YouTube Transcript: GoXL: Trademark Basics for Start ups
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Summary
Core Theme
This content provides a foundational understanding of trademark law for startups, emphasizing the importance of due diligence, distinctiveness, and proper application procedures in Canada to secure exclusive brand rights and avoid infringement.
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[Music]
hi I'm Emily fel Fraser an intellectual
property lawyer at Galan wlg based in
Vancouver BC hi I'm Laurie Hall Trey my
partner at galleon wlg in the Hamilton
office welcome to our go excel module on
trademark basics for startups if you're
running a small business you likely
develop a business name or brand to
establish and distinguish your goods and
services in the marketplace
it's not all about fancy logo design
though did you know you can get
exclusive rights to your brand in Canada
if you register it as a trademark did
you also know that if you don't check to
see what else is out there there is a
risk that your newly developed brand
could be infringing on another entities
already existing trademark rights today
we're going to guide you through the
following topics first we'll give you a
brief overview of trademark law and
what's important for your business then
we'll walk through the steps for
developing a strong trademark including
the due diligence you should conduct and
finally we'll give you a checklist of
what you'll need to put together for a
trademark application trademark due
diligence and protection might seem like
a low priority when there's so much on
your business to-do list but putting in
a little effort now will likely save you
lots of time and money down the road
just remember that our discussion state
isn't intended as legal advice we
recommend contacting a trained
professional before proceeding with any
first of all what is a trademark
technically speaking a trademark is any
word symbol design slogan sound or
combination of these elements that
distinguishes your business's goods or
services from those of others in the
marketplace Google Kodak Sony Nike these
are a few examples of trademarks that
immediately call to mind the goods and
services that are associated with a
trademark allows a consumer to link a
good or service of the stores and can
also be about your quality based on the
goodwill and reputation that the source
has acquired a trademark particularly a
registered trademark adds value to a
business and can help leverage goodwill
for new product lines or services what
kinds of rikes
come with the trademark simply by using
a trademark under Canadian trademark law
owners generally considered to acquire
certain rights in a trademark these are
usually called common law trademark
rights because they are acquired
automatically through use however these
rights are often geographically limited
in scope and can be difficult to enforce
by contrast registering a trademark
gives the robust rights and protection
if you retain a trademark registration
in Canada you have the right to
exclusive use of the trademark
throughout Canada in perpetuity provided
the trademark continues the improper use
and renewal fees are paid every 10 years
this means that you can stop other
people anywhere in Canada from using a
trademark that's the same or confusingly
so how do you apply for trademark you
must apply to the Canadian Intellectual
Property Office to register a trademark
the application process in Canada
usually takes about two years and there
are quite a few steps involved which is
why it's a good idea to get a trade more
professional to help you your trademark
effective professional can also help you
file corresponding trademark
applications in other countries where
once registered you will get similar
protection according to the laws of
those jurisdictions through your
trademark register ball not all
trademarks are available or registered
for example if another entity is using
or has registered trademark in Canada it
has the same or confusingly similar to
your trademark and it's associated with
goods and services that might overlap
with yours your trademark will not
likely be register ball there are other
reasons a trademark might not be reg
tubal for example if the mark is
primarily merely a surname if it is
clearly descriptive of the associated
goods or services if it's a geographic
location and is clearly descriptive or
miss descriptive of the origin of the
associated goods or services or the mark
is superlative it might not be register
ball marks like Frazier's foods
Vancouver clothes or the bus would not
likely be register without evidence
these marks had acquired distinctiveness
in Canada there are also certain other
marks that relate to universities or
government bodies which are prohibited
that's why it's very important to do
some due diligence on your trademark
upfront before you invest lots of time
and money into developing it as a brand
your due diligence will help you find
out whether your trademark might be
infringing another entity's existing
trademark rave and secondly whether it's
likely registerable usually this new
diligence takes the form of searches
searches of the trademarks registers of
the countries you'll do business then
Google searches domain name searches and
searches of company directories among
other things
when searching you're looking for marks
that are confusing with similar to or
identical to your proposed marks that
are being used in the same area of
business that you're currently in or
it's a good idea to get a trained more
professional to help you with these
searches because setting the proper
search parameters can be tricky it can
be difficult to find design marks or
marks that are phonetically similar but
spelled differently than your mark
depending on the results you may find
you have to tweak or pivot to use a
different trademark because the one
so how can you increase the likelihood
of register ability of your mark
the field is more likely to be clearer
the more your trademark is distinctive
keep it simple memorable and unique it
can be tempting to use descriptive
trademarks because they tend to tell the
consumer more about who you are what
goods or services you're offering or
where you're located but the more
descriptive the trademarks the more
obstacles to registration there can be
for example the trademark Joe's marina
pub has the benefit of telling the
consumer exactly who what and where you
are but it's a weak brand and may not be
registered well as a trademark by
contrast coined words like Kodak Google
Nike and Sony are the strongest
trademarks because they're inherently
distinctive but you may have to invest
more the outset educating consumers
about what kind of goods and services
you offer I certainly didn't know what a
Google was the first time I heard that
word here are six quick steps for
developing your trademark and
determining whether it likely needs the
criteria for register bility first
identify all markets and channels a
trade your business is currently in and
potentially will be in including other
countries if applicable
next identify all products and services
your business intends to sell or provide
include areas you may expand to in the
future for example will you one day sell
branded apparel provide consulting
services make sure to include them in
your list third prioritize how much you
want to communicate who you are and what
you do by way of your trademark versus
how strong a brand you want to develop
are you a Joe's marina pub or you the
next Kodak fourth brainstorm the brand
elements you want to convey do you want
to include design elements or make a
logo out of your brand
are there specific colors words ideas or
elements you want to communicate
once you have a short list of proposed
trademarks consult with the trademark
professional and conducts searches to
determine whether other entities
trademarks overlap with your proposed
trademarks or if there are other regista
khals if there are be flexible about
pivoting or reimagining your desired
trademark when you're ready engaged a
legal professional to file a trademark
application on your behalf
remember it takes a couple of years for
a trademark to issue to registration in
Canada and there can be various hurdles
along the way if you're not currently
using your trademarks the most important
date to establish your rights is your
filing date alternatively if you're
already using your trademark your rights
will be a combination of your first
youth date and your filing date in any
event it's a good idea to file as early
as you can once you've settled on your
chosen trademark and you're confident
that all potential risks have been
uncovered you are now ready to prepare
and file a trademark application
it is so important that all information
on your trademark application is
accurate filing a trademark application
with errors could result in your
inability to enforce your rights in your
trademark down the road let's go through
a checklist of the key things you'll
need to include in a trademark
application and some common mistakes to
avoid you can access the full checklist
and the link below this presentation the
first thing you need in your application
is the applicant's full name and address
if the applicant is a company this means
the full legal name of the company
including the corporate signifier like
ink or Ltd if your business structure
includes subsidiaries or other related
companies make sure the applicant is the
entity within your structure that you
want to own the intellectual property
after filing you can fix a clerical
error in the applicants name fairly
easily by way of an affidavit but it's
more complicated to fix an application
filed in the name of the wrong entity
your application must include a visual
representation or description of the
trademark if your trademark is a
standard character mark which means it's
comprised only of words letters numbers
punctuation marks or other standard
characters you might find in a keyboard
your application must include a visual
representation of the trademark in black
and white on a background and a
statement that it is a standard
character mark
if your trademark is a design mark which
means it includes a logo stylized
characters or other design elements your
application must include a picture of
the mark not exceeding 8 centimeters by
8 centimeters if the design mark
includes a color the names of the colors
must be specifically described and the
visual representation must include those colors
colors
don't file the application for the wrong
trademark if you follow the wrong
spelling of your trademark or the wrong
logo design your chamber could be
cancelled for non use similarly if you
wish to sue another party for
infringement and you discover that the
trademark on your registration document
is not consistent with how you've used
your trademarks it could be much more
difficult for you to enforce your rights
using that registration you can't
correct the visual representation of the
trademark once it's filed if it's wrong
you have to start fresh with a new
application if you plan to use your
trademark in both the standard character
and design format in other words if you
have both a word mark and a logo you may
want to consider filing multiple
trademark applications for example one
for the word mark and one for the logo
as each type of trademark will entitle
you to a different scope of protection
and a different set of register bility
criteria we recommend asking your
trimmer professional for help with these
another thing you need to include in
your trademark application is a
statement and ordinary and commercial
terms describing the goods and services
that your trademarks associated with
this includes goods and services your
business currently offers as well as
goods and services your pay offer in the
future remember you can always narrow
the scope of your trademark application
your statement would alt must also be
very specific a statement that your
trademark is associated with clothing
for example is not enough you need a
list of specific types of clothing you
plan to brand with your trademark your
lawyer or trademark agent can help you
draft a compliant statement of goods and
services in ordinary commercial terms
as of June 17th 2019 the goods and
services in all Canadian trademark
applications must be classified
according to an International
classification system called the NYSE
classification your camera professional
can help you categorize each of your
goods and services into the proper neath class
class
the fee is associated with your
trademark application will depend on the
number of these classes in your
application the base fee charged by the
Canadian Intellectual Property Office is
three hundred and thirty for the first
class of goods and services and one
hundred for each additional class
these numbers exclude legal fees and
disbursements as these fees can quickly
add up it's better to have a focused
application that is practical about the
goods and services that you're claiming
rather than an application that's over
broad this will also help prevent your
registration from being cancelled down
the road it but turns out you're not
using trademark on the goods and
Canada may not be the only country you
want to sleep trademark protection in
luckily there's an international treaty
called a Madrid Protocol that
streamlines the process of filing
concurrent trademark applications in
other member countries many key
strategic jurisdictions are members of
the brigade's
protocol including the United States the
European Union and the United Kingdom if
you file in other countries within six
months of your fight of filing your
Canadian application you can claim
priority in the foreign jurisdictions to
your Canadian filing date if you're not
ready to file trademark applications and
foreign just jurisdictions that soon you
can always file them after the six-month
window is up it just means you will be
able to claim the benefit of the earlier
Canadian filing date instead the filing
date will be designated as the date your
foreign application was actually filed
whether you're claiming priority or not
be aware that other jurisdictions may
require additional application criteria
such as proving use of the trademark in
that country before your trademark is
registered and that's it thanks for
joining us today
Lori and I hope we've been able to
provide you with some guidance on the
selection of trademarks the risks
involved and some practical tips for
filing a trademark application if you
want to learn more check out my article
Trey my basis for startups which
summarizes the key principles we talked
about today you'll find a link to the
article above this presentation as well
as a downloadable PDF copy of Laurie's
trademark application checklist we went
if you'd like to explore other
intellectual property topics we
encourage you to visit our go excel
homepage to gain early access to other
videos like ours on our virtual IP platform
platform
and don't hesitate to get in touch with
either one of us directly if you have
any questions we're here for you and
we're happy to help thanks again [Music]
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