For example, “Apple” for computers, “Dove” for soap, or “Blackberry” for smartphones. All these marks rely on words that already existed in the English language. However, these words have nothing to do with the goods or services of the company. There is no natural association made between the word and the product. The association arises because the mark is distinctive of the source due to the efforts of the company. For instance, it is only due to Apple’s strong branding that consumers associate the word apple with computers.

Finally, fanciful marks are the strongest type of trademark. These are entirely made-up words that a company uses to identify itself. Lululemon is an excellent example of a successful brand using a fanciful mark. Lululemon has no other meaning, other than the association with exercise wear. These marks are the easiest to register (so long as they are not confusingly similar with an already registered or well-known mark) and afforded the highest level of protection. Since the word has no other meaning, there is no reason that anyone else should have a need to use the mark. The word is completely distinctive of your company.

Registering your trademark

Use is essential to maintaining a trademark. In Canada and the United States, you can apply to register a trademark before you have used it. In Canada, the catch is you must begin using your trademark within 3 years, or your mark risks being removed from the register. As such, if you haven’t started using your mark but you plan to, it can be a good idea to file to establish your date, and then begin use later.

The process is slightly different in the United States. The first difference is that there is state and federal trademark protection. You can register your mark in individual states, but this protection applies only to those individual states. Federal registration provides nation-wide protection of your trademark. Second, the US has a different use requirement for filing – you must have “use in commerce” or “intent to use”. Use in commerce means actual use across state lines (to qualify for federal protection). Intent to use allows you to apply for protection either before you’ve started to use your mark, or if you’ve only used it in one state. However, you’ll need to be able to demonstrate use at the time the office is ready to register your mark.

Similar to the PCT for patents, you can file an international trademark application, though there is no such thing as an international trademark. You can use the Madrid Protocol to file a single application which can then be used as a basis to file in multiple member countries (this includes Canada and the US). However, unlike with the PCT system for patents, you need to file an initial trademark application in your home country before you can take advantage of the Madrid Protocol to file in other countries of interest.

Once your mark is registered, so long as it continues to be distinctive of your company and you continue to use it and pay the renewal fees, you can keep your trademark indefinitely.

Protecting your trademark

Although a trademark can be renewed multiple times, if you fail to use and monitor your mark you risk losing it. You need to make sure your trademark remains distinctive of your company. To do so it is up to you to monitor and enforce your mark. If competitors begin to use your trademark or a similarly confusing mark this can dilute your trademark. Dilution is never good news for trademarks because it can harm your brand. For example, if another company uses your trademark on knock-off products, or to market their own goods, this can confuse consumers. If you allow the confusion to go on for a long time it can be very difficult to later enforce your trademark in the courtroom. A mark that is no longer distinctive can be at risk of being expunged from the register.

As such, it is good practice to routinely monitor your trademark. You can do a simple Google search to see what comes up for your trademark. Also consider common misspellings of your trademark for potential confusing marks. Alternatively, a trademark agent or lawyer can set up regular searches and notify you of any potential trademark infringement and advise you on how to proceed.

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