If you saw a big 'tick' or "swoosh" sign on a billboard, the first thought to cross your mind might be Nike. Or if you were into couture brands and saw a shiny, red-lacquered sole on a pair of stilettos, you would instantly be able to identify them as being from the French designer Christian Louboutin. These, and many other, brands protect their names, symbols, colors and other identifying features with a vengeance! And rightly so, the popularity and the exclusivity of these brands depend on it. The ease with which the masses remember and recognize the logos or designs contributes to their success. The process of protecting designs, logos or colors is through trademark registration.
Read on to learn more.
What is a Trademark?
A trademark is a mark that creates a recognition in the mind of the buyer between the product and its origins. This mark could be anything from words, sounds (the roaring MGM lion), numbers, designs, three-dimensional shapes, colors, scents, moving images, textures, modes of packaging, holograms and more. Macdonald's golden arches design has become synonymous with their restaurants. Similarly, Tiffany's blue is another example of a color trademark that only this brand can use in association with their jewelry. Through the virtue of their trademarks, brands can create a distinction between themselves and their competitors. When a trademark works correctly, consumers identify the goods and services with the trademark owner, resulting in the reputation and goodwill of the brand. A trademark can play a pivotal role in the success of a company.
So, what are the things you need to keep in mind to register a Trademark?
Here are some of the things you may want to keep in mind when applying for a trademark registration:
- A registration strategy for Canada is helpful when applying for a trademark. Review and assess your trademark portfolio, including the likely costs and advantages of applying for registrations in Canada.
- Decide what needs to be registered - you must determine if it is a name, a design, or any other registrable element. The marks cannot be generic or descriptive as nobody should have the exclusive rights to use common industry terms. An example of a generic or descriptive mark would be a salon called Hair Cuts.
- Suggestive marks that drop a hint of the service or the product without explicitly stating them may be registerable as trademarks, however you should expect to have to convince a trademark examiner of its registrability. While suggestive marks are stronger than generic or descriptive mark, suggestive marks can be challenging to register and protect.
- Arbitrary marks are words that are familiar but have no direct relation to the concerned goods or services and, therefore, require marketing to spread awareness amongst consumers regarding their business. Some examples of arbitrary marks are brands like Apple and Amazon.
- Finally, the most effective kind of trademarks are fanciful marks. Fanciful marks are invented words that have no connection to the products and services offered. Like arbitrary marks, they require additional marketing to educate their audiences regarding what is on offer. Despite this, these marks remain the strongest types of trademark. Xerox is an example of a fanciful mark.
- For many types of trademarks, a drawing needs to be submitted at the time of filing that clearly shows the trademark as it is used. These drawings should adhere to size guidelines and will generally be in black and white. If you are planning to protect a design with specific colors then your application must include a drawing in color and a description of the colors used within it.
- You must also pay attention to the classification system and classify your goods and services appropriately. There are currently 45 classes of goods and services into which the various goods and services are classified.
Making an application and creating content for a trademark can be complex and confusing. A registered trademark agent can assist with the process. Once submitted, the application will be reviewed by a trademark examiner. The registration process can be quite slow. At one time, registration was possible within 12 - 18 months after filing. Unfortunately, in 2021, we are currently waiting 28 - 35 months just to hear from a trademark examiner. Once a trademark registers, it is valid for 10 years and can be renewed every 10 years.
Creating a trademark that is distinctive and eye-catching can be challenging. It can sometimes involve hours of brainstorming and market research, making it a costly affair. Protecting your trademarks can help you create a valuable brand identity and can be used to stop copycats. A well-functioning trademark can create goodwill, attention and reputation from target consumers.
If you would like assistance with the Trademark process, reach out to our team.