Should I register my trademarks?
What are the benefits of trademark registration?
While unregistered trademarks are afforded some limited protection in Canada (that’s why you should place a ™ sign next to all of your names, logos and taglines), there are significant benefits that come with the registration:
- Registration protects your trademark all across Canada, whereas unregistered trademarks can only protect you in geographical areas where you can prove that your brand is known to enough customers.
- Registration provides free and automatic protection against others registering identical or similar trademarks. The Trademarks Office will not register any trademarks that are confusingly similar to the mark that you applied for or registered. That means that simply by applying to register your mark you can prevent a competitor from registering a trademark similar to yours.
- Registered and applied for trademarks can be searched and found in the Trademarks Office database. Most companies will not adopt a name that might be confusingly similar with trademarks that are found in this database.
- You can apply to register a trademark before you start offering products or services under that brand to the public. Unregistered trademarks are only protected if they are well known to the public.
- A registered trademark is presumed valid. Certificate of registration of the ownership of the mark. Often, showing the certificate to the judge is sufficient to establish rights in the trademark. In case of unregistered trademarks, you must prove that your name, logo or tagline are actually trademarks, and that you own them.
- Registration serves as public notice that its owner has a claim to exclusivity of that mark.
- The term of registration is 15 years, renewable for an unlimited number of times.
- After 5 years of being registered, a trademark becomes incontestable, unless it was registered with knowledge of prior rights of third parties.
- Registration provides additional statutory remedies against trademark infringement, depreciation of the value of goodwill, and becoming disentitled of the trademark due to the adoption of a confusing official mark.
Should you do it?
Generally, these are important benefits.
However, the only thing that matters is are they important to YOU in YOUR particular situation?
To determine if you should register your name, logo or slogan as a trademark, ask yourself these three questions:
1. Is it going to be a problem if my business is forced to change its name, logo or slogan?
Here is a not so uncommon scenario. You have been building your business and then, several years down the road, you receive a cease-and-desist letter from a lawyer representing some other business that demands that you immediately stop using THEIR trademark.
At this point, you have 2 options: stop using the trademark or start a fight.
A fight will be very expensive, even if you win. So if you see yourself fighting over your trademarks, you should definitely register them.
If you think that you would rather give up, estimate how much it would cost you to change all your signage, marketing materials, domain names, website, etc. If the number is more than $15,000, you should definitely register your trademarks.
2. Is it going to be a problem if my competitor started using my trademarks to advertise their products and services?
Here is another scenario. You start noticing that you are losing customers to your competitor who is using YOUR trademarks to sell THEIR products and services.
Some of your customers think that you may have a joint venture with the competitor and will often even complain to you about problems they have encountered when buying from your competitor.
Some of them simply don’t care. They are attracted by the power of the brand you created, and that is it.
If that happened to you, would you consider taking the competitor to court for trademark infringement? If the answer is yes, you must definitely register your trademarks.
3. Will my trademarks help me get more money for my business if I were to franchise, expand or sell it in the future?
A trademark registered in Canada gives you protection all across Canada, including locations where nobody has even heard of your business. Likewise, a trademark registered in the United States gives you protection all across the U.S. This is a great advantage over unregistered trademarks that provide some limited protection to business owners, but only in the area where the public is actually aware of your trademark.
Trademarks can become an extremely valuable asset for your business if you decide to franchise, expand or sell it in the future.
Think of the HELLO KITTY brand. They don’t even need to make any products anymore. The brand sells itself.
So ask yourself, does your brand have any value if you were no longer a part of the business. So “JOE'S CAR WASH” may be an important brand for Joe, but if Joe sold the business to Harry from another province, would Harry keep using the name "JOE'S CAR WASH"? More importantly, would Harry pay you an extra dime for the right to use the name "JOE'S CAR WASH"?
If your answer is yes, you should register your trademarks.
Just to be clear, you don’t need to answer yes to all three questions. If you answer yes to at least one of them, you should definitely consider registering your trademarks.
This is where the Trademark Factory® can help.