Stemp & Company, Calgary Patent Lawyer - trademarks

By: Stemp  09-12-2011

Why would I need a trademark or trade name? Or both?

If you have a business that you is attempting to establish a recognized name for, establishing a trademark is critical. If you don't register, anybody can use your business name without discretion and damage the credibility of your company.

As well, if any other company establishes a trademark with your business name, your business name becomes their property. They can force you to stop using the name, have your phone numbers redirected to their office, and confiscate any marketing materials using their trademarked name. You can also lose any value in established advertising that you have already spent money on.

This depends solely upon your need to protect your name. Many people assume that their name is protected with a registered trade name, but it is not. A trade name should be trademarked for protection. There is a risk in not establishing a trademark for your business name because it leaves your business vulnerable: someone else can trademark your business name, and force you to change yours. You stand to lose a considerable amount of business and the value of your established name.

How do I get a trademark?

The first step is to have a "name search" conducted. If your name is not already trademarked, then the application can begin.

We are often asked when the best time to prepare and file an application to register a Trade Mark with either the Canadian or United States Trade Mark Offices is. Overall, it is in your best interest to apply as quickly as possible. Any delay in filing your application can damage the possibility of your application being allowed and being ultimately successful.

There are two types of trademark applications:

  1. An application to register a trademark which you are already using.
  2. An application to register a trademark which you are proposing or intending to use.

1. Trademark which you are already using

In the case of a trademark which you are already using, it is the date that you began to use that trademark which is critical.

For instance, if you began to use a trademark January 1st 2000, and someone else claims that they have been using the same trademark starting June 1st 2001, then you have priority over their application, based on your claim to prior commercial use of the trademark.

The same principle applies if you claim to have used the trademark since January 1st 2000 and someone else applies in the Trade Mark Office to register the same trademark any time after January 1st 2000. This is including when they are not yet using the trademark and their application is based on a "proposal to use" it.

On the other hand, if someone files an application with the Trade Mark Office on January 1st 2000 for a trademark which they are proposing to use, and you file an application some time later to register the same trademark, but your application is based on actual use of the trademark starting on a date after January 1st 2000, the party who has filed their application on January 1, 2000 will be successful and you will not.

This will be the case even if the party who files January 1st 2000 takes several years to complete their application, and you commence using the trademark before they do. In this case, the Trade Mark examiner will usually decide that the date which counts is the EARLIER of the date of filing of your application, or the date of actual use of the trademark. Even if you begin using the trademark before someone else does, if they have filed their application before you, their application will succeed and your application will fail.

You cannot rely solely upon earlier date of use of the trademark to ensure successful registration of it.

2. Trademark which you are not yet using

In the case of a trademark which you are not yet using, it is critical for you to obtain the earliest possible filing date. If you file an application based on "Intention to Use" the trademark, and someone else files an application on the same basis, the earlier date of filing will determine whose application has priority.

If you file an application based on your intention to use the trademark and someone else files an application afterwards, unless that applicant can prove that they began using the trademark before your date of filing, then your application should be successful.

Even if someone has been using the trademark from a date before the date you file your "proposed use" application, unless the party claiming prior use files an application at the same time that yours is still pending, then your application should normally be allowed.

It is possible under the Trade Mark Act for the party who claims prior use to be able to contest your registration of the same trademark. However, such "contesting proceedings" are expensive and not certain in whether or not they will be successful.

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