If you've put the time into differentiating your business with product design or packaging, you want to protect that investment. This is where a registered trademark comes into play.
Today's post will look at what a registered trademark is, and how you go about getting one in Canada.
Editor’s note: Make sure to nail down the domain name for any name or slogan you’re planning to trademark — that way, copycats won’t be able to make money off your ideas online. Check to see if your domain name is available by typing it into the box here.
What is a registered trademark?
People occasionally confuse trademarks with patents or copyrights, so let's clear that up first.
A trademark can be applied to one or more words, sounds, tastes, colours, textures, moving images, three-dimensional shapes, modes of packaging or holograms used to distinguish your goods or services.
A registered trademark has nothing to do with:
- A new useful invention (patent)
- Protection for your original art (copyright)
- The visual features of your product (industrial design)
A trademark is solely the combination of attributes used to distinguish your product.
Registered vs. unregistered
The difference between a registered trademark and an unregistered trademark is that the former is not in the Register of Trademarks in Canada. You don't actually have to register a trademark, but if you end up in a dispute, the legal costs may be much higher than registration fees, as you prove your right to sole use of the distinguishing attribute(s) in question.
Getting a registered trademark
The first thing you need to decide is whether you want to pursue your registered trademark application on your own or hire a professional to do it for you.
The Canadian Government provides a list of trademark agents if you choose to hire someone.
A big benefit here is that the agents will have experience navigating the process of getting a trademark, so they can help you build a solid application in less time.
The downside is that instead of paying between $330 and $430 to apply for your trademark, the cost of an agent will likely add a few thousand dollars on top of the application fee.
How to do it yourself
If you're going to work on your trademark yourself, here are the steps.
1. Do your reading
You should also make sure that you're familiar with items that can't be trademarked, which includes stuff like:
- Clearly descriptive things
That means you can't trademark the word "sweet" to describe your candy, since it's simply descriptive of most candy.
2. Make sure the trademark hasn’t already been claimed
Once you're familiar with those two documents it's time to start a search to see if your idea is already trademarked by someone else.
As you do this, make sure you search for anything that's related to your trademark.
Maybe you want to trademark "North, or be eaten" (which happens to be a favourite book in our house). In this case, you'd also need to look at variations on ‘North’ such as ‘Nord,’ or other variations on the theme to make sure your trademark doesn't infringe on a similar existing trademark.
The Canadian government also advises that you search trade names. These are business names that have become synonymous with the products or services the company sells — for example, Kleenex, Taser, Popsicle, etc. Once that happens, the company can argue that their trade name is a trademark that's unregistered.
3. Apply for your registered trademark
Once you're fairly sure that you have a unique idea, it's time to submit your application for your trademark, which can be done online.
While one application can cover a number of goods or services for a given trademark, you must submit individual applications for each trademark you want to apply for.
Your application will need all of your basic information like address and phone number, but more importantly you'll need to provide:
- A representation or description of what is being sought for trademark registration.
- If colour is a specific feature of your trademark then you must submit samples of the colour along with a description of them and where they appear in the trademark.
- If you're trying to trademark sounds or holograms, then there is a whole section devoted to non-traditional trademark types that you'll need to be familiar with.
What happens next
Once you have your application submitted, the trademark office will search the database to see if they find something that could be confused with your trademark.
If they find something, they'll inform you.
Then they check the application to make sure you have done everything right. Next, your trademark gets published in the Trademarks Journal, after which the public may file an opposition to your trademark if someone feels it infringes on or dilutes their trademark(s).
If no challenges come forward, or any oppositions are decided in your favour, then your trademark is approved.
4. Watch for infringers
Now you or your trademark agent will need to watch the Trademark Journal to ensure that no one infringes on your trademark by using it without your permission. If you find something that does infringe on your trademark, it's up to you to challenge the trademark usage in question (which comes with a fee).
Your ideas are worth protecting
Now that you've finished this, you should have an idea of what it will take to get a registered trademark in Canada. While the process isn't without its complexities, it's also not so crazy as to be inscrutable.
Remember that you need to do a thorough search to make sure you're not infringing on someone else's trademark. Then you need to make a good application and, if granted a registered trademark, you need to watch future trademarks and challenge any that you think infringe on yours.
The information contained in this blog post is provided for informational purposes only, and should not be construed as an endorsement or advice from GoDaddy on any subject matter.