Trademarks

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

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.

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.)

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.

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.

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

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.

“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.

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.

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: