A trademark is a shortcut that helps consumers distinguish your products and services from those of your competitors.  It can be a name, a slogan, a logo, or a combination of word and design elements.  It can even be a three-dimensional shape or a sound.

Many small business owners make the mistake of thinking that only large companies need to worry about trademarks.  With this way of thinking, you not only run the risk of losing valuable trademark rights, but you also risk inadvertently infringing someone else’s rights.   Ignoring trademark rights can be costly to any business, no matter the size.

Protect What’s Yours

If you wouldn’t be comfortable with your competitor using your trademark, make sure your mark is properly protected.  Many small business owners mistakenly believe they have protected their trademark.  The following are common trademark myths.

MYTH: I registered my business name so my trademark is protected

FACT: Incorporating a business or registering a business name is not the same as registering a trademark.  A business name/trade name is simply the name under which you do business.  It does not impart any trademark rights unless you also happen to use it as a trademark, i.e. to distinguish your products/services from those of others.  Registering a business name alone does not prevent other companies from using the same name as a trademark.

MYTH: I registered my domain name so my trademark is protected

FACT: Merely registering a domain name does not provide you with any trademark rights.  Trademark rights are acquired through filing a trademark application or through actual use of the mark in connection with the sale of products or provision of services.

MYTH:  My trademark is protected because I have been using it for years

FACT: While you likely have “common law” trademark rights, such unregistered trademark rights are more limited than registered trademark rights.  For one, they are limited to the geographic area where you have acquired a reputation.  If someone else uses your mark in a city or province where you don’t have a reputation, chances are good you will have no recourse against them.  Moreover, their existence could impact expansion plans for your business as you may not be able to use your mark in other areas.

Also, if you have not applied to register your trademark, someone else could obtain a registration for a confusingly similar or identical mark in your field.  This could create problems for your business.

Finally, enforcing unregistered trademark rights can be difficult, time consuming, and expensive.  Even if you are successful, the cost of opposition and/or court proceedings is likely to be substantially higher than what you would have paid to register your mark in the first place.

Avoid Infringing Someone Else’s Intellectual Property Rights

Not only is it important to protect your own rights, but it is also important to make sure you are not violating someone else’s rights.  Believing the following myths may get your business into trouble.

MYTH: I registered my domain name/business name so I am free to use that name as a trademark

FACT:  Again, registering a domain name or business name does not provide actual trademark rights.  It does not give you the right to use someone else’s trademark in a way that would cause confusion for consumers.

MYTH: If it’s online, it’s part of the public domain

FACT: Just because something is made accessible to a worldwide audience does not mean it is free for anyone to use.  Online content is entitled to the same copyright and trademark protection as anything else.

MYTH: If a mark is not registered as a trademark, it is free for anyone to use

FACT: This is false. Unregistered trademarks may still have “common law” rights which can support a lawsuit for the tort of passing off.

MYTH: I can use a stock image that I paid for as my logo/trademark

FACT:  This is probably not the case.  Licenses for stock images will often permit you to use the image in advertising and on your website but generally not as part of a logo or trademark.

MYTH: My graphic designer/branding company would have done a search to make sure the trademark was available

FACT:  This is likely not the case. Graphic designers and marketing professionals are not Trademark Agents and are generally not in a position to assess the availability of a trademark.

MYTH: If someone complains, I can just change it.

FACT: It is often not this simple, as the costs to change a mark can be significant.  You may need legal advice to deal with a cease and desist letter or lawsuit, which can be expensive.  As well, your business may be disrupted depending on what the other side’s demands are. For example, the other side may require that you destroy anything that has the infringing mark on it.  Time and effort will be required to come up with new branding, and there will be costs to change your packaging, labels and marketing materials.  Finally, you will need to communicate the new brand to your customers and it may take time to re-establish any goodwill that was lost due to the branding change.

Best Practices

The following are just a few basic steps that may save your business time and money down the road:

• Come up with your own creative branding – a graphic designer or branding company can assist you
• Consult with Registered Trademark Agent about clearance searches before you start to use a new mark
• Register trademarks that are important – a Registered Trademark Agent can help with this

Ultimately, the cost to do a search and to register a mark is typically far less than the cost to enforce an unregistered trademark or deal with issues that arise as a result of violating someone else’s trademark rights.

Jennifer Dove is a Registered Trademark Agent with Coastal Trademark Services in Vancouver. She has been working in the intellectual property field since 2003.

This is a guest blog post provided by Jennifer Dove at Coastal Trademark Services. This information is general in nature only. You should consult a lawyer before acting on any of this information. This information should not be considered as legal advice.