If you are clearly infringing their trademark, you should cut your losses and comply to avoid being sued. Also, a trademark search before filing your trademark applications could have prevented this situation.

But in other cases, the allegations might be a bit of a stretch. It may even just be a tactic to scare off smaller business owners so that the bigger company can have a broader scope of trademark rights.

One such tactic being to boldly claim that the bigger company’s customers would likely be confused if you continued using your trademark, even if you aren’t selling competing products or services, but then offering to stop chasing you if sign something promising that you restrict your trademark application to cover a narrower scope of products or services.

That being said, some of those bigger companies have the time and resources to make these types of threats and spend $10,000+ to push a losing case to oppose your trademark application for 2-3 years. Unlike with a trademark infringement case with the Federal Court, there is currently no ability for the winning party in a Trademark Opposition Board proceeding to have any of its legal costs paid by the other side.

So unfortunately, to save time and money, sometimes you have to pick your battles and consider accepting a settlement offer even though you have a strong case not to do so from a legal perspective.

Please contact us by email at trademarks@freedinrowell.com to learn more or to begin the process of making money with your trademarks.

The post What Should You Do If You Receive A Cease & Desist Letter? appeared first on FREEDIN & ROWELL LLP.

• Keep it short and similar format.
• Minimalistic
• Distinctive
• Customer knowing your product; suggestive
• See presentation today and article

Whether you are part of a startup or an expanding business, it’s certainly worth spending at least a few minutes to consider your strategy around one of the most valuable assets of your business. Too often people rush to stick with the first name they come up with instead of at least doing a quick Google search to see if someone is already using a similar name in the same industry. Other times, the name is simply too generic. But what about other names that would appear to be “good” but actually make for “bad” trademarks?

“Good” Names

A good name is typically one that is memorable and easy to recognize, so that people can distinguish your product or service from competitors. A name that inherently matches your product or service is also a plus, but that can also lead to the first potential pitfall.

It may be tempting, especially for a business just starting up, to pick a name that allows customers to know exactly what the business is selling. However, names that are clearly descriptive of the character, quality or geographic origin of the product or service you provide cannot be registered as a trademark. The rationale being that no one person should have the exclusive naming rights to call their candy “Sweet” for example, or to call themselves “The Real Estate Agent of Toronto”.

Unique Last Names

It may also be tempting to put your family name on your business followed by the name of the services you provide, especially if your last name is less common. However, unless your last name happens to have another meaning in the ordinary language or you are the only one in Canada with that last name, it will generally be considered a “bad” trademark. The rationale is that someone else with that last name should also be allowed to use it as a name for their business even if you used it first.

There are exceptions to this, of course, as there are many famous brands to point to (e.g., many fashion brands, McDonald’s). But the Trademarks Office has become more strict over the years, and now you would have to provide evidence that you have used a last name extensively in Canada such that it has become distinctive of your business before you can register it as a trademark.

Minimalistic Logos

Similarly, “good” or minimalistic logos that only include one letter, colour or a simple shape can make for “bad” trademarks unless your company is already famous. This has been a noticeable trend over the past decade where big companies have rebranded to make their logo designs simpler. That’s the power of a trademark when you can strip away many elements of a logo and your customers are still able to recognize that it is associated with a particular company, product or service.

Please contact us by email at trademarks@freedinrowell.com to learn more or to begin the process of making money with your trademarks.

The post “Good” Names that make for “Bad” Trademarks appeared first on FREEDIN & ROWELL LLP.

With a logo that includes design elements other than text, it may already be obvious that it is a trademark even without a “TM” symbol next to it. However, for more word-based or slogan type trademarks, using the “TM” symbol can help to identify words that are used as trademarks when it isn’t as obvious due to the inherent meaning of the words used or if it is surrounded by other text or graphics.

Keep in mind that if the “TM” symbol is used for a particular trademark, that does not mean that it then has to be used in every instance. So consider the benefits of using the TM symbol if you haven’t already, and try to notice how often businesses around you are using the symbol.

Please contact us by email at trademarks@freedinrowell.com to learn more or to begin the process of making money with your trademarks.

The post Should You Use Trademark Symbols? appeared first on FREEDIN & ROWELL LLP.

The Value of Trademarks

Trademarks act as a shortcut for your customers, viewers and/or users to distinguish you from the rest of the market. As you use your trademarks, they gain recognition and people start developing a loyalty to your brand.

Expanding, Licensing and Franchising

When you start your business or website, you are likely starting out small, whether that be a particular city or country, or a niche product or service. What trademarks allow you to do is to expand your presence in the market more easily.

For example, you may have started your restaurant in one city but after experiencing some success you may want to open up new restaurants in different cities and even countries. Of course, you may not be able to or want to run all those separate restaurants yourself. So instead, you can license or franchise the rights to use your trademarks to someone else in exchange for a royalty (e.g., a percentage of net sales).

Entering into a co-branding partnership with another company is also a great way to expand your market and increase the value of your trademarks.

Selling to Potential Buyers and Investors

Whether you are looking to exit a particular market or looking to pivot, you can sell the exclusive rights to use your trademarks as a whole or limited to particular market sectors. Trademarks can also be used as collateral to receive funding from investors or financing from banks.

Potential buyers may be one of your business partners, a competitor, or someone who is looking to enter into your market and want to sell products or services under your trademarks. Since potential buyers may be hardest part of selling a trademark, there are also websites you can use like the U.S. Trademark Exchange or even EBay to list your trademark for sale, license or auction.

But before you can sell or license your trademarks, you need to make sure you actually own the exclusive rights to them by filing trademark applications in each country you intend on using them.

Please contact us by email at trademarks@freedinrowell.com to learn more or to begin the process of making money with your trademarks.

The post How to Make Money with Trademarks appeared first on FREEDIN & ROWELL LLP.

Trademark description as filed in Canadian Trademark Application No. 2169305 for Holographic Blue Jay Design: The trademark consists of a hologram of a pixelated blue jay holding a gavel as depicted in the visual representation. The visual representation depicts different views of the same trademark. The trademark has a holographic rainbow colour effect and the applicant claims the colours red, orange, yellow, green, blue, indigo, violet as a feature of the trademark.

On June 17, 2019, the Canadian Trademarks Office opened its doors to accepting applications for a broader range of “non-traditional” trademarks such as those consisting in whole or in part of a hologram. Since then, only 28 applications were filed (before February 28, 2022) designating a hologram as the type of trademark, and surprisingly, none of which were filed with the help of a Trademark Agent.

Shortcomings of the Previously Filed Applications

Perhaps understandably then, a brief review of those applications reveal that they will all likely be objected-to for, among other things, failing to:

• “include a visual representation in the form of one or more still images, sufficient in number and clarity, to demonstrate the holographic effect in its entirety”; or
• “include a clear and concise description of the visual effect when the hologram is viewed from different angles.”

These are two requirements unique to trademark applications for holograms that were published in a Practice Notice by the Canadian Trademarks Office. Notably, the Practice Notice provided the following example of an acceptable description of a hologram trademark: “The trademark consists of a hologram of a dove in flight. The visual representation included in the application depicts the full range of the holographic effect.”

Unfortunately, instead of describing the holographic effect of their trademark, many applicants merely provided a title, a business description or even a plea to the examiner to approve their application.

1st TM Application for a Hologram filed by a Canadian Trademark Agent

I decided to be the first Trademark Agent to file a trademark application for a hologram in Canada after being inspired in part by the following events in the intellectual property law space that took place within the last year:

• Dr. Stephen Thaler obtained the first patent in South Africa that designates an A.I. system as the sole inventor instead of a human system without designating a human inventor, but has met resistance in other jurisdictions such as the EU, the U.S. and Canada.
• Nike filed a number of trademark applications in Canada and the U.S. in association with “virtual goods”.
• Mr. Ankit Sahni obtained the first copyright registration in Canada that lists an A.I. Painting App as a co-author.

As a registered Trademark Agent in Canada, I reviewed the relevant regulations and guidelines from the Trademarks Office to best prepare an application that would be accepted by the Trademarks Office. Once the application is examined and approved, it could serve as a verified model of a trademark application for a hologram.

The Trademarks Office defines a hologram as “a three-dimensional picture made by laser light reflected onto a photographic substance without the use of a camera.” In my application, the “hologram” is a relatively simple design of a pixelated bird with a holographic rainbow effect like the ones found on Canadian bank notes and certain credit cards that change colour when viewed at different angles. Admittedly, my hologram is not as impressive as the larger scale holograms displayed by projectors or viewed with special glasses, but my trademark application can serve as a building block for other applicants and Trademark Agents.

Here is a link to the details of the application on the Canadian Trademarks Database: Holographic Blue Jay Design

Some alternative hologram designs that I considered included:

• a bird that would have its wings pointed up when viewed from one angle, but pointed down when viewed from another angle;
• a bird holding a gavel that would only be visible when viewed at certain angles; and
• a fully 3D bird model that could be viewed at all angles like a real-life object (and possibly flapping its wings).

Nevertheless, I found that the holographic rainbow effect was the key to turning a traditional design trademark into a minimum viable hologram trademark. In contrast, if my hologram included any movement, I may have been required to include a moving image (animation) clip in my application to demonstrate the holographic effect. In turn, this may have required me to either hire a graphic designer to render the image or buy a specialized holographic photo frame (and associated software).

Next Step and Takeaways

Time will tell if the Canadian Trademarks Office will approve my application and accept the two images I provided as being sufficient to demonstrate the holographic rainbow effect. Naturally, a professional graphic designer could have created a more realistic rendering of my hologram than what I created with some basic coding and Photoshop skills. On the other hand, maybe even providing only one image would be deemed acceptable as long as a clear description of the holographic effect is provided.

As for how my hologram trademark could actually be used, in its simplest form, it would likely be a sticker embedded or placed on a business card, letterhead, invoice, or envelope. With the growing trend of virtual/augmented reality, blockchain technology and pixel art, the hologram trademark could also be used as a vehicle to explore other ideas in the virtual/augmented world or the non-fungible token (NFT) space.

It is conceivable that when augmented reality headsets become more prevalent that hologram trademarks will also become more prevalent, such as in the form of a 3-D icon in an app store or loading screen. Holographic projectors might also become small enough to be embedded into other devices or novelty items.

The value of a hologram trademark in the nearer future, however, may come from distinguishing your product or brand in an industry where others are using traditional logos. See for example, EU Trademark Filing No. 017579491 for a hologram trademark registered by Zwilling, a German knife-maker.

It may also become a more common way to signal consumers of your company’s involved with virtual or augmented reality, such as by putting a holographic sticker on packages for augmented reality headsets. In fact, Google has already registered a hologram trademark in both the U.S. and the European Union in association with virtual/augmented reality headsets and accessories, among other electronic devices (See EU Trademark Filing No. 017993401 or Search for U.S. Trademark Registration No. 5924369). Notably, as evidence of use of its hologram trademark in the U.S., Google provided a picture of a package for one of their smartphones with a holographic “G” sticker on it.

Accordingly, businesses will want to keep an eye on how the hologram and virtual/augmented reality space continues to develop to better stand out amongst their competitors, and to better protect their brand, whether in the “real world” or in the “metaverse”.

Contact and Disclaimer

Our firm has registered Trademark Agents and experienced lawyers who can promptly assist you with the preparation and filing of your trademark application, and prevent you from making mistakes that may not be correctable after your application has already been filed.

Please contact us by email at trademarks@freedinrowell.com to begin the process of registering your trademark or to schedule a free 20-minute general consultation.

The post The First Trademark Application for a Hologram filed in Canada by a Trademark Agent appeared first on FREEDIN & ROWELL LLP.

Although the Federal government (and some provincial governments) will prevent you from incorporating with a name that is confusingly similar with an existing corporate name, registered business name or trademark, in general, the Ontario government will only prevent you from obtaining a corporate name that is identical to the name of an existing corporation operating in Ontario. The Ontario government will not even prevent you from registering a business name that is identical to a name of an existing business.

So just because you are able to obtain a corporate name or register a business name, it does not necessarily mean that you are free to use it, or that others cannot register a confusingly similar business name. Further, having the freedom to use a name is different from having the exclusive rights to prevent others from using a name, which requires applying for and obtaining a trademark registration.

Our firm has registered Trademark Agents and experienced lawyers who can promptly assist you with the preparation and filing of your trademark application, and prevent you from making mistakes that may not be correctable after your application has already been filed.

Please contact us by email at trademarks@freedinrowell.com to begin the process of preparing your trademark application or to schedule a free 20-minute general consultation.

To learn more about the benefits of obtaining a trademark registration, please read our other article: The Benefits of Registering your Trademark.

The post Simply Incorporating or Registering a business name does NOT give you exclusive rights to the name appeared first on FREEDIN & ROWELL LLP.

On the other hand, some of the benefits of registering your trademark include:

1. Obtaining exclusive rights to use the trademark across Canada, even in provinces or cities in which you have never used the trademark.
2. Increasing the value of your business as part of your intellectual property portfolio to show to prospective licensees, franchisees, buyers and investors.
3. Becoming eligible to enroll in Amazon’s Brand Registry program that helps protect your registered trademarks online.
4. Becoming eligible to submit a request to the Canada Border Services Agency to monitor for and temporarily detain suspected counterfeit products that use your registered trademark at the border.
5. Making it easier to successfully sue or prevent others from using an identical or confusingly similar trademark from an evidential standpoint.

Our firm has registered Trademark Agents and experienced lawyers who can promptly assist you with the preparation and filing of your trademark application, and prevent you from making mistakes that may not be correctable after your application has already been filed.

Please contact us by email at trademarks@freedinrowell.com to begin the process of registering your trademark or to schedule a free 20-minute general consultation.

The post The Benefits of Registering your Trademark appeared first on FREEDIN & ROWELL LLP.