For most businesses, registering a trademark is one of the fundamental matters to be addressed along with the incorporation of a company. When advising our clients, we view trademark registration as a basic building block for a number of reasons. Foremost is the opportunity, depending on the nature of the business, for the nurturing and growth of an asset around which an entire business may be developed. And of course, trademarks are an essential element of any branding strategy.
In addition, the registration of a trademark may serve a protective function. The last thing any business owner wants to find out is that she or he is forced to change their trademark due to another person’s prior registration of the same trademark used in association with comparable products. There is a tangible (and often significant) financial loss when signs, cards, marketing and promotional material have to be replaced due to a third party’s having better legal rights to a trademark you may have been using in your business. There is also the loss of goodwill and, to a certain extent, if not managed properly, reputational “face” when such a change occurs.
There are numerous considerations which arise in conceiving a trademark. The memorandum at the end of this article will provide some general considerations for clients and raise some of the more common issues arising. There will of course be many circumstances where some comments below may not apply
There is no legal requirement to apply to register a trademark. An unregistered trademark may consist of a word or words, or a design logo, used by a business to identify its products and/or services.
Trademark rights are received, simply enough, through use of the trademark. Not only can the trademark user immediately begin using the “TM” symbol with the product, that symbol should be used from the beginning, to show that trademark rights are being claimed in the mark.
A trademark application filed with a government agency may proceed to registration if the owner has actually used that trademark in association with the particular goods and/or services noted on the application. In fact, in Canada and the United States, the trademark owner cannot “get a trademark” by merely filing an application with the government. The only way to create trademark rights is through use. One can file an “intent to use” application for registration, but the registrant must eventually use the trademark before the trademark is actually registered.
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