Brand Protection: Essential Consideration For All Entrepreneurs

SELECTING A BRAND

What is a Brand?

• A brand can be a word mark, or an expression, and both might be used with design features; a brand can also be a logo or a slogan, all of which can form part of your brand.
• A brand identifies the source of your goods or services.
• Over time, a brand becomes a form of shorthand and conveys to consumers a set of perceptions, associations, values and personality that consumers associate when seeing it. For example, those perceptions and associations are automatic and are different if I say COSTCO versus HOLT RENFREW.
• Over time, brands become a valuable business asset. And they can be sold and licensed and generate profit that way.

Different Types of Brands

• The first step is to come up with a brand that you like – and that you think you'll be able to use and protect.
• It can be tempting to choose a brand that basically describes your product or service. Your idea is that doing so will make it easier for consumers.
• But what is a better mark is one that is unique or made up.
• That way, no one will be able to argue that they came up with it on their own – so it makes it possible for you to stop their use.
• And, if you want to, you can also apply to register a mark that's non descriptive, and obtain exclusive federal rights that way.
• Ultimately, what makes a brand unique, strong and defensible is what you do to educate consumers so that they instinctively associate the brand with you.
• Examples of unique and tstrong brands are what we call “coined expressions” like: GOOGLE, XEROX, KODAK, NIKE.
• A middle ground are “suggestive marks” like: HOME DEPOT, SUNRISE DINER, BREWS AND CUES.
• And it it's best to avoid marks that are “descriptive” like: THE PIZZA PLACE, CLEAN AND FRESH, YOUR TRUSTED MOVERS.

CLEARING A BRAND

• Once you've come up with a brand or a few brands that you think could work, it can be useful to check to see whether they're now in use or might have been used recently with the same or similar goods and services.
• You need to avoid using a brand that is associated with the goods or services of someone else – both to make sure that consumers are not confused and relatedly to make sure that you're not asked to stop using – maybe after a high profile launch and after having invested in your branding and marketing.
• One way to check is to review or have someone review for you whether the mark or one similar to it was previously applied for – maybe starting with Canada and the U.S. And you can either search online yourself or arrange for a more indepth online search that would be done by an experienced searcher.
• Depending on how long you plan to use your mark and where you'll offer your goods and services, you might want to invest in these types of searches.

PROTECTING YOUR BRAND

Possible Registration:

• Whether you apply to register your mark depends in part on how long you plan to use it.
• The advantage of a federal trademark registration is that it gives you the exclusive right to use the mark across Canada.
• You can prevents others from using the same or a similar mark based on your past use, but only where you've used the mark. If you start operating in Toronto and someone in Calgary and starts using the same mark – you can't stop them without a lot of effort and perhaps not at all. If you've registered the mark, it's a lot easier.

Registration is Country Specific:

• Registering in Canada does not protect you in any other countries. And, in some countries, you have no rights, even if you've used the mark, until you've registered.

Use It and Use It Well:

• Whether your mark is registered or not, it's important to use it, to use it consistently and to use it well.
  • If you don't use your mark, your rights, over time, can no longer be enforced and, basically, it becomes free game for someone else, even if you own a federal registration.
  • A trademark should be used as an adjective – to describe the type of product or services. One classic example is the mark KLEENEX which, in some countries, has been found to be invalid because, over time, it's become another name for a facial tissue, rather than a type of facial tissue from a given source. And the same for FRISBEE, THERMOS, ROLLERBLADE to name a few.
  • And, finally, although it's not required, it's a good idea to use the TM notation and have it appear next to your mark – to put others on notice that you consider that word, expression or logo to be your exclusive property.

DEFENDING YOUR BRAND

• You want to make sure that you stop others who use your brand without permission.
• Those will include any parties who are doing so innocently – and of course those who use it to confuse consumers.
• There are different steps that can be taken – depending on how aggressive you want to be or feel that you need to be.
• They might or might not involve a lawyer, but it's often a good idea to check with a lawyer to make sure that you're on the right track and won't cause more harm.

PLAN WITH A PROFESSIONAL

• Aim to discuss your plans early with a trademark professional so that they can advise you of what you should do when, based on where you want to be in a few years – and to make sure that you don't miss the boat and either have someone rip off your mark or, perhaps worse, block you from expanding when the time comes for you because they're now blocking you in those other countries.
• I've practiced in this area since I was called to the Bar in 1994 – both in a boutique firm, a multinational firm, on my own and now with Fogler Rubinoff.
• What in part drew me to Foglers is their focus on mid-size businesses – which fits with one of my career goals of providing strategic advice and support to businesses of all sizes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.