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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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