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!
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?
It is with great pride and pleasure that I can finally announce that Protecting Your Ideas and Covering Your Assets® is now a registered trademark of Mincov Law Corporation.
It was more than just a “file & wait” experience, since the Canadian Intellectual Property Office cited another trademark “Protect Your Ideas” previously registered by another firm against my application. It took some creative effort, including references to French language translation of the trademark, to overcome this objection.
First down, several more to go.
I am also excited to announce that I will be conducting a free workshop on trademarks through Vancouver Business Network on September 17, 2013 at 6PM.
The original title of the presentation “You got a brand. Now what?” was renamed to “How To Protect Your Brand With Trademarks” for greater clarity. But the idea remains the same, it’s not enough to come up with a good name, logo or tagline. As any other business asset, you need to protect your trademarks.
No entrepreneur starts a business with an idea that their business will be just like everybody else’s. How many people refer to Facebook as “Mark Zuckerberg’s website?” Successful brands transcend their owners. This is the power of a brand. And if you don’t protect it, you are not being serious about your business.
The Meetup organizers charge $5.00 at the door, but the workshop itself is free.
Please RSVP at http://www.meetup.com/the-vancouver-business-network/events/138147612/ to attend this event.
If you are an entrepreneur, you need to know when, how and why to protect your brand.
If you are in the business of brand development (designers, advertisers, marketers, printers, etc.), you will learn how to provide massive added value to your customers at no extra cost to you.
If you want clear, no B.S. answers about your trademarks, you don’t want to miss this presentation.
If you came to a restaurant and asked if they could make a good steak for you, and the waitress told you that they’re not sure but they are sure going to try very hard – what are the odds you would order it?
If you asked the waitress how much the steak is going to cost, and she told you that it costs $10 to place it on the grill and then the chef is going to charge you by the minute depending on how difficult it is to cook it to the perfect temperature – how likely would you be to order it?
If – not being convinced that they are any good at steaks – you then asked the waitress if they would offer you a refund if the steak would not come out right, and told you that there would be no refunds because they would have invested a lot of time, products and effort trying to the best of their abilities – would you ever order it from that place?
Below is a typical response that a business owner would receive from the vast majority of law firms and trademark agents in Canada to the question how much it would cost to register a trademark in Canada and whether or not the firm would provide any guarantees:
With regard to approximate costs, we attach a copy of our latest Schedule of Fees for your reference. For your convenience, we highlight the approximate costs of preparing and filing a single trademark application as $XXX plus official fees of $XXX. If the trademark application proceeds directly to allowance, the fees applicable to registration of the trademark application will be about $XXX plus official fees of $XXX.
If an adverse examination report is issued during examination, we will docket such response and report to you with our recommendations to overcome the objections raised in the adverse report as well as the approximate costs. The prosecution costs for the matter will vary depending on the nature of the objections raised and the hourly rate of the lawyer preparing the response. The writer’s hourly rate is $XXX. The approximate cost of reporting to you will be from $XXX. Complex objections requiring submission of evidence are subject to highly variable cost.
Most applications take 14 – 18 months from the date of application to achieve registration if there are no significant delays, but if the application is ultimately unsuccessful, we do not offer a refund.
No wonder most business owners are terrified of registering their trademarks in Canada. A low-cost application fee is simply a bait to get the customer in the door to then bill and bill until the application is either registered or refused. What business owner would not agree to pay a few extra hundred dollars after investing a thousand already? And then just another few extra hundred dollars here and there?
Don’t believe me? Call any law firm in Canada and ask two questions:
1. Can you guarantee a fixed flat rate that would cover the entire process from start to finish, including responses to all office actions that may be issued during the process?
2. Do you guarantee that the trademark will be registered, and if the application is ultimately unsuccessful, will I get my money back?
Now compare their response with the answer you will receive from the Trademark Factory:
We charge a flat rate of $2,000 + tax + government fees for one trademark application in Canada (the total comes to $2,690). This amount covers everything from the initial search of registered trademarks, drafting and filing the trademark application to unlimited follow-up correspondence with the Trademarks Office, responding to all office actions, filing the declaration of use, and obtaining the registration certificate.
We guarantee that the Canadian Intellectual Property will approve your trademarks. Otherwise, you get all of your money back, including the fees you paid to the government.
If you use a remarkable name, logo or tagline for your business, the Trademark Factory™ is the perfect solution to register them as trademarks in Canada.
As I wrote in the previous post Four Important Elements of a Trademark Application, one of the elements of a trademark application is a list of products and services in association with which the applicant is seeking to register the trademark.
Often, self-represented trademark applicants see this as an opportunity to promote their business.
I am a sucker for using non-traditional ways of marketing, but a trademark application is really not the right vehicle.
In the vast majority of cases, Canadian Intellectual Property Office is going to issue an office action suggesting that “a statement in more specific terms of the wares and services is required”. Most self-represented trademark applicants don’t know how to respond to these, and so they abandon their trademark applications, losing precious time and money.
Here are a few examples of how NOT to write your statement of wares and services:
We offer, fitness orientation, cardiovascular, flexibility and strengthening equipment. Plus club associates are there to help you in your fitness endevours. There is also support, motivation. and coaching. Included are change rooms and club amenities.
We offer special rates, offers, discounts, promotions on exclusive products and services related to travel, entertainment and shopping.
The requested trademark will be used to describe how our service is delivered. We provide personal care to seniors. We assist seniors with activities of daily living such as meal preparation, personal care, light housekeeping, etc. We offer choice, comfort and dignity to our clients who want to stay in their homes.
You are not trying to sell anything through your trademark application.
You are not trying to convince Canadian Intellectual Property Office that your products or services are good enough to deserve to be registered as a trademark.
To be honest, Canadian Intellectual Property Office does not care about the quality of your products or services.
All it cares about is whether the list of products and services is specific enough to clearly delineate in association with which products and services others can or cannot use a similar trademark.
Getting your trademarks registered in Canada used to be a complex process full of misunderstanding and frustration. That is until the Trademark Factory™ was launched. Find out why the Trademark Factory is an optimal solution to register your trademarks in Canada.
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