Why Register a Canadian Trademark? Trademarks Defined and Explained

WHAT IS A TRADEMARK?
A trademark is a word, a symbol, a design or any combination used in association with products (wares in trademark lingo) or services. It is a useful tool for distinguishing the products or services of one entity from its competitors. A trademark may come to represent not only products and services, but also the reputation of the provider of such products or services. As such, a trademark may constitute valuable intellectual property.

Registration of a trademark is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. Registration is not obligatory but is recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific products or services. It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage. Furthermore, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be considered.

SELECTING A “GOOD” TRADEMARK

In evaluating a trademark, there are four general categories of terms:

(i) distinctive terms;
(ii) suggestive terms;
(iii) descriptive terms; and
(iv) generic terms.

Generally, the terms that are easiest to register and to protect as trademarks are “distinctive” terms. Distinctive terms are often arbitrary or fanciful terms. They are unmistakably capable of identifying an owner’s wares or services without any likelihood of confusion, for the average consumer, with the wares or services of another party.

At the other end of the spectrum, “generic” terms will never be capable of registration. The meaning of a generic term is synonymous with the wares or services themselves (e.g., zipper, escalator, etc). Generic terms are incapable of distinguishing the wares or services of one party from those of another. Between these two extremes lie “suggestive” and “descriptive” terms.

A “suggestive” term is one that merely suggests the nature, quality or characteristic of the wares or services in relation to which it is used as a trademark. It is possible for suggestive terms to be registered as trademarks but they make for “weak” trademarks because they often do not provide their owner with the ability to prevent others from using marks which are very similar and used in relation to similar wares or services, or that are identical marks used in relation to different wares or services.

A “descriptive” term describes the nature, quality or characteristic, the intended purpose or function, or the end effect upon the user of the wares or services in relation to which it is used as a trademark. Descriptive terms are not registrable unless, over a period of years, the terms have acquired, in the minds of the public, a special, identifiable meaning (a “secondary meaning”) which links the wares or services to the owner of the trademark.

When choosing a trademark, you should make every effort to use arbitrary and fanciful terms. Suggestive terms make for very weak trademarks and should be avoided whenever possible. Descriptive and generic terms should never be used as trademarks. Furthermore, terms which have a specific meaning within a particular industry should be avoided in relation to wares or services pertaining to that industry as they tend to make the mark suggestive or descriptive and therefore more difficult to register and to protect.

Trademarking the Name of a Band

Most musicians know about copyrights. Without copyright protection, other musicians and music companies might claim your songs as their own, reap profits from them, and even sue you if you perform your own compositions. Many musicians are not aware that a similar calamity can befall a band that does not properly establish and protect trademark rights in the name it chooses.

Band names and logos as trademarks

A trademark is any word, phrase, symbol, sound or design that is used in commerce to identify the source of goods or services. Music recordings are goods, and entertainment is a service, so a name that is used to identify the source of a song or the musicians who perform it is a trademark. For example, the name, “Smashing Pumpkins” is a trademark that is used to identify a particular band’s sound recordings and musical performances. It is also a trademark for posters and shirts displaying that phrase.

Copyright law does not protect names, titles or short phrases. Registering a copyright for a collection of songs with the band’s name on the cover may protect the band’s rights of authorship in the music, but it will not protect the band’s name. For that, trademark registration is needed.

Logos are a special case. If a logo is an original work, then the artwork may be copyrighted. When it is used to identify a particular band, then it may also be protected as a trademark.

How trademark rights are created

Trademark rights are created by using a name or symbol in connection with goods or services to identify the source of the goods or services. Merely deciding on a name for a band is not enough, even if the name is written down on a piece of paper, witnessed, notarized, and kept in a safe deposit box. Trademark rights come into being only when the band takes the further step of putting the name on a product (such as a CD, or a digital recording that is made available for download on the Internet) or an advertisement for the product, or publicly performs or advertises its entertainment services under the name.

Trademark rights can come into existence without registration. As between two bands with the same name, the first to use the name in commerce to identify the source of their musical products or services (such as affixing the name to a CD that is offered for sale, or using the name in an advertisement or flyer for a concert performance by the band) will be the one with trademark rights.

Why registration is important

Since trademark rights are linked to first use, some websites offer to protect a band’s name by simply listing the name in a band name registry. While this can generate some evidence of use, it is not determinative of the issue, and it is not sufficient for trademark protection. Only registration with a state or federal trademark office will establish a prima facie case or a legal presumption of trademark ownership.

Domain Name Trademark Explained

Domain name registration is a simple task by itself. All you have to do is just pick a domain name of your choice, make sure it is available and pay the registration fee to get the registration done. Although this is true in most cases, sometimes the domain name chosen by you can result in a trademark infringement which could ultimately lead to legal battles and expensive settlements.

Domain name trademark infringement can be avoided easily if you are aware of the basic pointers that should be kept in mind before registering domain names. This article aims at providing all the information you need about domain name trademarks, how to get the trademark for a domain name, conflicting domain names, trademark infringement etc.

Domain Name Trademark – What is it?

Domain names like Dell, Samsung, Lenovo or Canon easily qualify for trademark protection as they do not contain common words from daily life. If someone uses a Dell or Canon in their domain name without the approval from the owners of these trademarks, it leads to a trademark infringement.

If a domain name consists of commonly used terms like ClothingLine.com or FoodDelivery.com, then they do not qualify for domain name trademarks as you cannot stop people from using terms like food, delivery, clothing, etc., in their domain name.

How and when do domain names qualify as a trademark?

If your domain name consists of keywords or terms that are commonly used to describe your products or services, then it is unlikely to qualify for trademark protection. On the contrary if you come up with a domain name like konduit.com that is unique by itself, it is more likely to qualify for domain name trademark and you can notify the U.S. Patent and Trademark Office (PTO) of the intent to use the name in commerce as a trademark and apply for trademark protection. Although there is no legal requirement that you carry out a federal registration of your domain name as a trademark to use it for your business, it always good to register the name trademark to avoid unforeseen legal circumstances in the future.

According to a rule by the Ninth Circuit U.S. Court of Appeals, if a domain name has to qualify as a trademark, it should be in use by the businesses for commerce — that is, to sell goods or services — before it can be protected as a trademark. This means that you can get trademark protection for a domain name only if you are actively using it for commercial selling and buying of your products or services. If the name is not actively used and you just own it, it does not qualify for trademark protection.

How can a Domain Name be trademarked?

The process of registering your domain name for trademark protection is simple. However, as mentioned before, it is important to ensure before the registration that name indeed qualifies for trademark protection. The steps to trademark a domain name are listed below:

Do a trademark search

The first step to carry out before registering the domain name is to do a trademark search on the US Patents and Trademarks Office website. When you are sure that the name chosen by you does not clash with an existing trademark, you can search for its availability and register it for your business.

Fill an application for registering the Domain Name as a trademark

Once you register your domain name and use it for your commercial business, you can apply for registering it as a trademark with the US Patents and Trademarks Office. The government charges a nominal fee for filing and processing of applications. It is important to note that the fee charged by the government is applicable even if your application for a trademark gets rejected for conflicting with an already registered and existing trademark. It is always better to take extra care and ensure that the domain name you have chosen does not clash with an already registered trademark.

How to Choose a Trademark Attorney to Register Your Small Business Trademarks

For most established businesses, its most important asset is its brand. When one considers some of the most prominent brands today, it becomes clear that without the exclusive use its owner enjoys over it by virtue of trademark laws, all goodwill that the business benefits from is lost. Whether it’s the main company brand, its logo(s), or one of the many other trademarks that a company uses in the marketplace to identify its various goods and services, protecting these valuable trademark assets is one of the most important things that any business should address.

So where does one turn to ensure that its trademarks are protected to the maximum extent allowed by law – in other words, how do you figure out the answer to “how do I get a trademark” for words, logos or virtually anything that can distinguish the source of your products and services from that of others? The process of getting this protection for a trademark in the United States involves registering the trademark with the United States Patent & Trademark Office (USPTO). There are several options.

One can turn to a law firm. This is certainly the most expensive option. Trademark attorneys at law firms generally charge by the hour and, depending on the size of the firm, hourly rates can range from $250 to $600. Given the uncertainties involved in the trademark registration process, this can add up to an unpleasant surprise when all is said and done.

Unfortunately, a lot of people use the services of so-called document filers, including the giant of the industry, LegalZoom. This is never the right choice. It is a little known fact that these services do not in fact register your trademark. They merely file an application with the information that you provide to them without any legal review or follow-up. If you are thinking of using such a “garbage-in, garbage-out” service, you might as well save your money by cutting out the middleman and doing it yourself.

One can attempt to register a trademark on one’s own. In fact, anyone can represent oneself in any legal proceeding, but it is the rare individual who is willing to take on the challenge of “playing lawyer”. The trademark registration process is fraught with potential snags that only an experienced trademark attorney can navigate. An experienced trademark attorney knows the law and the “tricks of the trade”, and has had significant experience with the USPTO – thus being in a position to most accurately evaluate the outcome of choices to be made and arguments to present in order to get the ultimate prize of a registered trademark for her client.

So, now it should be clear that an experienced trademark registration attorney is the smart choice for how to trademark your brand(s) – but how do you find one? The best deals are online. There are many trademark attorneys with websites through which you can engage the attorney to initiate a trademark application. There are several key things to look for. A description of each of these follows.

Look for a “Real” Flat Fee

While many trademark registration attorneys will advertise a flat fee, be very careful about this claim. The vast majority of so-called flat fee trademark registration services excludes certain work, and will instead charge an hourly rate for this excluded work. The most significant work charged by the hour is the work involved in responding to “substantive” trademark office actions issued by the USPTO. It is very common for the USPTO to at least issue an initial refusal to register your trademark based on one of the many statutory provisions of the trademark law that place restrictions of what may and may not be registered as a trademark. A response to a trademark office action can be a very time consuming process. You want to be sure that this is included in the advertised flat fee. Virtually always, it is not but you can find one by using well thought out Internet searches. Other categories of work are similarly very often excluded from the flat fee, including submitting certain types of evidence, filing certain necessary forms during the registration process.

Grief, Loss, and Spiritual Constipation

Spirituality is one’s personal way of relating to mystery, nonphysical reality, and that deemed greater than the self. You can be truly spiritual and not religious. And, you can be religious but not very spiritual. Spiritual connections are commonly based on faith in life, trust, love, and hope. Spirituality has long been associated with positive health outcomes from many studies; it has been written about in all sorts of medically oriented publications as an integral part of treatment. It is a mainstay of grieving well.

Spiritual constipation, on the other hand, is the consistent blocking of perceptions and beliefs of any of the above by questionable religious dogma, hardcore materialism, or scientism (all can be reduced to and explained by cause and effect) with full attention only given to physical reality. Regardless of the naysayers, spirituality is and always will be here to stay.

We all have bouts with spiritual blockage at various times throughout life and need to step back, reflect, and clear. However, when great loss and change occurs in life, such as the death of a loved one, most secular explanations alone bring little, if any, comfort. In my experience with the bereaved, they automatically turn to some form of comfort from loving friends, long held beliefs or practices, support groups, counseling professionals, their Higher Power or some combination of the above.

If, as often happens, you have given little thought to the vast potential and wisdom of your spiritual self, a great loss can be the perfect time for making inroads on spiritual constipation. Here are some approaches to consider for clearing. Take time to think deeply about them and what they can deliver.

  1. Who or what do you care for? Connections are at the core of the spiritual self. Friends, relatives, those grieving with you, caregivers, all can be powerful spiritual resources for you to grow closer to by the way you relate to them. Their love and caring, which you can reciprocate, is a part of nurturing that all can benefit from through our interactions. Even as you grieve, work on strengthening your ability to be kind and caring.
  2. What brings you peace of mind? What setting in the past or present was the source of great peace? Review your memory bank for the scenes, people, conversations, or symbols that placed you in a positive frame of reference. Ask yourself what you need to let go of to choose peace over conflict. Even as you grieve, work to bring peace into your life and especially into your decision-making.
  3. When do you break from the clamor of the mundane? When I was working full time, each day at noon I would lock my office door. Then sit in a chair or lie down on the floor, and meditate using a mantra or play a soothing tape for 20 minutes. I deliberately turned away from the rat race. Body and mind were refreshed. New thoughts popped in. Every day you can find your release time, let the world go by, and bring healing silence into your life. Even as you grieve, listen to what silence has to teach you about life, the spirit, and your grief.
  4. What gives you a sense of purpose and meaning? Especially now when a loved one is no longer physically present, your purpose, mission, or life’s meaning will be evaluated. You can establish a new relationship with the deceased since no relationship dies because our loved one dies; you will forever be a mother or father or have a mother and father or sibling or friend. And, equally important, you can clarify your purpose in life at the same time you work on that new relationship. Someone someplace will always need you. Even as you grieve, seek to give and your spirit will soar.
  5. Are you open to your intuitive self? Intuition is the immediate knowing of something without the use of reason or having prior knowledge. How can that be? Where does it come from? Everyone possesses intuition but not everyone consciously uses it. You are more than just a physical machine living in a mechanical universe, as many are led to believe.

Millions of people have experienced a reality that transcends space and time, although some scientists and skeptics pooh pooh any mention of such a reality. But start with your intuitive self to experience your spiritual side, that amazing human faculty that speaks truth. Ask and listen intently; everything you do begins with the thoughts that show up. Even as you grieve, be open to the wisdom of your intuition, work to develop it (start by giving hunches and feeling their due), and think about why mystery and the unseen is an inherent part of life.