Most entrepreneurs have a general understanding that trademarks are good for business. However, many overlook the importance of having a trademark strategy in place. Simply put, a trademark can be a unique combination of letters, words, sounds, designs or other elements that distinguish one company’s goods or services from those of another. Over time, trademarks can acquire a significant amount of goodwill and reputation and become valuable marketing and advertising tools. Incorporating trademarks into your brand development process early can provide significant advantages for your business. The following are key considerations for formulating your trademark strategy.
1. Prioritize your most valuable trademarks
Many businesses employ multiple trademarks across their product and service offerings. For example, you may operate your business under one name and logo, sell a variety of different products each under its own unique product names and logos, and run a series of advertising campaigns featuring catchy slogans.
Given the value that trademarks can add to a business, you might be tempted to seek trademark protection for every word, logo and slogan in your marketing portfolio. However, obtaining and enforcing trademarks can be costly. As a consequence, it typically does not make commercial sense for businesses (especially those in the early stages) to apply to register every single trademark in their suite of brands. Rather, you should give priority to those trademarks which provide the greatest value. For example, business names and flagship brands are more important than slogans used as part of short-term advertising campaigns or product names that are part of limited-time offers.
It is also important to remember that trademarks can be registered any time before, during or after product launch. Therefore, it is possible to obtain trademark protection after a mark proves to be commercially successful.
2. Keep future business goals in mind
Your trademark strategy should recognize that your brand will develop and potentially expand over time. When filing a trademark application, it is important to consider not only the products or services that your business currently offers but also those that you can reasonably foresee offering in the future. When preparing your application, keep in mind that a trademark application must list the specific goods or services for which you are seeking protection. Once you file your trademark application with a certain list of goods and services, you cannot later amend the application to add goods or services that are broader than those included in the original application. For example, if you file a trademark application today for clothing and your company decides to develop a jewelry line next year, you cannot later amend your trademark application to include jewelry. It would be necessary to file a new application to capture the additional goods.
3. Identify key markets
Trademark rights are country-specific. A trademark application or registration in one country does not grant you rights in another. To ensure trademark availability, you should consider seeking protection not only in the countries in which you currently offer products or services, but also those in which you plan to expand in the future. Otherwise, you may find your trademark unavailable in key markets, forcing your company to launch under a different brand name and, in turn, losing any valuable pre-existing goodwill.
4. Engage in early trademark searching
Incorporating trademark clearance searches into your brand development process at an early stage ensures that trademarks of interest are available for use and registration.
A trademark search should be conducted as early as possible and before significant investments are made launching, advertising and promoting new trademarks. While the upfront cost of a trademark search may seem high for businesses with limited resources, it is relatively inexpensive when compared to the costs of having to rebrand once a product has already been launched or promoted, let alone the costs of defending a possible trademark infringement lawsuit.
While it may be possible to conduct your own preliminary search of the Canadian Trademarks Office database, such simple searches typically only capture trademarks that are identical (or virtually identical) to your trademark and may not identify potentially relevant and problematic trademarks. For example, trademarks that are spelled slightly differently (e.g. LYFE and LIFE), but are identical when sounded or in meaning may not be captured by such a search. Accordingly, it is advisable to seek the assistance of an experienced trademark practitioner to conduct a trademark search.
5. Secure other key assets
In addition to trademark availability searches, an effective trademark strategy should also consider whether corresponding key assets, such as domain names and social media handles, are available. Securing corresponding domain names and social media handles will not only complement your brand protection strategy but will also prevent potential infringers and squatters from acquiring them first.
A thoughtful trademark strategy adds value and prevents misuse of your brand by others. Keeping these considerations in mind while formulating your trademark strategy will help you to build a powerful brand that aligns with your current and future business goals.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.