What Does Using a Trademark Mean?

You hear it all the time: "We have been using this trademark" or "They used our trademark."

The term "use" has a very specific meaning for trademarks.

Find out what it is:

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TRANSCRIPT

“Use of a trademark”, “using a trademark” is a legal term that's not really the same as the common-sense use of the word. When I mention somebody's brand, I'm kind of using it. When I say I have an Apple phone or an iPhone, or when I say I'm using Canon camera or when I say, whatever, I'm mentioning the brand, I'm kind of using it, but I'm not using that brand in the trademark sense of the world.

What does it mean from the trademark perspective to use a brand? That answer is not intuitive, but it's not really that difficult to understand.

If you have a brand that covers physical product, you are said to "use" that trademark if you're selling those products under that brand. If the product itself has a label on it, or if the packaging has a label on it, or in the worst case scenario, during the process of a sale of a product there is some physical contact with that brand with a customer. For services, it's about rendering those services under that brand, or advertising those services under that brand.

Interestingly, you may have noticed, for services, advertising of the service is sufficient to constitute use. It's not the same with products. Just because you're starting to advertise a product on your website, and you're going to say, "This is going to be the best product in the world, that's its name," until you actually start selling the product that bears that name, you're not using the trademark for that product.

That is extremely important for both determining whether you're infringing on somebody else's trademark, because if you're not even using their trademark, you're not infringing on their trademark. Also, it's important in terms of your understanding whether you're filing your trademark based on existing use, or intent to use, or what's called “proposed use” in Canada. It's also important for opposition purposes. Again, let's say there's a dispute, who started using that brand first. Again, coming up with a brand is not enough. Just because you came up with the idea for the brand first, doesn't mean that you've been using that trademark first.

The same idea with a website. For example, you came up with a name, you've registered a domain name, but you didn't build a website, you didn't start offering those services. If you register a domain name today and then somebody else comes up with the same idea tomorrow, and they trademark that name, sucks to be you. They're going to be the one owning the brand because you haven't built anything. Nobody knows about you under that brand, and simply registering a domain name doesn't give you any trademark rights. So be very careful to have a proper understanding of what trademark use means.

Again, coming up with the idea is not trademark use. Simply mentioning a brand is not use. Advertising a product is not use. Selling a product with a name on it is use, and offering services and advertising services is use.


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

See our answers to other frequently asked questions about trademarks or leave your comments below!


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