Is Use on the Internet Sufficient for Trademark Registration

It bears repeating. In Trademarkland in Canada, your right to obtain registration of your mark mostly depends on whether you have “used” the mark in the ordinary course of business. And your ability to keep the mark alive after obtaining registration also requires continued “use” of the mark, in that special Trademarkland sense of the word “use”.

All trademark owners need clearly to understand what behaviour is required in order to meet the level and kind of “use” required under the rules for trademark registration.

Use for Goods

So, for goods, “use” has a narrow meaning in Trademarkland: it means that you have actually sold at least some minimal commercial quantity of your product, in the usual course of business (meaning: no quick sale to cousin Fred just to establish a sale for trademark purposes), while the product was in some way labelled with your mark. By “in some way”, I mean that there is a label (such as in clothing) or on the packaging or some other display of the mark that clearly ties the mark to the product at the moment of sale.

So, on the internet, for goods, merely having a website, even one allowing online sales, that clearly displays your mark with the goods, does not rise to “use” for trademark registration purposes until a customer actually buys an item. You need a real sale to a real customer, in order to claim “use” when it comes to goods.

In other words, if someone ever attacked your mark, a real sale to a real customer means that you would have invoices and shipping documents to show the judge in support of your claim of “use” of your mark.

Use for Services

For services, “use” in Trademarkland is a little broader than for goods. And it’s easier to put the internet to good benefit for services when seeking trademark registration.

For services, the test for “use” is met in either of two circumstances:

  1. The real sale to a real customer definition, but only where the services themselves are actually performed in Canada (for Canadian marks). That is, the services are performed in Canada for a customer with the mark being somehow clearly displayed in the performance of those services.
  2. Advertising the services, by any means, including the internet.

It’s this latter definition of “use” where merely being present on the internet will be sufficient to ground registration for your mark. You’ll need to clearly identify the services and clearly display the mark in association with those services. But so long as you do that, the advertising leg of “use” can be met by your internet presence.

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It Worked!

Our fingernails are a little more ragged than yesterday, but everything is up, working and accessible.

DNS changes took about an hour to propagate, with TTL (time to live) cranked down to minimum values. This blog needed a little clean-up to make it work again, and now we’re back.

Main website: www.incorporate.ca, which can also be found through bcincorporation.com,  incbusinesslawyers.com and inctrusts.com.

And this website, for Canadian, US or international trademarks.

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Incorporate.ca and IncTrademarks.com – website changes pending

We’ve been busy the last few months re-writing our main website, at www.incorporate.ca. We’re getting ready to move it into production, which means changing the hosting company we use. In the computer world, that also means updating the DNS settings for that website and for this website. (DNS settings allow humans to find websites on the internet.)

We’ll be making most of the changes starting late Friday afternoon, but some of the changes will start today. And the required changes may mean that one or both of the websites becomes unavailable for a period of time. Changes to fundamental DNS settings can take as long as 24 to 48 hours to propagate throughout the internet, we’re told, though sometimes less time is needed.

One of the changes being made today is to the settings for this trademarks website. Meaning that it may become unavailable earlier than Friday afternoon.

Not to worry. We’re still open for business, if you call us, and our e-mail settings have already been updated, so e-mails will get through to us as well. Though please note that the changes to our DNS settings may cause delays in our receiving or sending e-mails.

Thanks for your patience.

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Trademark Instructions Form added to blog

I’ve been learning more about Google Docs and their use, both in business and for personal matters. I’ve put up a form that can be used to initiate a request to help you get a trademark application filed in Canada, the US, or elsewhere.

If you try this on your own website, be aware that I had to choose a form theme that had borders that fit within the width of the particular column on the page. If your form theme is too wide, it won’t display properly.

There are WordPress plug-ins that allow forms to be inserted in WordPress blogs. I could have used one of those. I went the Google Docs form mostly because it was new and shiny — to me, at least.

When the form is submitted, it puts the information into a spreadsheet at Google Docs. In other words, a flat file database. In the spreadsheet, under “tools”, you can turn on a notification option to have Google e-mail you if someone submits the form (or other specified events happen). The e-mail notification is provided by way of a daily summary or when the event happens.

For someone whose first online experience was through a small LED screen off a laptop, using a 300 baud modem to connect to Compuserve, this stuff is amazing.

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Trademark Cancellation Proceedings under Section 45 in Canada

In Canada, trademark rights fundamentally depend on the trademark owner’s continued use of the mark. As written earlier, in this context, “use” has a special meaning: products must be marked with the trademark when the product is sold in the ordinary course of trade, or, for services, the mark must somehow be displayed when the services are performed.

For that reason, section 45 of Canada’s Trademark Act provides a simple procedure to have any trademark cancelled for non-use. (In the jargon, sometimes people use the term “expunged” instead of cancelled, but the terms mean the same thing.)

Section 45 can be used by anyone who thinks a trademark is no longer in use by its owner.

The procedure is quite simple:

  • Anyone may apply in writing to the Registrar of Trade-marks to have any registered trademark cancelled. A filing fee applies, but it’s not that much.
  • The trademark must have been registered for at least three years at the time the application is submitted.
  • The Registrar has discretion to decide whether to notify the trademark owner. This is to prevent obviously silly applications.
  • If the Registrar notifies the owner, the owner has three months to provide an affidavit or statutory declaration proving continued use at any point during the previous three years. Usually this is done by showing samples of the trademark in use and by providing supporting evidence of sales, such as invoices and shipping materials.
  • The procedure is not a court hearing. The owner’s affidavit is the only evidence that the Registrar is authorized to receive. However, both the owner and the applicant can provide arguments in addition to the owner’s evidence.
  • The test that the Registrar applies is simply one of use. The owner has no need to prove that the trademark distinguishes the goods or services being sold (which is a consideration during the trademark application process): United Grain Growers v. Lang Michener, 2001 FCA 66. If there has been any use at all within the previous three years, the owner will succeed.
  • If there hasn’t been use, the Registrar will order that the trademark be cancelled. This doesn’t mean that the trademark owner must stop using the mark, simply that the mark has lost its registered status. Of course, if the mark is still important to the owner’s business, the owner should probably re-apply to obtain registration.
  • The Registrar’s decision may be appealed by an unsuccessful participant.

For the applicant, the beauty of the procedure is that once the application and filing fee have been submitted, there’s no need to do anything else. The Registrar takes care of everything.

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Trademark Advertising Scam – Don’t Be Fooled

It’s not quite like clock-work, but I get the question more than I like.

Here’s the background: Someone successfully registers a trademark in Canada or the US or Europe. Some time later — maybe several months, maybe a year — the trademark owner receives a document purporting to be an invoice, addressed to the trademark owner, that asks for a sizeable amount of money (recently, $1,530 CAD). A recent document was entitled “Trademark Publication” and in small print just below the title was the phrase: “Proposition: Publication of protected Canadian trade-marks on the internet”, followed by the contact address for the publisher.

The purported invoice goes on to prominently set out the owner’s registered trademark, and is prominently sprinkled with phrases about “Trade-mark registration”, “Registered Trade-mark”, and contains the date and registration number details about the trademark (all of which are publicly available from the relevant trademark office website).

Most recently, the purported invoice was issued by a company called Trademark Info Corp., at 157 Adelaide Street West, Suite 443, Toronto, ON M5H 4E7, though in small type there is a reference to a foreign corporation registered in Vaduz (the capital of Leichtenstein; I had to look it up). There was a working website one could go to.

What is it about the information publishing business that makes certain participants resort to these kinds of tactics? A real business would first describe what you get for what you’re being asked to pay, ask for the order, and then issue the invoice.

These guys are hoping the business owner can’t be bothered enough to read their document and will just pass it along to accounts payable for payment in due course. Or that, trademark registration being an unfamiliar area to most businesses, the business owner won’t understand that publishing a directory of trademarks doesn’t have much, if any, value.

I’ve seen these things since I first started filing trademark registrations back in the early 1990s, and they’re still going strong.

And it’s not just Canadian trademark holders that are targeted. This sort of thing goes on around the world. Here’s a similar warning from Australia.

I suppose you could pay the money and they would do what they offer to do: publish information about your mark on the internet. Big whoop. A service with no value, except to the publisher.

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SEO and Trademark Infringement

In the early days of the World Wide Web, before the rise of Google, one tactic that people used to get traffic to their website was to insert a widely used search term (such as Playboy) in their webpages, usually in the meta tags or as hidden text. People searching on Playboy would instead find themselves clicking through to the website, where they’d be offered a chance to buy widgets instead of whatever they had been looking for. Playboy rightly complained about that use of its trademark.

With Google, and the enforcement efforts undertaking by trademark holders such as Playboy, that blatant tactic pretty much died out (as far as I know). But it hasn’t gone away entirely.

Suppose you sell widgets and, in writing your website pages, you insert a certain word, such as “Great”, into various parts of the webpage, such as the title tag and the meta tags for the description of the website and the keywords used on the website?

And suppose further, whether you know it or not, “Great” is also a company name or brand name used by one of your competitors?

When Great Inc. finds out about your webpage, they are very likely to send you a letter demanding that you remove the Great references from you webpage. If they’re not overly aggressive, the matter will rest if you comply, but if you resist, or the other company is aggressive about their brand, you could find yourself facing legal action for trademark infringement.

If the Great name happens to be a registered trademark, there’s probably not too much you can do to fight it; compliance is usually the safest route, unless you’re going to challenge the trademark registration itself.

But if the Great name or brand is not registered as a trademark, what then? Fight or switch (as the old cigarette add used to say)?

Great Inc., or its lawyers, will tell you all the effort they have put into building a business around the Great name and its Great products. Usually stretching over many years, and lots of advertising dollars, and broadly known reputation.

And what if you research Great’s website and find they are doing the same thing when it comes to your products? That they are taking your unregistered brand names and using them to tweak their search results, in order to draw traffic to their website and away from your website.

With an unregistered trademark, the answer is not quite so clear. The owner of the unregistered mark will have the burden of establishing that their mark has in fact become well known in the relevant trading area. They’ll need evidence as to revenues, advertising expenditures, the length of use of the mark, and so on.

And for a mark like Great, there’s a question as to whether the mark itself actually qualifies as a trademark, as opposed to being just a descriptive word that merely praises some characteristic of their product or service. (A question which gets back to the fundamental issue of how to choose a protectable trademark in the first place.)

These are the kinds of questions that get asked when potential trademark infringement claims arise. Trademark owners need to know their industry and watch over their SEO campaigns and website design.

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Trademark “use” in Canada: services

“Use” for Services is Easier Than for Goods

Yesterday we covered the Canadian trademark rules for “use” in relation to goods. (Read that post first if you haven’t.) The rules to establish “use” of your mark if you sell services are a little different and, in fact, are helpfully broader than if your mark only relates to selling goods.

Remember, for goods, in effect, you need a real sale to a real customer (ie, a paying customer) with the goods marked with your trademark.

This rule is one of the rules for establishing use of your mark in relation to the services that you sell. But you might be wondering how someone selling services can put a label on their services. How do you label or package a haircut or accounting advice or programming services?

And the answer is that you’re ok if your mark is somehow sufficiently shown while you provide the services. So, while figuring out your business model for delivery of your services, remember to plan for, and implement, your display method for your trademark while you deliver the services.

In this area, more is better. Business cards, letterhead, invoices, signs in your premises, any written material can all be marked with your trademark and thus brought to the attention of your customer or client while you provide the services.

Before we leave this first rule, one last thing to remember: to count as “use” of your mark for services, the services must be provided in Canada. That is, if your services are provided solely outside Canada, they won’t qualify for Canadian trademark protection.

Advertising of Services is “Use”, too

Compared to establishing “use” for goods, the trademark system in Canada relaxes the “use” rules for services in that advertising of one’s services is sufficient to establish “use” of a Canadian trademark for services.

With the rise of the internet, of course, this means that anyone can immediately start to advertise their services and doing so will qualify as valid “use” of their mark in order to establish the right to registration of their trademark.

But you’re not restricted in the kind of advertising. The older sources of print, television, radio, direct mail, and so on would all count.

Just remember that advertising does not count as “use” when it comes to goods. Only services. Again, for goods, the trademark owner must be out there with real sales of their trademarked product.

Services Need Defensive Trademark Practice, too

Lastly, as for goods, practice defensive trademark ownership to keep and even update evidence of “use” for your services.

Having solid proof of your date of “first use” of your mark can be critical if someone ever questions or even attacks your registration.

If you’re relying on the real sales test for “use” for your services, be sure to throw a copy of the invoice that was issued when the services were provided. Make a note of the place, date and even time for your trademark records.

For advertising, print out or save a screenshot of your webpage or a tear sheet from a printed advertisement or a copy of the flyer you circulated.

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Trademark “use” in Canada: products

Introducing Trademark-land

Over the years, I’ve learned that, in approaching many areas of law, a good mental habit to adopt is to treat the area of law as being different from all other areas of endeavour. That is, in most cases, if you approach a particular area of law with what would otherwise be typical or ordinary beliefs, associations and connotations that you use (probably successfully) in operating the rest of your life, you’ll probably come to grief.

To emphasize that separation, I find it useful to refer to, say, trademark law as “Trademark-land”; always remembering that what applies in Trademark-land doesn’t (necessarily) apply elsewhere, and vice versa.

All of which is a long introduction to the topic of this post: the deceivingly simple, three-letter term called “use”.

In ordinary life, “use” is a common word, with no hidden or special meanings. “What’s the use of that?”, we say. Or, “can someone show me how to use the photocopier?”. And we immediately understand what the person means.

“Use” in Trademark-land

But in Trademark-land, “use” isn’t simple or straightforward anymore. In Trademark-land, especially for Canada, “use” has a special, narrow meaning. And failing to understand and act upon that meaning can make or break your trademark, especially if a competitor decides to attack your mark.

This is because, in Canada, a trademark’s life depends on its continuous “use” (in that special, Trademark-land meaning). If there is no “use” of your mark, then you can’t even get the mark registered in the first place. If your mark is registered, but you stop using the mark for three consecutive years, then anyone can ask the Trademarks Office to cancel your registration on a summary procedure (though you do get a chance to respond to any such request for cancellation).

In Canadian trademark law, for products, “use” is defined by a “when” test and a “what” test:

  • The “when” test means that the relevant time is the moment when legal title to, or possession of, the products in question are transferred to a buyer, whether a wholesaler or the end customer.
  • The “what” test has a few subdivisions:
    • The transfer of title or possession must take place in the ordinary course of trade. This means that the trademark owner needs some minimal level of commercial activity. Not a lot of activity, but more than a one-off situation created to get a trademark registered. Handing out free samples doesn’t count as “use”. It’s activity where an invoice or shipping documentation will be generated at some point.
    • The second aspect is that, at the time of this transfer, the mark (in the form applied for) must be somehow associated with the products being sold. The best way of doing this is to put the mark on the product label or on the packaging for the product. But if you can’t do either of those, then there is a catch-all provision of “otherwise associated”; one possible example being a point-of-sale display that contains the product in question.

In short, what the “use” test in Canada’s Trademark-land is looking for is a real sale to a real customer with the product bearing the mark somehow.

And don’t hide the mark in a tiny corner of your product. That may not be a sufficient marking. When the customer buys your product somehow they must perceive they are buying the product as a combination of your product and your mark. Otherwise, they might as well be buying the generic item from the discount bin.

Defensive Trademark Practice

In Canada, there’s no longer any requirement to file actual proof of “use” of one’s trademarks, at least during the application phase. Sure, for proposed use applications, one must file a declaration of use, but that document is just a few lines where the trademark owner asserts that they have in fact begun to use their trademark. Certainly the CIPO examiners don’t check behind the declaration.

But just because there’s no checking, don’t think that it means that a trademark owner should game the system. Filing a false declaration will result in the registration being void, and financial penalties can apply.

Therefore, the wise trademark owner will keep a file containing evidence of their first use of each trademark. Such a file might contain copies of the initial invoices that were issued when the products were sold; related shipping documents; even digital photographs of the product and the mark as the customer would have seen them at the time. From time to time, the trademark owner might want to update the file with those same kinds of documents. That way, the owner will be able to easily fend off any challenge to their registration for alleged non-use.

So welcome to Trademark-land. But learn its ways and customs if you want maximum protection for your Canadian trademark.

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Registration and Use Abroad – Bringing a Foreign Mark to Canada

In common with other countries, Canada’s Trade-mark Act allows trademark owners who have obtained registration of their trademark in their home country and used the mark somewhere in the world to apply for registration of that mark (the “foreign mark”) in Canada based solely upon that foreign registration and use. With this filing basis, it would not be necessary to rely on the “proposed use” or “actual use” filing bases in the Canadian trademark system.

For registering a foreign trade-mark in Canada, here’s a quick intro on the details:

  • The application for the Canadian registration of the mark is filed like a typical “use” application. But some of the information to be provided is different.
  • It’s not necessary to have actually obtained the foreign registration before you file the Canadian application. As long as (1) your foreign application has been filed in your country of origin and (2) you have had some “use” (ie, some sales) of your goods or services outside Canada, then you can file the Canadian application on this basis.
  • And if you file the Canadian application within six months of having filed your foreign application, the Canadian application may qualify for priority treatment in the Canadian system. That is, the Canadian system will give your Canadian trademark application the same filing date as in the foreign application.
  • The trademark examiner will vet the application as submitted, and any deficiencies can be corrected. A typical deficiency is to revise the description of the goods or services listed in the foreign registration to accord with Canadian practice.
  • However, the Canadian application will not be allowed to enter the advertisement for opposition phase until the foreign registration has actually been issued, and a government-certified copy of the foreign registration certificate has been submitted to CIPO. (Compare the US practice, where they will take even a photocopy of the registration certificate, uploaded by PDF.)
  • So, eventually, the registration date and registration number for the foreign trademark will need to be provided to CIPO.
  • It’s critical to note that the foreign registration must be in the applicant’s country of origin. (In this context, “country” includes a European Community trademark.) In most cases, a trademark owner will start the process by filing a trademark application in their country of origin. But some trademark owners prefer to file in the country where their major market is. (Here in Canada, some Canadian businesses just file straight into the US, and ignore Canada.) But if you don’t file in your country of origin, then this filing basis is not available for a Canadian trademark application. That trademark owner would have to file on one of the “use” bases.
  • The second critical requirement is that the applicant must be able to assert actual “use” of their foreign trademark in at least one country anywhere in the world. In the trademark world, it’s very important to understand that “use” has a narrow, special meaning. In short, it means a real sale of your good or service to a real customer where the mark as registered (or applied for) was associated with the sale (eg, a clothing label or on the packaging).

So owners of foreign trademark registrations that have “used” their mark anywhere in the world can obtain protection for their brand in Canada, even without first having to sell their products or services into the Canadian market.

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