When Should You Trademark?

I get asked this question all of the time. It’s a loaded question.

Back in an earlier blog post, I explained what a trademark is. Essentially, a trademark could be a word, slogan, design or even a sound that distinguishes the goods and services of one business from those of other businesses. The reason why the question is loaded is because the common law affords certain rights to those who “use” a mark and have “become known” for that mark in relation to goods and services. Therefore, even without applying for a registered trademark, a user of such marks will be afforded some rights.

The issue is that these rights are limited and typically limited by the geographic location in which the marks have been “used” and/or “become known”. So as a basic example, if you have a name for your “mom and pop” diner that only has one location and is only known in Toronto, the common law would typically only protect against those who wish to use a confusingly similar name in Toronto. The diner owner certainly wouldn’t have a great claim against another business owner (even of a diner!) in say British Columbia.

Conversely, the owner of a registered trademark would be typically seen as the presumptive owner of the mark throughout Canada and would be able to assert their rights against any user of the mark or a confusingly similar mark throughout Canada.

So the question is…when do you trademark? As in, when do you apply for a registered trademark?

I typically answer this question by saying that you should apply for a trademark at the point when it would cost you more money to change your mark than it would to apply. Have you developed enough goodwill in your name, product name, logo or sound that if you were forced to change it, it would cost you more (whether in actual cash or lost profits) than it would to apply for the registration of that mark.

In an ideal situation, if a client is not limited by budget or time, my suggestion would be to at least have a proper trademark analysis (including searches) completed prior to even selecting the mark (name, logo, etc.). But that is not always an option.

I would also consider other factors as well. Has the client already applied in another jurisdiction? Is the client aware of a competitor who wishes to use a confusingly similar name or wishes to apply for the registration of a confusingly similar name? Is the client only proposing to use the mark at some point in the future?

The answers to these questions may affect the timing of when it is appropriate to apply for registration.