Written by: Richard A. Schaub

You did it! You took what started as an idea, a passion, or even a dream, and made it into a business. As your business has grown you may have started asking yourself how to protect the brand you worked so hard to build. A great place to start is by registering a trademark in your business name (word mark) or logo (design mark).

The Power of a Trademark

A trademark can easily become one of your companies most important and valuable assets. The average consumer puts considerable value in the brands they recognize, trust, and prefer. For example, there are online search engines, and then there’s Google. There are e-commerce websites, and then there’s Amazon. There’s laundry detergent, and then there’s Tide. Trademarks can have immeasurable value for your business – and you can protect your trademark.

Trademarks also make it difficult for others to benefit from the goodwill and consumer recognition associated with your brand. For example, say someone comes out with foam boat shoes and calls them “Krocs”. With the difference in spelling, this person may think they are being sneaky and getting away with benefiting off the reputation of the “Crocs” brand. However, trademark infringement is not determined solely by the spelling of brand names. Rather, trademark confusion exists when the trademarks and their goods and/or services are so related that consumers would mistakenly believe they come from the same source. In the above example, given the similarity in brand name and goods provided, the “Krocs” brand could reasonably confuse consumers by leading them to believe they are purchasing genuine “Crocs” products.

Choosing a Strong Trademark

If you are still deciding on a brand name, or maybe looking to implement a sub-brand, it is important to choose a trademark that is “inherently distinctive”, meaning the trademark is able to distinguish your goods and services from those of your competitors.

As a general rule of thumb, the more unique the trademark, the stronger the trademark protection. Unique and inherently distinctive trademarks are also easier enforce against others and register with the Canadian Intellectual Property Office.

For a more detailed summary of how to choose a strong trademark please see the article Branding Basics: Choosing A Strong Trademark, written by my colleague, Dr. Angela Keuling.

Why Do I Need a Registered Trademark?

        Nationwide Brand Protection

Put simply, trademarks help your business stand out in the marketplace. Protection for an unregistered trademark is limited to the area where the trademark is recognizable by consumers, whereas a registered trademark is afforded nationwide protection. As trademarks are the identity of a business, registered trademarks are critical for your business to grow and expand.

For example, the trademark of a business that operates in Edmonton, Alberta, may not be recognizable by consumers in Toronto, Ontario. Because of this, a competitor in Toronto may start using the trademark of the Edmonton business and acquire rights to the trademark in Toronto. If the Edmonton business later wanted to expand to Toronto, they would risk infringing the trademark rights of the Toronto competitor – which could lead to costly legal proceedings. However, with a registered trademark the Edmonton based business could enforce their trademark rights against the Toronto based company before expanding.

Online Enforcement

With the internet and online marketing blurring geographic borders, it is now more important than ever to have a registered trademark. Without holding a registered trademark, online brand protection and enforcement is becoming increasingly difficult.

This is because social media platforms, such as Facebook and Instagram, as well as e-commerce platforms, such as Amazon, are requiring proof of trademark registration before they take steps to remove content that infringes your trademark rights. With respect to registered trademarks, it is often better to have it and not need it, than need it and not have it.

If you have any questions about registering your trademark, the experienced Intellectual Property team here at Parlee McLaws LLP is always happy to help.

Disclaimer: This article is to be used for educational and non-commercial purposes only. Parlee McLaws LLP does not intend for this article to be a source of legal advice. Please seek the advice of a lawyer before choosing to act on any of the information contained in this article.