Should I trademark my business?

As a brand strategy consultancy, we regularly name companies and create logotype and logomarks for our clients. Some who have never gone through the process before haven’t considered the legal implications of their new name and brand—avoiding treading on another company’s property, and protecting their new creation. That’s why, early in the process we involve our legal partners such as Coastal Trademark Services, in trade name and trademark searching. Yes, a simple google search is a good start, but you can not rely on it. When you are investing significant money, time and resources, and counting on it for the future success of your business, you need professionals involved.

Here’s a quick Q&A guide to the  trademarking process:

What is the difference between a trade name and a trade-mark?

• A trade-mark (or trademark) is a word, name, numerals, image, logo, design, slogan, colour combination, the shape of packaging or a combination of these elements used to identify an organization’s wares (its goods or merchandise), services and reputation.
• A trade name is used to identify a business or company—it is the name under which a business operates—but is not necessarily the same name as your trade-name or the name of your organization. Registering your name with the Registrar of Companies does not grant you any trade-mark rights.

Why is a trade-mark important?

• A trade-mark distinguishes your association and its goods and services from other organizations and competitors. It reflects the goodwill and reputation that the organization has established in the sector. It is a valuable asset.

There are two types of trade-marks:

• Common law trade-mark: You acquire a common law trade-mark simply by using it in the day-today operation of your business and are identified by the letters “TM”.
• Registered trade-mark: A registered trade-mark is a trade-mark registered with the Canadian Intellectual Property Office (CIPO) and identified by the ® symbol. A registered trade-mark, gives its owner the exclusive right to use the mark across Canada for 15 years, protected from being misused or imitation by other associations or businesses.

What is the difference between a logotype and a logomark?

• A “logo” is often made of a logotype and a logomark. But not every business has or needs both.
• A logotype is the name of a company that is designed in a visually unique way for use solely by that company. It may be displayed in a font that is customized to some degree or another. Or it may be built from geometric shapes that abstract letters for a specific effect. For example, the  blue IBM letters, or the purple and grey Fedex.
• A logomark or just “logo” or “symbol” generally does not contain the name of the company — it more abstractly represents that company, like the apple in Apple’s logo.

How much does a service like this generally cost?

• An initial quick pass (called a “direct hit search”) can be as little as a few hundred dollars.
• Expect some registration fees toward to the end, but a simple yet comprehensive trademarking process generally costs from one to a few thousand dollars from start to finish.
• A federal or international registration will cost significantly more than a provincial one.

How long does it take?

• Initially, a day or two to get a quick pass to determine if the name or mark is worth pursuing.
• From the initial application to acceptance of registration, it generally takes 12-18 months: Examination phase (approximately 6 months after filing); then the Approval phase (approximately 10 months from filing); and finally the Registration phase  (approximately 12-18 months from filing).

What do I need to provide?

• The exact form of the trademark you wish to apply for.
• The full legal name and street address of the owner of the mark.
• The products and services that are or will be associated with the mark.
• If there has been prior use of the mark.
• A black and white copy of the mark in .tif and/or .pdf format If the mark is to be filed in design format (unless you are just filing for the name).

What are the risks if I skip this step?

• Although searches are optional, the cost of the search is often far less than the cost to later change the mark if it is determined that a prior use exists in a related field.
• You will lose brand equity and brand recognition—it may even inadvertently transfer to the trademark holder’s product/service/company.

I’m a small business, can’t I just do this later?

• We wouldn’t recommend waiting.  It might seem like a big investment initially, but it’s a one-time cost and well worth it in the long run.

Can I just do this myself or must I hire a trademark attorney/company?

• Yes, certainly. You can also do your own plumbing, legal work, accounting, design and dentistry. 😉
• An organization or individual can register a trade-mark by applying to the Trade-marks Registrar at the Canadian Intellectual Property Office (www.cipo.ic.gc.ca).
• A registered trademark agent can save business owners time and money by avoiding problems caused by issues like a poorly prepared application or inadequate research.

The reason you have hired professionals in their respective fields is equally about getting it done well, in a timely manner and avoiding the pitfalls and risks should it not be done properly. If you are ready to invest tens, and even hundreds of thousands, of dollars on an identity, the few thousand it takes to makes sure you will be able to use and protect what you create, and not be unexpectedly challenged in the future, is more than worth it.

At Industrial Brand, we believe that bringing in a legal partner early in the development stages of an identity creation is key to ensuring the work we do will live a long and healthy life. Is your corporate identity trademark protected? If not, we’d heartily recommend you look into it. Starting an identity project? Contact us and we can point you in the right direction.