Assert Your Business Identity: Why It’s Important to Trademark a Name - The Journey of Cynthia Mason
When building a business, you would want to be distinguishable from your competitors. You want to create a brand that people recognize and associate with your products and services. The most obvious way to do this is by having a name that sets you apart. After all, you wouldn't want your products or services to be confused with another business! And so, it's critical to trademark a name. Through this, you get legal ownership of your business's recognizable assets. And, as this week's guest shares, there are also different types of trademarks depending on your needs.
In this episode, we have an insightful conversation with Cynthia Mason. She shares what a trademark is, why it's critical to trademark a name, and how you can do so. We also learn about the misconceptions surrounding trademarks and how a trademark agent can help you.
Do you want to learn how you can use your trademark as a way to set your business apart? Tune in to this episode to learn more!
Here are Three Reasons Why You Should Listen to the Full Episode:
Learn about the benefits of having a registered trademark for your business.
You will discover the common misconceptions of business owners concerning trademarks.
Cynthia shares her advice on the step-by-step process of how to trademark a name.
Visit Christina Sjahli’s website for the full Intellectual Properties Podcast Series on the Her CEO Journey™ Podcast.
Chat with Christina and set up a time here!
Download the Forecasting Guide so you can create an improved finance strategy for your business!
Find out more information on trademarks from the Canadian Intellectual Property Office.
Connect with Cynthia: LinkedIn
[04:41] Cynthia’s Journey
Cynthia’s journey started 20 years ago at a Bay Street law firm in the trademark department.
She stayed at the law firm for a decade. Eventually, Cynthia decided to start her law firm doing trademark protection work.
[05:30] What is a Trademark?
A trademark is anything that distinguishes your product and your services apart from everybody else.
[08:38] What Makes A Good Name
People tend to use descriptive or suggestive names because they think it’s easier to illustrate what they’re selling.
However, the best names are coined words that previously meant nothing. Businesses that are registering to trademark coined words eventually get name recognition.
The next best names are arbitrary words that aren't related to the associated goods and services.
“Once you start to build that momentum, a completely coined or an arbitrary name is so much easier for consumers to remember. And it's that memory that will really build into valuable goodwill and your ability to stop other people from encroaching on your territory.”
Descriptive names don't function as great trademarks. Anybody in your industry can use them, and typically, these words are used generically.
The goal is to trademark a name that people will associate with your product or service only.
[11:17] The Small Business Perspective on Personal Names
You’ll want to have name exclusivity if you’re thinking about building a bigger business. So, you’ll need to take this account when registering to trademark a name.
You can’t stop somebody else with the same personal name from using it in their business.
It’s difficult to trademark a name that’s personal to you unless you’re very famous. You have to file evidence that a significant portion of Canada sees your name as a brand.
[14:16] Selling Your Business Under a Personal Name
There have been offhand companies that continued business without the founder.
Stepping away from your company and selling it with your name on it is not an ideal position.
Don’t think of a unique name only when scaling your business. If you do, you lose several years of marketing hustle.
Instead, build an original brand name as you’re registering to trademark a name.
[17:03] Types of Trademarks
A name should be your top priority when it comes to trademarks. It can be your business name or a unique name for a particular product or service.
The next type is a logo, which is the artistic articulation of your name with design.
There are also taglines. They’re not your primary branding, but it is something uniquely you.
[18:01] Trademarking Your Methodology
The symbol for an unregistered trademark is: ™. Meanwhile, ® is for registered trademarks.
You can’t use a trademark to stop other people from copying your method. Your trademark will only stop people from using the name of your methodology.
To stop people from copying your methodology, you need to use other branches of intellectual property law.
“Trademark law isn't going to help you protect your methodology other than the name. But that doesn't mean that your methodology is out there and that other people can copy you. There are ways that you can kind of keep elements of it exclusive, just not using trademark law.”
[21:40] Deadlines for Registering to Trademark a Name
There are no deadlines for registering trademarks. However, the best time to apply for a trademark is before you launch it to the public.
There are registered and unregistered trademarks. They differ in the scope and the ease of stopping other people from copying your IP.
Filing a trademark gives you legal rights to that name. Trademarking is a valuable tool to claim a name for your future use.
You can only obtain legal rights to a name, logo, or method by selling something or filing a trademark application.
Listen to the full episode for more information on the importance of registering to trademark a name.
[24:33] Using the ™ Symbol
“The ™ symbol is available to anybody who's using a name or a logo, and they just want to tell the world it's their trademark.”
There’s never any harm in telling the world about your trademark.
If you have a registered trademark, you can sue people for infringement.
With an unregistered trademark, you can claim that the trademark is passing off. This process is lengthier and requires more proof.
Listen to the full episode to learn more about your rights with a registered trademark.
[28:37] How to Trademark a Name
Search first. Make sure that the trademark you want to register is available for registration.
Then, file for the application — including the owner's name and the address of the owner.
It also should include the list of products and services that you plan to sell under the trademark.
These have to be classified based on international conventions of 45 classes of products and services.
Listen to the full episode to learn more about the steps in registering a trademark.
[34:04] The Value of Having a Trademark Agent
Agents can tell if there’s going to be an obstacle in your application. They can also identify if you’re going to be infringing anybody else’s mark.
The title trademark agent is specific to Canada.
Many trademark agents are also lawyers.
[36:39] Your Trademark Channel
Your channel is likely where you're going to be selling to your target customers.
The way that the consumers can purchase your products or services in specific places would be through your channel.
The legal test for trademark confusion involves looking at the degree of resemblance and the nature of the products and services.
“The legal test for confusion of trademarks really means, would the average person seeing both marks on products think that those products come from the same source and the same company?”
[38:30] Doing Research Before Using a Name
If you use a name that can be confused with somebody else's, you encroach upon their legal rights.
You need to ensure that you do searches before you start using a name, with or without the ™ symbol.
[39:06] Common Misconceptions About Trademarks
A lot of business owners think that because they've registered a business name, they have legal rights to the name. However, business name registration is more like a directory listing.
You also encroach on others' rights when you take their name, change it slightly, and use it for your own.
It’s not expensive and difficult to stop people from copying your trademarks. If you have a registered trademark, a cease and desist letter usually solves the issue.
It's also not expensive to register your trademark. It's a small investment compared to dealing with a competitor with a similar name in the future.
“The cost of shoring up your ownership of a name and your ability to stop other people from causing confusion is so much cheaper than actually what you think it's gonna be.”
[43:32] Registering a Trademark without a Lawyer or Agent
As a trademark owner, you can file directly with the Canadian Intellectual Property Office.
There are resources on the CIP Office’s website that will help you throughout the process.
Cynthia also has an online form that can help clients with filing their trademark applications.
There is no difference between businesses that should or should not work with a lawyer. If you have the time to do research, you can file a trademark application yourself.
[47:15] Benefits of Registering Your Trademark
Trademarks are the most valuable tools in terms of owning and protecting your primary business assets.
You can enforce an unregistered trademark. However, your rights only exist when you’ve already had sales.
You need to have a trademark registration to enforce your trademark rights online.
Ultimately, if you want to own something as a trademark for your business, you need to register it.
About Cynthia Mason
Cynthia Mason is a lawyer and trademark agent specializing in protecting businesses' most valuable assets, their trademark. She is the founder and managing lawyer of Mason PC. This trademark law firm helps business owners think of the best names and solutions for protecting their trademark. Furthermore, Markably®, their DIY trademark application tool, helps business owners trademark applications.
Cynthia has over two decades of experience in trademark protection. She has helped several businesses innovate their ideas and provide custom brand protection services.
10 Powerful Quotes
“A trademark is anything that you use to kind of distinguish and set your products and your services apart from everybody else.”
“If you're using a generic word or something that's very descriptive, there's really a challenge to stop other people in your industry, your competitors from using the same words or very similar words and terms. And so there's really nothing setting your name apart from everybody else.”
“You can apply to register your trademarks at any time. The best time to do it, though, is before you launch it to the public.”
“Filing the trademark application gives you legal rights in that name. It's a valuable tool in order to claim a name for your future use. Otherwise, your legal rights in a name start the day you start selling something in connection with that name.”
“If you start using a trademark that is confusing with somebody else's, you are encroaching upon their legal rights. The claim that they have against you depends on whether they're registered or not.”
Enjoy this Podcast?
As a business owner, you want to distinguish your products and services. A great way to do this is by registering to trademark a name. Cynthia Mason shares what trademarks are, their importance, and how you can file for one. If you enjoyed today's episode of Her CEO Journey™ Podcast, then hit subscribe and share it!
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To fuelling the life you want to live,
Cynthia Mason: Regardless of whether you're going to register it or not, if you start using a trademark that is confusing with somebody else's, you are encroaching upon their legal rights. The claim that they have against you depends on whether they're registered or not. But that's why it's important for you to ensure you do searches before you start using a name with or without the ™ symbol.
Christina Sjahli: Today is the last and final episode of our Intellectual Property Podcast Series. Over the last few weeks, starting from Episode 128, we share with you the different types of intellectual properties, the step you need in creating IP strategy, how to protect this asset, the journey of a female founders who is in the trenches in building her IP strategy to get financing. You also heard from an alternate commercial lender who focuses on providing capital through IP-backed financing. And last week, you heard from a female CEO who was able to grow her company and attracted the right investor using her intellectual property.
One area of intellectual property that we want to explore further is trademarks. Trademark has been mentioned several times throughout this Intellectual Property Podcast Series. So for the final episode, we are joined by Cynthia Mason, the founder and CEO of Mason PC, and Markably®. Cynthia is a trademark lawyer and trademark agent located in Ottawa, Canada. In today's episode, Cynthia shares, among others, what is a trademark, the three different types of trademarks, why you should register your trademarks, how to register your trademark, and what are the common misconception around trademarks.
If you are not located in Canada, don't jump to the conclusion that this episode is not relevant to you. You may find tips on how to ask the right question to your trademark lawyers in the country where you operate your business. Take the time to listen until the end because this episode can give you useful tips for businesses globally.
You're listening to Her CEO Journey, the business finance podcast for mission-driven women entrepreneurs. I'm your host, Christina Sjahli. If you are new here a big warm welcome. If we are not connected on LinkedIn, please reach out and say hi because that's where I hang out and share my business finance tips. If you have been listening to this podcast for a while, and you are a regular listener, I want you to know, I appreciate you. My podcast won't be around without your support. This is a free weekly show where my guests and I want to inspires you to balance between mission and profit, to create an impact in this world, and to achieve financial equality through your business for good.
When your business is growing fast, you are not only focusing your effort on securing financing, you also need to understand where your business is going in the long run. This is where a need for a long-term financial forecast comes in. If you are at a stage where you realize you need to build a robust financial forecast, but don't know where to start, we have a solution to your problem. Download the Forecasting Guide we have created for you and start creating a better and improved financial forecast. You can find the link to this guide in the show notes. Let's say after using the guide you think, "Hm, this guide helped. But I think it's better if I focus my time on doing what I really love, which is building and growing my business. I know business finance is important, but I don't love it." That's when we are here to partner with you. We understand building a proper and robust financial forecast takes time, accountability, curiosity, and passion for your business. Connect with us at christinasjahli.com/lets-chat. Now, let's find out Cynthia's CEO journey.
Cynthia Mason, welcome to Her CEO Journey. It's a pleasure to have you here today.
Cynthia Mason: It's a pleasure to be here.
Christina Sjahli: Before we dive into details about the ins and outs about trademark and then why it's important, why we have to start thinking about it, let's start with your journey in building your law firm.
Cynthia Mason: Well, I started my journey almost 20 years ago at a big Bay Street law firm. I started from day one, I was in the trademark department. I stayed at that firm for about a decade and then I worked at another large national law firm, but I didn't really want to start working at another law firm, and kind of start building my practice, and all of that over again. So I took the less than 60 seconds and decided, you know what, now is the time to start my own law firm. I just wanted to do trademark protection work. And I wanted to do it on my own terms and with the clients that I choose. It's been just almost eight years where I have been on my own in my own law firm. We just really started growing in the last two years.
Christina Sjahli: Let's start with this, what is a trademark?
Cynthia Mason: A trademark is anything that you use to kind of distinguish and set your products and your services apart from everybody else. Now, the most typical ones that we think of are names. You see a name like Home Depot, or Nike, KFC, or like all of these, these are names. And that is the main way that the consuming public can find what you're selling amongst everybody else. So your name is your main trademark. But when it comes to creating a name, there's a lot that goes into that to make it a good name. Oftentimes, we lawyers are a little bit at odds with the marketing people who come up with names in terms of what we like to think is a good name and what they think is a good name.
A lot of marketing, people like to tend towards descriptive and suggestive names because they think it's easier to tell, to educate consumers what you're selling if your name is a little bit suggestive. Whereas trademark lawyers, we love completely coined and like arbitrary words, and because they're so different from everybody else, that yeah, you have to invest a little bit more in the initial stages of marketing. But once you start to build that momentum, a completely coined or an arbitrary name is so much easier for consumers to remember. And it's that memory that will really build into valuable goodwill and your ability to stop other people from encroaching on your territory. So that's kind of a long explanation of your main trademark is your name. But you know, people don't just use names without any sort of stylized component to it.
Most businesses have a logo that incorporates their name or is used in connection with their name. And so logos really are the other primary type of trademark that businesses use to differentiate their products and services from others that are out there. You can also have taglines, which you know, don't tend to appear often on products, but they're often in advertising, and particularly in social media. And all of this, like, tag lines are another really valuable and powerful trademark because you start to associate them with one particular company. Like Nike is, "Just do it." The other banking one is, "You're richer than you think." Like these are taglines that we see over and over and over again, and we associate them with one particular company. And that's really what makes them powerful trademarks.
If you're a product seller and you have a very unique packaging, that can be your trademark. If you've created a jingle that goes along with your advertising, that can be a trademark. The Canadian Trademarks Office just recently added a whole slew of what they call non-traditional trademarks that you can now register as your trademarks. And jingles. You can do holograms, you can do smells, and tastes like anything really, that you can use to distinguish your products and services from others can be your trademark.
Christina Sjahli: So tell me from a lawyer perspective, what is the good name?
Cynthia Mason: We like to think of it in terms of there's a scale of names. You know, you start at like the gold standard or the great names, and you can move down to completely bad, bad names. So the top, the cream of the crop really are coined words. So I mean, one of the biggest one that I can think of is lululemon. It wasn't a word. It was completely coined by a company. And now we associate it with one specific company, but it's a completely coined word. It meant nothing, but was adopted as a trademark and marketed and so it has become very well-known.
So one step down from these completely coined words that didn't exist before the company started using it as a trademark. You have arbitrary words. So these are words that don't have any relation whatsoever to the associated goods and services. So Apple would be one. It's a common English word, but was used and is now a very well-known trademark for computer products. Other arbitrary words like Uber. Well, it's kind of like a, it's a foreign language word, has nothing to do with, you know, transportation, but it was adopted as a trademark. And now, it's a very well-known one.
So you've got your coined words and then you've got arbitrary foreign language words that don't have any relation to the goods and services. And then you have words that are a little bit suggestive of what you're selling. So Staples would be one. Although that one kind of borders on descriptive because they're selling staples, but words that are suggestive so that you look at them, and you can make a good guess at the type of thing that you're going to be buying or the type of service that they're selling.
The step below that are just completely descriptive words. So SlimFast would be a completely descriptive word. It's telling people that if you consume these products, you will slim down fast. Those words don't function as great trademarks because anybody in your industry should be able to use them. And they probably do use them in a generic sense. And so if you're using a generic word or something that's very descriptive, there's really a challenge to stop other people in your industry, your competitors from using the same words or very similar words and terms. And so there's really nothing setting your name apart from everybody else. That really is the goal is you want a name that's going to set you apart from everyone else and that people are going to remember. So that is kind of like the scale of great to not good.
Christina Sjahli: But now, let's think about this: From the small businesses perspective, a lot of small businesses out there, they're using their name as their brand or their company.
Cynthia Mason: It is descriptive in a legal sense in that, basically, if you're using your name, and then it's very common practice for a lot of freelancers, they operate with their personal name as their brand, as their trademark. And I mean, here's the reality when it comes to personal names is that you can't stop somebody else with the same name using that. So if you've got a really unique name, sure, maybe it'll fly. But if you have, like a fairly common name, you can't stop other people from using that name or something very similar even to compete with you.
Christina Sjahli: You cannot even trademark it.
Cynthia Mason: No, you can't. I mean, there are registrability rules. And it is very, very difficult to register a personal name as a trademark. You really can only do it when you're famous. We really I mean, a lot of celebrities. And here in Canada, there's a very difficult threshold to meet in terms of registering a personal name as a trademark. You have to file evidence that a significant portion of Canada would, they no longer see it just as a name, they see it as a brand. So you know, like Justin Bieber is a registered trademark in Canada, but it wasn't just automatically granted registration. His company had to file proof showing a lot of sales, a lot of recognition in the name in order for it to be considered a trademark and a reputable trademark.
Christina Sjahli: So if there is another Justin Bieber, before he filed the trademark, he literally cannot do anything to protect that if somebody basically go in there, and then said, "Oh, I want to trademark Justin Bieber," before he did?
Cynthia Mason: It would be difficult. If the person's name was Justin Bieber, and they're both doing their own thing. There was a situation of this on the US: Kylie. So Kylie Jenner wants to trademark Kylie as her trademark. But you know, Kylie Minogue got there first. And so Kylie Jenner wasn't able to do it because Kylie Minogue was able to establish that she had brand recognition first. I think the thing to kind of remember it, if you're in the position of thinking of how you're going to brand your business, there is a lot of appeal to certainly using your personal name.
I mean, we at least in PC aren't going to cast any stones about people using their name because my last name was known. And I wanted my clients to kind of see that continuation when I started my own firm. But from a trademark perspective, like I'm not stopping other lawyers from using the last name, Mason, and I can't. So it's not, it's not great if you're looking to build a bigger business that you want to be able to kind of have that name exclusivity.
Christina Sjahli: I also wonder if you are using a personal name, as your business name, right or your brand, is it going to be harder as well to sell the business later on? So technically, probably, the value of the name or the brand, there is no value basically, later on. I'm just thinking like long-term.
Cynthia Mason: I would tend to agree with you on that. Offhand companies that have been able to kind of carry on without the original founder, even though the branding is based on the founder, maybe in the fashion design industry, you can continue using a name but if you're doing personal services, where, you know, the vast majority of new businesses are, I would think, yeah, in order to completely step away from your company and be able to sell it to someone to operate and it's got your name on it, I wouldn't think that that's the ideal position you want to be in.
It's fairly common when we encounter freelancers who are really in the kind of like the phase of scaling, they're looking at adding team members. And they're looking at ways to kind of get out of the trading time for money situation where instead of the revenues deriving entirely from the hours that they put in, and instead, they're generating assets that create income for them. This is the phase where a lot of freelancers start looking at rebranding and coming up with a coined or completely, you know, new name, that they could, at a certain point, their business will become an asset and less dependent upon them.
Christina Sjahli: Because once you start seeing that your business can grow bigger, or you have a bigger vision now, and then you have this vision that maybe someday you want to get acquired, or you want to go global, or something like that, then you started thinking like, "Oh, is it really do I want to keep continuing carrying my name, or should I just rebrand and then have a new name?"
Cynthia Mason: And at that point, you have now lost several years of marketing hustle where you could have been building your original brand name or the ultimate brand name, the one that you want to eventually take forward and grow. Instead, you kind of a little bit, chose the easy route and went with your name. And now you have to kind of educate your buyers and the public as to, "Okay, well, it's the same great service, but it's a new name." And easy is never the best solution.
Christina Sjahli: I think from the perspective of someone who is just starting out, sometimes it's hard to envision, what are we going to do? Do I really have something special over here? Is my framework or the methodology that I have, does it really make sense? I agree with you. In the long run, is it going to be problem? You already mentioned a few things here about types of trademark. If you can help me summarize it, what are the types of trademarks out there that my audience need to understand?
Cynthia Mason: Well, the first one, and their first priority is their name. So it's either the name of your business is oftentimes your trademark, or it's a unique name that you have for a particular product or service. Then the next level and the next type of trademark is a logo. So it really is the artistic articulation of your name, of a design component that you're using in your business to differentiate your products and services from everybody else's. And then kind of the next level are these other types of trademarks, like taglines, that they're not your primary branding. It's not the primary way that you're differentiating your products and services, but it is something that is uniquely you and you are using to kind of indicate that this product or the service comes from your company as well. So those are the main types: names, logos, taglines.
Christina Sjahli: I also saw sometimes framework or methodology. Is that consider as trademark? Because I would saw like a ™ or I would saw ® with circle.
Cynthia Mason: You just referenced the two main trademark symbols here in Canada and in the United States. The ™ symbol is the symbol for an unregistered trademark. And the ® symbol in a circle is a registered trademark. I'm willing to bet that these symbols were used in connection with the name of the methodology. And it's not really protecting the methodology itself. So if you have a unique and proprietary way that you are providing your service, basically your methodology, this is pretty common with coaches. You've developed your own special way of doing something.
Now, you can't use a trademark to stop other people from copying your method. Your trademark will stop people from using the name that you've created for your special methodology. But the way to kind of stop people from copying your methodology is you kind of have to, using intellectual property, you have to use different branches of it.
So you would use copyright in order to protect the written components. You know, if you have, you know, PowerPoint slides. You have videos. You have books. You have workbooks. All of these different elements that are included in delivering your methodology are protected by copyright, and you as the owner, have the exclusive right to copy, whatever the thing is, whatever the work is. So you would use copyright to kind of protect that component.
The other way that you would, and then this goes against marketing and how you would want to sell your unique methodology, but the other way to kind of protect it from being copied is to keep it secret, and really only disclose it to people that have paid and agreed to your terms. So trademark law isn't going to help you protect your methodology other than the name. But that doesn't mean that your methodology is out there and that other people can copy you. There are ways that you can kind of keep elements of it exclusive, just not using trademark law.
Christina Sjahli; Now I understand it's the name; it's not the framework or the methodology that they are using. They're just trademarking the name of their methodology or their systems. But anyone else technically, if you put it out there in social media, people can just like grab your method, because it's no longer a trade secret. Because I think what you're talking about when keeping it a secret, it's kind of like a trade secret, like nobody else knows, except people that are working with you. And then they probably have to sign an agreement, saying that you're not allowed to do anything to disclose anything or talk about it.
Initially, I thought, as soon as people put a ™ there, it's protecting everything . Including, if they're saying my method likes, let's say they, they put a name, and then there is a method 123, whatever they're doing in their coaching business, for example, then automatically, nobody can follow it. But then I would see another person, a different coach, that is kind of using similar methodology, but a different name. I know like in a patent, you have about 12 months to basically register it, I believe. Is there any deadline for trademark?
Cynthia Mason: No, there is not. And then kind of just comes down to the reality that there are registered trademarks, and there are unregistered trademarks. They're all trademarks; the difference between them really is the scope and the ease with which you can stop other people from copying them. So you could create a business and never register a trademark. It's not smart in my view, but you can do it. Whereas when it comes to, if you developed a patent or an invention, you have to apply to patent it within 12 months of disclosing it to somebody else. There isn't any such limitation in the trademark world. You can apply to register your trademarks at any time. The best time to do it, though, is before you launch it to the public. And there's a couple of reasons for this.
One is filing a trademark application, and you can do this years before you ever start using a trademark, filing the trademark application gives you legal rights in that name. It's a valuable tool in order to claim a name for your future use. Otherwise, your legal rights in a name start the day you start selling something in connection with that name. So this is important for a lot of new entrepreneurs who are developing a product or a service and they haven't yet commercialized it, but they've given it a name. They don't get legal rights by claiming the domain names. You got the social media pages. You maybe registered a business name with the province or, or what have you, those actions don't give you legal rights in that name. The legal rights can only be obtained by selling something or by filing a trademark application.
And so that's why we recommend when you think of a name that you're going to use with your business, you do some searching to make sure nobody else is already using it or something very similar. And if it's all clear, and you want to go ahead with it. File your trademark application and claim it for your future use. And then you can develop your business idea with a little bit more competence and assurance that there isn't going to be somebody else out there who grabs your name and starts using it before you get to start using it.
And it's kind of like you've given your baby a name. And when it's born, this is what it's going to be called. But you actually don't have any legal rights in that name until you start selling something. So that's kind of the money component of it. So yeah, you're using it as a trademark, like the word trade is intended to mean this is a commercial symbol, a symbol that you're using to sell something. So you can jumpstart those legal rights by filing a trademark application. You don't have to sell something as long as you have filed your trademark application, you have claimed that name for your future use.
Christina Sjahli: So what about if they start using the ™ symbol?
Cynthia Mason: The ™ symbol is just telling the world this is a trademark. It's not an indication of whether you have an intention to register it or you have a pending application in place in order to register it. The ™ symbol is available to anybody who's using a name or a logo, and they just want to tell the world it's their trademark. That is one of the common misconceptions that businesses have is about the use of the ™ symbol. Oftentimes, they think they're not entitled to use the ™ symbol until they filed a trademark application. And it's kind of the in-between symbol before you have a registered trademark.
So you can use the ® and the circle. They think, "Okay, well, I have a pending application. So I can use ™ right now. And then when it's registered, I'll switch it to ®." In fact, you can use the ™ symbol without ever having filed a trademark application. And you should. I mean, there's never any harm in telling the world that this is your trademark. And what it is it's telling people that, "Okay, maybe it's not a registered trademark, but I still have every intention of enforcing it as mine."
Christina Sjahli: How long can you use the ™ symbol? And then if somebody is using the same name, can you even legally sue them?
Cynthia Mason: You can but as an unregistered trademark owner, here in Canada, your legal claim is really passing off. And so that is opposed to if you have a registered trademark, to the point where your application has gone through the process and is now registered, you can sue people for trademark passing off or infringement. Infringement is easier and has a different legal test than passing off. So the claim of passing off requires a couple of different things that a registered trademark owner doesn't have to prove.
So if you have a registered trademark, the fact of the registration, the certificate of registration is your proof that you own that trademark. It's what grants you ownership of that trademark. And so you would just file that in, you know, your statement of claim and say, "I'm a registered trademark. It's mine." Where if you are an unregistered trademark owner, and you're trying to stop somebody from copying you, you're limited to a claim of passing off.
And part of that is you have to prove that you were using that trademark first. You have to show that their use is going to cause, is likely to cause confusion with you. And in that analysis, the court would look at how you've used your trademark, and they're looking at how they're using their trademark and making the assessment, "Well, are people likely to be confused by the source of you know, the products or services?" Versus an infringement claim, the certificate of registration is proof that you own the trademark. So you don't need to prove that you own the trademark. It's already there.
And the question of confusion is a lot more hypothetical, because that certificate of registration for your name, for example, gives you the right to use that name in connection with the goods and services that are claimed in your registration. But it also gives you the ability to stop people from using something confusingly similar. So that kind of broadens the scope a little bit. They don't need to be using their trademark in the exact same way as you. They just need to be using it in a way that would be covered under your trademark registration, regardless of whether you've used it that way.
It's a better position to be in when you're trying to stop somebody from using a similar name. You want to have a trademark registration. You want your life to be that much easier should you ever have to take them to court. And I can tell you this from being on the end of sending a cease and desist letter to a potential infringer and being on the receiving end of it, you are in a much better position if you can point to a trademark registration in that cease and desist letter. And it's a much more compelling reason for the person on the receiving end to stop.
Christina Sjahli: So technically, you can carry that ™ forever?
Cynthia Mason: Yes, absolutely.
Christina Sjahli: So what are the steps to register a trademark?
Cynthia Mason: We always do this when we register trademarks on behalf of our clients is you want to search first. You want to make sure that the trademark you want to register is actually available for your registration. And so this is dependent on a couple of different things. One is what's already on the trademark's register? Because that's what the trademarks office is going to look at. They're going to search the trademark register to see if there's anything confusing already there. And if there is, they're going to raise it as an obstacle to your mark.
And so you want to know that before you file your trademark application, because otherwise you're wasting your trademark application in the government fees and filing. But not only that, if something confusing is already registered, you are potentially infringing that trademark. And so before you file your application, always do a search to make sure there's nothing that's going to be an obstacle to your registration and that you're not infringing somebody else's mark.
I would say, you also want to be searching in kind of your channels of trade, where you're going to be selling to make sure that there isn't somebody already using a mark that is confusingly similar to yours. Because while it may be an unregistered trademark that's in use, they would have the ability to oppose your trademark application and prevent you from getting a registration. So it's always best to search before you file. Then search before you even fall in love with a name. Like you shouldn't just start using a name. You should for sure search it to make sure that there isn't somebody else already out there.
So once you're sure that the mark that you want to register and use is available, then you file the application. The application has to include, obviously, the trademark, but it has to include the owner name and an address for the owner. And then it has to include a list of the products and services that you plan to sell in connection with the name or the trademark. And so these products and services have to be described in specific and ordinary commercial terms.
And they have to be classified. And so the classification system for trademarks is based on an international convention. There's 45 different classes of products and services. And anything that you could sell will fall into one of these classes. And so you have to take your products and services and divvy them up into the appropriate classes. And then based on the number of classes is what will determine your government registration fees.
So its classification is a little bit of an art a little bit of a science; it's not easy to do. And it's something that I mean, this is where trademark agent will really add value, and help you kind of prepare a trademark application that is much more likely to just sail through the registration process. Because what happens is once you file your trademark application in Canada, it's going to sit there for two years. The government's not even going to look at it for two years, two years.
And so yeah, you could be really far in your marketing plans. By the time the trademarks office looks at your trademark and says, "Well, for you, this is not registerable or somebody is else already using a confusing mark." So this is really one of the other reasons why you want to make sure that you're there's nothing confusing, that's going to block you because you're not going to know. The trademarks office isn't going to tell you for two years.
And what happens at the two year, around the two year mark, the trademarks office examined your trademark application to make sure that the mark and the application comply with trademark laws. And so like I said, they're going to search for confusing marks already on the register. They're going to look at your mark from a registrability perspective. So is it descriptive of the products and services? Is it not inherently distinctive? Is there something about it that wouldn't function well as a trademark?
They're going to look at how you've described your products and services. And they wanted to know that they're sufficiently specific and in ordinary commercial terms so that anybody could really look at this application and understand what it is you're selling. They're also going to make sure that your products and services are properly classified and you've paid the government fees.
And so if any of those things need to be fixed, or there are objections, you have the opportunity to address them. But it's going to slow your application down even more. So what will happen is if there are deficiencies or objections, they're going to issue an examiner's report, setting them out, you have the opportunity to respond and fix up your application if you can. And then once it's re-examined after you've done all that, hopefully you've addressed all the objections. The application is approved, and then it's published for public opposition.
So if there's anybody else out there in Canada, who thinks that you are not entitled to register this trademark, they have the opportunity to file an opposition and to set out their legal grounds for opposing. If there's no opposition, then your application just goes from the advertisement stage through to registration and your registration is good for 10 years. So all in all, from filing through to registration, we are now around the three-year delay. So it's a long process, but you can make it shorter by not having to deal with objections after the examination stage.
Christina Sjahli: So that's why involving an agent earlier on is a more efficient in the long-run?
Cynthia Mason: Yeah, well, I mean, agents are well-versed in searching. So they will be able to tell you if there's anything that's going to be an obstacle, if you're going to be infringing anybody else's mark, and they can ensure that your goods and services are described and properly classified so that that's not going to be something that holds up your trademark. So yeah, there is a lot of value to it.
Christina Sjahli: When you say agent, does it mean lawyer, trademark lawyer?
Cynthia Mason: Well, yes and no. The designation trademark agent is actually, it's a specific title here in Canada. It's unique to Canada. It means that you are basically licensed by the Canadian Intellectual Property Office, or they just licensed it out. They've kind of moved that responsibility out to a different party. But it used to be that the Canadian Intellectual Property Office has granted you the right to call yourself a trademark agent. So in order to become a trademark agent you need you know, at least two years of experience in the trademark field. And you have to write an exam to show them that you are competent in prosecuting and advising clients on trademark matters. It's a difficult exam. It's not easy to pass. It doesn't have a very high success rate. And so there's a limited number of trademark agents in Canada.
There are a lot of lawyers and other professionals out there who are not registered trademark agents who still advise companies on trademark matters. But unless you are a registered trademark agent, you're not allowed to correspond with any one of the trademarks office on behalf of a trademark owner. So many trademark agents are also lawyers, because the two there's a lot of overlap in what we do. I am both a lawyer and a trademark agent. And there really is not a lot of distinction between the legal opinions, the trademark availability opinions that we give. And in the process of registering a trademark, it's something that a trademark agent will do. So it is a specific designation in Canada.
Christina Sjahli: But not anywhere else?
Cynthia Mason: No, I mean, other countries have their own kind of requirements for dealing with their national intellectual property office. In terms of in the United States, you have to be a trademark attorney. That's also a designation in the UK. It's called a trademark attorney. Here in Canada, we just call it a trademark agent.
Christina Sjahli: Another thing, you mentioned earlier that you have to consider the channel that you will be selling the product or the name. When you say channel here, do you mean countries? Like different countries where you're going to be selling or there is a different meaning than other than countries?
When I say channel, what I'm really talking about is where the likely places, the typical places where you're going to be selling to your target customers? And so when there's confusion between trademarks, a lot of people think that that means somebody's going to mistake one trademark for another. And that's actually not the legal test for confusion. The legal test for confusion of trademarks really means, would the average person seeing both marks on products think that those products come from the same source and the same company? And so when you're assessing whether that is a likelihood or not, there's a specific test. And you look at the degree of resemblance between the trademarks. So the degree of resemblance in the way that they look, the way that they sound, and the ideas that they suggest.
But you also have to look at the nature of the associated products and services that are being sold, or going to be sold in connection with these trademarks. And part of that nature of the products and services is where are those products and services going to be sold? So where are they likely to be sold? And those are really what we call the channels of trade. So if you are selling, for example, cereal, your channels of trade are grocery. Like you're likely not selling your cereal on Etsy. It's got a fairly typical retail channel. Similarly, if you're providing legal services, the way that consumers and the public and businesses can purchase legal services is they're looking for lawyers in specific places and in specific directories. And this would be your channel, really.
Christina Sjahli: Would you suggest to do the search first before start using the ™ if you have the intention to register later on?
Cynthia Mason: Regardless of whether you're going to register it or not, if you start using a trademark that is confusing with somebody else's, you are encroaching upon their legal rights. The claim that they have against you depends on whether they're registered or not. But that's why it's important for you to ensure you do searches before you start using a name with or without the ™ symbol, before you start using any name in your marketing. You want to make sure that you're not going to be encroaching upon somebody else's legal rights.