Not long after I decided to start my blog in 2008, I contacted Ann Carlsen & Company. Ann is a Vancouver based Barrister, Solicitor and Registered Trade Mark Agent who specializes in intellectual property law.  My hope was to trade mark the words Esteem Rising which was not only the name of my blog but also related to my career counselling business.  Prior to seeking out information about registering a trade mark I did not know trade mark agents existed and had no clue about the process involved in registering intellectual property. This was one more new experience in the evolution of an entrepreneur.

Nervously, I called and said, “I have a name I’m using for my blog and I want to see if I can protect it through a trade mark.” Ann proceeded to ask me questions including how this related to my services. By the time our initial call was finished I felt comfortable that registering Esteem Rising might be the next step. She sent helpful information but I still wasn’t getting the process.  I sent back an email stating, “I have gone through the information provided. I would like to book a consult to go over it more fully, I have some questions.” We met and with Ann’s expertise and guidance I went on to successfully register Esteem Rising. ®

If you are feeling unsure about the process of registering a trade mark and protecting your intellectual property here are some tips from Ann.

HOW DO YOU KNOW WHAT YOU SHOULD REGISTER AS A TRADE-MARK?

If this particular mark is important to your business and is used by customers to recognize goods or services, then seriously consider registering your trade mark. If it is important to the goodwill and reputation of the business it should be registered. When people mention the product or service they will say what your trademark is. For example: Colgate toothpaste.  If it’s a tag line or a 3 month product, like Christmas 2012, then registration is not necessary. In the beginning you should make sure any trade mark you use is available. It may be infringing on someone else’s trademark. If it is, you will get a cease and desist letter and then have to cope with related expenses.

WHAT ABOUT USING YOUR TRADEMARK AS PART OF YOUR DOMAIN NAME? 

“If you are selling your service, the Domain name might be open but that doesn’t mean you can use the trade mark without infringing on some else’s trademark because there are so many variations. The following is an example of a Canadian company who failed to do a proper search: 

“Their product and service was called ABC.com. The company didn’t apply to register but they did do their own search and it seemed to be available. The product was shampoo and they thought since the company had a name and a domain name they were protected. However, another company in Asia called ABCShampoo.com had covered all the major markets for a trademark which prevented ABC.com from registering their trademark anywhere. Just because the Canadian company was able to get the domain name and incorporate it in British Columbia, didn’t mean the trademark was available. Everything including their website was tied up into this name but they couldn’t use it.  

It is not unusual for several people independently to come up with a similar trademark.  Ann’s advice, “Make sure it is available and file an application as soon as you know this is going to be an important trademark for your business.  If you have not used your trade mark, for instance you are still planning your business, your rights begin on the day you file the application.  Otherwise, your rights don’t commence until you have used the trade mark.  It can take about 6 months before the trademark office will take a look at an application and may take up to a year before it can be registered. That’s if everything goes smoothly.

IS THERE A DIFFERENCE BETWEEN TRADEMARKS IN CANADA AND THE UNITED STATES?  

“Trademarks are done country by country. It happens all the time that there is a company in Canada who has a trademark and there is an identical trademark in the US. As long as you don’t sell into the US you are fine but as soon as you do then you have a problem with the US registration. The process is the same in both countries.”

IF YOU ARE DOING BUSINESS IN THE U.S. SHOULD YOU BE TRADEMARKED IN BOTH COUNTRIES

“If you have a website and those products are going into the US market then you need to protect. Get a trademark for both countries and get your trademark availability search for the US.”  Ann is a trademark agent for both US and Canada. If you know you are going to expand into the US within five years do a search in Canada and the US.  It is easier if you do a Canadian application first and then US application. That holds that mark for you.”

In general you have to use a mark before it’s registered in Canada and the United States. “The main exception is if you have applied to register in Canada and then it gets registered in Canada, you don’t have use it in the US to register it in the US.” You have five years to use the mark but you should be thinking about it if your goal is to tap that US market. With all of these rules and exceptions a trade mark agent can help you decide whether it’s appropriate to go into the US.

WHAT ARE THE ADVANTAGES OF HIRING A TRADEMARK AGENT?

Both Canada and the United States have trade mark databases for you to do a simple search but agents will do a more comprehensive search. The Internet search and official database are helpful and free but they won’t find everything and often are not clear. She offered some examples of common mistakes by the do it yourself applicant like putting in the wrong applicant name or using the wrong technical terms like claims use or actual use. Ann says, “You may put the wrong use or the wrong date and some errors can’t be changed” Sometimes the goods and services are not put in or described incorrectly. Ann provides an example: “Clothing” is way too general. It has to be something that is understood in commerce. It can’t be misunderstood, like “discs” could be any kind of disc, a CD disc or flying disc. Those types of generalities would not be acceptable.”

When you make an error you lose your priority and then you have to reapply. That is a colossal waste of time and puts you in a vulnerable position because as Ann points out, “It may take you six months to find your mistake and in the meantime someone else has applied.”

Becoming a trade mark agent isn’t an easy process either. Ann described the requirements.  “First you train under a registered trademark agent for two years. Then you take a full day examination which has a failure rate of over 50 %. She adds, “If it’s that difficult to be a trademark agent why do people think they can do it themselves? Some people can do it very successfully but a lot of people don’t.”

What you need to know to get started:

1. Research: Take your idea and do preliminary research on the official databases. Canadian database www.cipo.ic.gc.ca and US www.uspto.gov. “That search will tell you what is not available it can’t tell you that it is available.”
2. Contact trademark agents: There are a lot of trademarks that are not registrable. They look perfectly reasonable, you may be able to use them but they are not registrable due to the trademarks act, such as descriptive marks, surnames and laudatory marks.”
3. Preparation before call: Know what your potential trademark is and what you are going to be using it with. Have you performed the service or sold the goods? With goods, you have to sell the goods and the trademark has to be attached through packaging or labeling. With services, you have to have displayed the trademark and performed the service and you need to know when you did that, approximately.
4. Call a couple of agents: There is a list of trademark agents on the CIPO website and you can search by city and Province. Contact and ask for their fee structure and cost. Nobody will do the search for free. Some will charge flat fees and some by the hour but a majority do a combination of both.  You need to find that out so you can budget and don’t be hesitant to ask questions. Small business women especially are kind of hesitant; they hum and ha before they ask what my fees are. In their first conversation say, “I have not done this before will you help me through the process?” If the agent says “No” or seems cranky, go somewhere else.
5. Find someone you are comfortable with. Most trademark work is done by email or phone. You shouldn’t feel intimidated at all. I personally believe part of the agent’s role is to educate the client so that they are comfortable with the process and understand trademarks and that’s the kind of agent they should be getting. You want to feel free to ask, “What does this mean?” 
6. Look out for unscrupulous companies: “There are unscrupulous companies that send fake invoices once the process is started. These are private companies who have access to the database because it’s public. These fake invoices that look official and if you were doing all this by yourself you may think the invoice was real.  Tip: If it is a trademark office they will always correspond with agent, no trademarks office will correspond with applicants.

As Ann advises her clients, this is a process that takes time. If you have something worth registering these are key steps you can take with confidence.