WHEN SHOULD YOU REGISTER YOUR TRADEMARKS
Welcome back, this is Andrei Mincov with Trademark Factory. In this video you will learn how to decide if you should register your trademark.
Once you have established that you have something that meets the requirements for a trademark, you have to take it one step further and figure out if you SHOULD register it. Just because you CAN register your trademarks doesn’t mean that you always SHOULD.
I have developed a three-question test to help my clients figure out if it is a good idea for them to register their trademarks.
1) Will my brand be worth fighting for if my business receives a cease-and-desist letter from somebody else demanding that I stop using my own trademark?
Here is a not uncommon scenario. You have been building your business, and then one day, several years down the road, you receive a cease-and-desist letter in the mail from a lawyer representing some other business that demands that you immediately stop using TH EIR trademark—that is, in fact, the brand that YOU have been building all along.
It doesn’t matter whether you’re right or wrong. It doesn’t matter whether you were there first or they were there first. What matters is that someone else managed to register the trademark. Trademark registration makes it a lot easier for them to bully you into changing your brand, while at the same time making it a lot harder for you to defend your right to use that trademark even if you were there first.
Essentially, you have two options at this stage. You can comply with the demands and stop using the brand you developed but neglected to protect, or you can start a fight.
If you foresee a possibility that you might end up fighting in court to retain the right to keep using your brand, you should realize that the fight will be very expensive, even if you win because your lawyer will spend countless hours attempting to prove that you have a prior right to the trademark and to cancel the issued registration certificate in someone else’s name. While you may get some of your legal costs back if you win, in most cases this will not be enough to make you whole. So if you see yourself fighting over your trademarks, you should definitely register them.
Even if you think that you would rather give up, estimate how much it would cost you to change all your signage, marketing materials, company cars, packaging, domain names, website, etc. If the number is more than $15,000, you should certainly register your trademarks.
Your answer to this first question would be NO, only if you believe that you would give up your brand without a fight and it would not cost you an arm and a leg to rebrand.
Essentially, this is a risk management question. If you think you may end up in a situation where you would lose a lot of money, whether you fight to keep the brand or just give it up, then it’s a good idea to get your trademark registered right away.
2) Would my brand be worth fighting for if you saw your competitor use YOUR trademark 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 customers simply don’t care. They are just attracted by the power of the brand you created.
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—simply because it would cost you a lot less to win a case against your competitor having ammunition in the form of a trademark registration certificate. Without it, you are guaranteed to spend a bucketload of money.
This is precisely why you don’t want to be in the position of somebody who receives that cease-and-desist letter. If you have to fight with somebody who has a registered trademark, you are fighting an uphill battle. Conversely, if you have that certificate of registration, your chances of successfully telling someone to cease-and-desist using your trademark increase exponentially.
3) If you were to sell, franchise, license out, or expand your business throughout Canada, would potential buyers be willing to pay you more money for your brand?
Trademarks can become an extremely valuable asset for your business if you decide to franchise, expand, or sell it in the future.
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 brand transcends you personally, then it’s a good idea to register the trademark. Think about McDonald’s. It doesn’t really matter who owns it anymore. It doesn’t matter whether there is a person with the last name McDonald working in or on the business. It has value in and of itself.
On the other hand, if the value of your business is limited to your charming personality or the location of your business, or both, then maybe you don’t need to register. If people find you and buy from you because they like you or because you have a nice location on a busy intersection and your name does not go beyond your circle of acquaintances—then maybe registration is not for you.
If you notice that because of your marketing efforts or because of word-of-mouth or for any other reason, a lot of people are coming to your store on purpose and even travelling a fair distance to specifically come to your store, then you might recognize that there is value to that brand that you want to protect. To protect your brand, you need to register your trademarks.
Another way to look into this is by checking your online statistics. If most of the new visits come from those who used generic keywords, for example “Vancouver trademark lawyer”, or “register trademark in Canada”, it means that you have done a great job optimizing your website for search engines. It also means that people are not looking for your brand. They are looking for the generic name of the products or services that you happen to offer.
If, on the other hand, most of the new visits come from people who search for your brand, for example “Trademark Factory”, then you know you have something that is precious and needs to be protected.
Now, the important thing here is to understand that you don’t need to answer YES to all three questions. If you answer YES to at least one of them, it’s a good enough reason to invest immediately in registering your trademarks. A trademark registration can save you tens and even hundreds of thousands of dollars in the long run, and it can also be an asset of massive value in the future if your business becomes successful.
So to sum it up – if you would be upset if you had to change the names you use in your business, if you would be upset if your competitor stole your brand, or if your exit strategy includes expansion, franchising or sale of your business – get your trademarks registered!
In the next video you will learn how trademarks registration process happen in Canada.
If only you knew how much I love helping my clients protect their intellectual property! If you have any questions call me, email me or go to our website at TrademarkFactory.Ca.
Thank you for watching. Talk to you soon.
Watch our other FAQs or leave your comments below!
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Watch our other FAQs:Introduction — What Every Small Business Owner Needs to Know About Trademarks
What Are Trademarks and Why Do We Need Them?
Trademarks vs. Trade Names
What Cannot Be Protected as a Trademark
Trademarks Don't Give Absolute Monopoly Over Words and Images
Registered ® vs. Unregistered ™ Trademarks
7 Benefits of Trademark Registration
What is the Trademark Registration Process
Trademark Tips & Tricks