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.
Business owners who want to protect their branding need to know that there are four important elements in any trademark application.
This is important regardless of whether they use the Trademark Factory™ to register their trademarks, whether they file themselves or whether they use a different trademark agent or a lawyer (why would they?).
These four elements are: trademark owner, trademark, goods / services, and dates.
The first one is straightforward: a registered trademark must be owned by an entity, a partnership or an individual. The public and Canadian Intellectual Property Office need to know who it is. If during the registration process, the trademark changes hands, you can always assign the pending trademark application to a new owner.
A trademark application may only cover one single trademark. If you have several trademarks, each will require a separate application. While there is often a temptation to combine several trademarks into one application to cut the cost of registration, it’s really not a good idea, especially if you use thus combined trademarks separately. This is because in Canada any trademark that has not been used as registered for 3 years or more, can be cancelled on request of any third party. So if you lump a logo and a tagline into a single trademark registration, and then your tagline changes, you may lose rights in both the old tagline and the logo. This is because the registration protects your rights to the entire trademark and not to its elements.
Importantly, trademarks (whether registered or not) don’t give their owners a monopoly over the name or the logo itself. They only give a monopoly over their association with specific products and services for which the name or logo are used. For example, BLUE SHIELD trademark is owned in Canada by two completely different entities: one in association with prepaid financing and administration of medical services, and the other in association with various items related to welding. This is why the trademark application requires the applicant to specify in association with which products (wares) and services they use or are planning to use the trademark. Canadian Intellectual Property Office is very pedantic about the way the list of these products and services is drafted. If an examiner believes that a term in that list is not specific enough, they will issue an office action requiring that the application be amended. I will provide several tips about drafting the list of goods and services in my next post.
Finally, the dates. In Canada, one can only get a trademark registration if the trademark is being used in association with each and every one of the goods and services listed in the application. It is possible to apply for a registration before the use starts (it’s called “proposed use”), but the registration certificate will not be issued until the business owner files what’s called a declaration of use. A simple rule of thumb is: only list those products and services that you are currently using the trademark for and those that you believe you may start using it for in the next 2-3 years. If you have already been using the trademark at the time when you file the application, it is important to specify the earliest date that you can prove with evidence that you were using the trademark for.
The trademarking process used to be full of frustrations and complications for business owners. That is until the Trademark Factory™ was launched with its unique triple Peace-of-Mind guarantee. We guarantee that you will know your budget to a penny before you spend a dime; we guarantee that your trademark will be approved by the Canadian Intellectual Property Office – or you get all of your money back, including what you pay to the government; and we guarantee that you will not be frustrated with not being able to get a hold of your lawyer. This service is really the natural choice of business owners who value their branding and want to protect it in Canada.
Dozens of my clients have received an email from what appears to be a caring registrar from China letting them know that some nasty company is about to register a .CN domain name incorporating their trademark.
Today, I got one of these emails myself. It goes like this:
This email is from China domain name registration center, which mainly deal with the domain name registration in China and Asia. We received an application from [some company nobody knows] on [very recent date]. They want to register “[one of my .COM domain names minus .COM]” as their internet keyword and China/Asia/Hongkong (CN/ASIA/HK) domain names. But after checking it, we find this name conflicts with your company. In order to deal with this matter better, so we send you email and confirm whether this company is your distributor or business partner in China or not?
I always tell my clients to simply ignore these emails, the same way they ignore spam about buying replica watches, receiving inheritance from a Nigerian prince or enlarging their manhood.
Just because someone is trying to sell you something you don’t need by mentioning your trademark should not make the purchase any more desirable.
Most of us don’t need a .CN domain name. This is why we haven’t applied to register one in the first place.
Don’t feel obligated to reciprocate a good act of a stranger: no one is trying to register your trademark as a Chinese domain name. In reality, someone is simply trying to sell you something you don’t need by creating artificial urgency and scarcity that simply isn’t there.
So again, the correct way to respond to such emails is by pressing a delete button.
Your trademarks are your valuable assets. But there are much better ways to protect your intellectual property compared to buying up useless domain names.
I have just added a new template for one-way Non-Disclosure Agreements (NDA) to the Intellectual Property Agreements / Templates page.
There are many free templates of NDAs that one can easily find on the web. Why would I offer mine as a paid download?
The free forms are usually overly simplistic and don’t cover half the issues that need to be covered.
Often, however, when I am asked to draft one to fit a particular client’s circumstances, the cost of the NDA can become too steep for a small business client.
Continuing the trend I started with the copyright agreements, this NDA is designed to help businesses bridge the gap between having a poorly written or no agreement at all and having to spend a fortune on a customized one.
As always, you can check out the preview and see for yourself that this template has more bases covered than any other free non-disclosure agreement template you can find on the web.
I hope this helps.
Mincov Law Corporation is proud to sponsor an edu-tainment event organized by my friend Roger Killen, an entrepreneur and the president of Startups that Work.
INSIDE THE DEN is a unique opportunity to meet, shake hands, take photos with and learn from BC entrepreneurs who have pitched on “Dragons’ Den”.
In fact, there will be TWO events on the same day instead of just one.
The day is Saturday, June 22.
The venue is The Theatre inside UBC at Robson Square in downtown Vancouver.
The Morning Show (9:00 am to 12:00 pm) will feature:
– DougieLuv (DougieDog – hot dogs)
– Lisa von Sturmer (Growing City – composting)
– Michael DeVisser (OHM Cycles – electric bicycles)
– Ann-Marie Fleming (Dog Quality – elderly dogcare)
Use the promo code Mincovlaw to get a 25% discount when you register for the MORNING SHOW.
The Afternoon Show (1:00 pm to 4:00 pm) will feature:
– DougieLuv (DougieDog – hot dogs)
– Lisa von Sturmer (Growing City – composting)
– Darren Shane (AStone Fitness – fitness equipment)
– Natalie Grunberg (Panty By Post – panties)
– Marco Longley (The HEFT – tool attachment)
Use the promo code Mincovlaw to get a 25% discount when you register for the AFTERNOON SHOW.
For more details and to watch a video below:
I will be giving away two prizes each worth $497 for a free 90-minute Intellectual Property Strategy Review session. If nothing else, this would be worth you attending.
Will I see you there?
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