Should I get a Trademark

Anything can be a trademark, therefore a typical business has at least one trademark and usually has multiple trademarks. However, having a trademark is NOT THE SAME AS owning a trademark. You or your business can have a trademark which it does NOT own. You or your business can be using a trademark which it does not own and which it is not entitled to use, and which could result in you or your business being sued by the person who owns that trademark. Getting a trademark, owning a trademark, and keeping ownership of a trademark are three separate things.

While reading this article keep in mind that (1) having a trademark, (2) owning a trademark, and (3) keeping ownership of a trademark are three separate things.

The title of this article really should have been 'SHOULD I OWN A TRADEMARK ?'. However, as most people think of getting a trademark and owning a trademark as the same thing (which they ARE NOT) I made the title what it was so that people who should read this article would read it.

Example one, if your business is selling clothing, and your business's name is "Gerome's", either because your family name is Gerome or because you like the name Gerome; then if the sign on your store says "Gerome's", or the price tags on your garments say "Gerome's", or the bags or boxes in which you place the sold garments before handing them to the purchaser say "Gerome's", then "Gerome's" is a trademark of yours in addition to being your business name.

Example two, if your business is selling clothing, and your business's name is "Gerome's", either because your family name is Gerome or because you like the name Gerome; but the sign on your store says "Grand Styles", or the price tags on your garments say "Grand Styles", or the bags or boxes in which you place the sold garments before handing them to the purchaser say "Grand Styles"; then "Grand Styles" is a trademark of yours. Gerome's may also be a trademark of yours if it is also on your store's sign, price tags or bags or boxes.

Example three, if your business is selling clothing, and your store's sign has a logo design on it, or the price tags on your garments have a logo on them, or the bags or boxes in which you place the garments before handing them to the purchaser have a logo on them, then that logo is a trademark of yours.

Example four, if the inside or outside of your establishment has a very unique colour scheme, then that unique colour scheme is a trademark of yours.

Anything that people associate with buying your products or services or going to your place of business can be your trademark, if when people see that thing or hear it (if it is a word or music or sound) they associate it with buying a product or service from you.

For something to be your trademark, it has to be something which tells people that they are trading with (ie. doing business with, buying from, receiving from) you.

It is not necessary to own a trademark in order to do business. Whether or not you want to own a trademark is a business decision which most people make based on the value of owning it vs. the cost of owing it. In Canada and in many other countries there are two types of trademark ownership: registered trademarks and unregistered trademarks. It takes time and will cost you some money to get a registered trademark. An unregistered trademark comes to you with no effort and free of charge. Both a registered trademark and an unregistered trademark can be lost if you do not properly protect them. That will be discussed in my article "Protecting Your Trademark".

In Canada and in some other countries unregistered trademarks, known as common law trademarks, automatically come into existence for you free of charge and without you having to do anything at all, except use them to identify your product or service. From this point on I will refer to unregistered trademarks as common law trademarks.

A common law trademark can provide as complete a protection and as nation wide a protection as does a registered trademark. Alternatively a common law trademark can provide only a very limited geographic range of protection. A limited geographic range of protection means that the area in which your trademark will be protected by a common law trademark might be only the city in which you have your place of business, or it might be limited to only the neighbourhood in which your business is located, or it might even be limited to only a few hundred meter radius around your place of business (which is not a lot of protection).

To understand why a common law trademark can be as powerful and as useful as a registered trademark or can be virtually useless, you have to know how your ownership of a common law trademark comes into existence and how it fades out of existence.

In Canada and in some other countries which allow common law trademarks, they come into existence from use. You create a common law trademark as soon as you legitimately use something on a commercial level to identify your product or service as coming from you.

Legitimate use on a commercial level means that you are actually trying to sell that product or service to the public sector which is sometimes in the market for it. For example, if you provide a landscaping service under the name "Great OutDoors" to a few family members or friends, but you have made no effort to get customers from the general public, that is not a legitimate commercial use and in most cases will not result in the name "Great OutDoors" becoming your common law trademark. If you also put up a sign offering your "Great OutDoors" landscaping service, but turn down most people that want to buy your service, that is not a legitimate commercial use and in most cases will not result in the name "Great OutDoors" becoming your common law trademark. Any use that could be accurately described as a token use or as an unusually restricted use, will not be a legitimate commercial use and in most cases will not result in a common law trademark coming into existence.

A common law trademark will come into existence when you begin conducting a business that is legitimately trying to do business. You will automatically and free of charge own that common law trademark within the geographic area in which that trademark has become known (to the people usually in the market for your product or service) as representing your product or service.

For example, if you are selling shoes, then the people usually in the market for your product or service (ie. your target market) is everyone, because everyone buys shoes. Therefore, a shoe store's common law trademark ownership will extend geographically as far from the physical location of that shoe store as can be proven the general population associates that trademark with that shoe store.

For example, if Janet Mylow owns a shoe store, and the sign on her shoe store says "For Your Feet" or her price tags have "For Your Feet" on them, or the bags or boxes in which the shoes are handed to their purchasers say "For Your Feet", then "For Your Feet" is Janet's shoe store's trademark. If she has not registered it in the Trade Mark Office, then it is her common law trademark. But that does not mean she owns that trademark for the whole country. It does not mean she owns that trademark for the city in which her store is located. She may not even own that trademark within a 200 meter radius of her store.

A common law trademark is only owned within the geographic area in which you can prove the target market for your product or service knows that the trademark represents your store, product or service. Hence, for her shoe store Janet could only claim common law trademark ownership of her trademark "For Your Feet", within the geographic area in which she could prove that more than a negligible portion of the general population know that "For Your Feet" is that name of the shoe store owned by her or at least that they know it is the name of a specific shoe store somewhere within that geographic region. (How Janet could prove that, and when she would have to prove it will be discussed in my article: "Should I Apply to Register my Trademark ?")

The bottom line is that a trademark is anything that represents and distinguishes your products from those of your competitors. Therefore, every busines has at least one trademark; but that does not mean the buisiness owns that trademark. This is not crazy talk. Think about you own first name. My first name is Shawn, but do I own that name ? No I don't. I have met other people named Shawn and I have never once thought that they stole my name or were wrongly using it without my permission, because while I have a name, I know that I do not own it. Trademarks are like that, all businesses have at least one, but whether or not they own their trademark(s) is a whole other issue.

The easiest and most reliable way to own a trademark is to register it in the Trademark Office of the country in which you want to own that trademark. However, registering a trademark is not like buying something, where you pay your money and you get the thing you bought. You cannot simply register a trademark. You have to apply to register a trademark. There is a government Trademark Office fee to file the application, and if you hire a lawyer or trademark agent to do the work for you, they too will charge a fee.

If your trademark application is successful, then you will own the trademark in the country in which you have registered it. You will not own it world-wide, you will own it in the country in which you have registered, no-where else. Trademark applications can be filed in as many countries as you are willing to pay for, and there are some international conventions which allow that to be done with less effort and less expense than filing separate trademark applications in each country; but there is no such thing as a world-wide trademark where a single trademark registration gives you world-wide protection. There is also no such thing as a European trademark or an Asian trademark, where a single trademark registration gives you protection throughout Europe or throughout Asia.

In my article "Should I Apply to Register my Trademark ?" I will discuss:
- how you apply to register your trademark in Canada and in the United States without
hiring a lawyer or trademark agent,
- what a lawyer or trademark agent should do if you hire them,
- the anticipated cost if you a lawyer or trademark agent, and
- the pros and cons of applying to register a trademark as opposed to having a common
law trademark.