As I was watching the latest Dragons’ Den on my laptop a couple of days ago, I was bombarded with the same advertisement, over and over again.
Ford was adamant to show me how great their new car is.
The ad closed with this line:
Only Ford has Ecoboost fuel economy
Curiously, the ad does not explain what the Ecoboost fuel economy actually is or how it is better (if at all) from all other options that exist on the market today.
What matters is that only Ford has it.
How do they achieve this unique position on the marketplace?
They have a registered trademark for the word ECOBOOST®
Now, nobody can use the word ECOBOOST in association with automobiles and automobile engines.
What the system does is irrelevant, because trademarks do not protect the substance, only the name.
But this is a great example how protecting a name can boost your advertisement, marketing and (hopefully) sales.
P.S. If you look at our Trademark Factory™ website, you will notice that we do what may look like the same thing there when we claim that we offer our unique Triple Peace-of-Mind Guarantee™
Our offer is indeed unique, but even if (when) other law firms decide to copy our offer, they still would not be able to call it a “Triple Peace-of-Mind Guarantee”, because it is our trademark.
Are you using a special name to refer to the uniqueness of your offer? See if you can register it as a trademark for FREE with no strings attached.
In a recent case Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co., Ltd. and Wiston Building Materials Co., a BC Supreme Court judge granted a court order (injunction) preventing the owner of a registered trademark “WOODPECKER” from using it because this name for many years had been used by that company’s competitor who neglected to register their trademark.
Woodpecker Hardwood Floors have been using the brand since at least 2000, without registering it as a trademark with the Canadian Intellectual Property Office (CIPO).
Lo and behold, in 2011 a competitor, Wiston, a company started in 2009, filed an application for the trademark WOODPECKER with CIPO, which application has matured to a registration in 2013.
Mr. Justice Silverman found that “Having two ‘Woodpeckers’ selling hardwood flooring within a mile of each other in Richmond would seem to run contrary to public interest.” Because Woodpecker Hardwood Floors started using their mark years and years prior to Wiston, the judge recognized that Woodpecker Hardwood Floors had the prior right that trumped Wiston’s right to the registered trademark.
This case has 3 important lessons for Canadian businesses. They are nothing new to trademark lawyers, but this case presents a great example of how poor IP strategy can spell trouble.
So here are the three things to remember:
1. A trademark registration is not a tool to override pre-existing rights of your competitors. Even if you succeed with such registration, it will not be worth much because it can be taken away from you easily and it cannot really be enforced against the competitor anyway.
2. Had Woodpecker Hardwood Floors registered their trademark early, the Canadian Intellectual Property Office would never have registered a confusingly similar trademark for Wiston, so all of this would have been a non-issue to begin with.
3. If the old Woodpecker had registered its trademark, it would have cost at least 10-15 times less compared to having to take Wiston to court over an unnecessary dispute.
I’ve said it many times, if you have developed a valuable brand for your business and you have not registered it as a trademark, you are not being serious about your business. It’s not even about bringing a knife to a gunfight. It’s about bringing a blindfold to a gun fight – simply hoping that somehow things will figure themselves out. Even if they occasionally do, the cost may be prohibitive.
With the Trademark Factory™ offering a unique new way to register trademarks in Canada with a Triple Peace-of-Mind Guarantee, there is really no excuse for neglecting to protect your valuable business assets!
I will be holding a flood of workshops and presentations in the next 30 days.
I thought I’d put them all in one place, here.
October 8, at 11am PST: Branding Your Fitness Business with Velocity Athletic Training Radio
October 17, at 4pm PST: Intellectual Property in Plain English at Capilano University BOSS Entrepreneurship Program
October 21, at 7pm PST: Developing and Protecting Online Brands with Internet Masterminds Group Meetup
October 30, at 11am PST: Terms of Endearment: Contracts for Wedding Professionals at Frame to Finish Expo with Canon
November 2, at 11am PST: Legal Foundations and Intellectual Property at SFU Entrepreneur of the Year Jumpstart program
Looking forward to sharing my passion for intellectual property!
As a follow-up to my post on Asian domain name scams, I received an email from Christopher Hofman Laursen.
He sent me a link to his post on the same topic where he provides an extensive list of Chinese domain name scammers with names and emails.
Certainly worth checking out!
Last week, I have delivered a seminar on trademarks through Vancouver Business Network.
Among other things, I explained that business owners can file their own trademark applications in Canada because there is no mandatory rule that would require them to use a trademark agent for that. I also said that it may not be such a great idea if you don’t know what you’re doing.
The night after the seminar, I received an email from a business owner who, about a year ago, was shopping around for a good deal to register three trademarks for his business.
Eventually, he decided to file them on his own.
Unfortunately, he now received office actions for all three of them.
One is especially troublesome, because the examiner is of the opinion that the mark is descriptive of the services in association with which it was applied for.
The problem is not with the mark itself, the problem is with the way the business owner drafted the statement of wares and services. He should have worded the statement of wares and services more broadly, so that it wouldn’t be essentially the description of the mark itself. Unfortunately, he can no longer do that, because after the application has been filed, one cannot broaden the scope of goods and services any more.
So the end result is: he saved a few thousand dollars on lawyer fees, yet he wasted a year investing his time, effort and money building a brand he can’t register as a trademark.
Was it worth it?
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