As most know, changing your business name is about more than creating a logo and affixing it on promo materials. It can involve a set of complex — and sometimes drawn out — administrative and legal processes taking place behind the scenes, as you prepare for the big reveal.
And for us right now, this involves trademarking.
Without a doubt, we had to embark down that long and winding road of the trademarking process to safeguard our new brand while we’re still in the midst of rebranding. Otherwise, we could leave our company — and our impending new brand — vulnerable. And, hey, that’s never a good thing.
We also want to ensure we don’t encounter any business hiccups into the future if (erm…when) we expand into more markets across Canada beyond Edmonton, Calgary and Toronto — or even internationally (though we might be getting ahead of ourselves just a tad).
Recently, we connected with Tom O’Reilly, an intellectual property lawyer and trademark agent at Field Law — an Edmonton, Calgary and Yellowknife law firm we have known for many years. He gave us the scoop on why it was important for us to take the step to register a trademark for our name, as well as the three most common mistakes businesses make in this area.
Choosing a trademark that describes your service or product
This is a common mistake people make at the very beginning of the process. Descriptive words are usually good marketing terms — if you give a product a name that suggests the product, people are more likely to know what it is. But if it’s too descriptive (e.g., calling a store that sells shoes, “The Shoe Store”), your trademark registration will be refused, and you won’t be able to protect your brand because no business is allowed to monopolize the generic names for the products and services sold by it, or by its competitors.
Filing your own application
Unless you have extensive experience filing trademarks, doing it yourself is a mistake. If you accidentally input the wrong information into your application (like putting in the wrong first use date or not describing things the right way), this could cause problems for you down the line. You may still get your trademark application approved through the CIPO (Canadian Intellectual Property Office) process and obtain registration, but if you get into a lawsuit with someone years later, they can use that incorrect information in your application to render your registration void and strip you of your defence. Also, the whole Trade-Marks Act and trademark registration system is going to change radically in the next year, so the application you submit now will probably be subject to a new set of rules part way through the application process, that you didn’t see coming.
Assuming your name has protection everywhere without registering
Although you can still have protection in your local marketplace by just using your business name, your protection spans across Canada if you’ve registered your trademark.
Unfortunately, a lot of companies find out about this problem too late because they’ve been using their trademark for five years and have built up goodwill in their local business area. We’ve seen relatively recent examples of this in Edmonton where a local favourite has received a dreaded cease and desist letter seemingly out of nowhere. And then they’re toast.
If you discover someone, say in Saskatchewan, is using the same name as you it’s too late to do anything. If you don’t have that registered trademark, there’s nothing you can do about that guy a province over. You’re done before you even know it.
Spending the time and money up front to protect your brand properly will save you a colossal headache and the accompanying damage to your brand and your company you have worked so hard to build up.
So what’s our takeaway from all this?
Hire a good lawyer. But, equally important, always be proactive and prepared, which is what we would recommend to any one of our clients.
Working with a professional services firm like ours enables you to get advice that’s typically based on hard-won experience and knowledge. We can also put you in touch with the right legal experts to help you. Saving you peace of mind and your brand along the way.