MAKING A CASE FOR TRADEMARKS,
REGISTERING A TRADEMARK BEST PROTECTS THE BRAND YOU’VE BUILT
It is difficult to overstate the importance of a trademark to a business. As the means by which the general public identifies goods and services, a trademark is an extremely valuable asset, and the protection of it is of paramount importance to maintaining brand strength.
Recently, it was reported that the iconic Saint John, N.B.-based Moosehead Breweries had sued a craft brewery in Vermont on the basis that its “Hop ‘N Moose” trademark for beer ( including a logo that features a silhouette of a moose) constitutes trademark infringement.
One of the hallmarks of trademark law is that no trademark should be permitted to be used if its co- existence with another similar or identical trademark will confuse the public into thinking the goods and services of both owners come from the same source. As a result, when starting a new business or a rebranding exercise, or rolling out a new product or service line, it is critical to search the Canadian Intellectual Property Office database to confirm whether the desired words and designs are available.
Many factors go into the legal determination of whether two trademarks are too confusingly similar, but chief among them is whether the average consumer in a hurry and on first impression — based on the overall nature of both trademarks — would get them confused. A fairly low threshold, indeed. For that reason, seeking trademarks that are as distinct as possible is always advisable. In fact, madeup or coined words are always afforded the broadest scope of trademark protection.
Those with registered trademarks receive a very wide latitude of protection at a federal level. This means that using a registered trademark in the course of operating a business serving customers in Toronto only, you should be able to successfully assert your rights against someone using a similar trademark in Vancouver, even though nobody in Vancouver may have ever heard of your business. That’s one of the biggest differences between using a registered trademark and an unregistered one.
Without the benefit of federal trademark registration, the ability to enforce your rights against others generally extends as far as the commercial area in which your trademark is known. That can be much more difficult to establish.
As a result, cross- border use of trademarks deserves special attention from any brand owner. While the Moosehead litigation is still pending, one of the factors the court will consider is how distinct the Moosehead trademark is in the United States in association with beer products. The more distinct it is, the stronger is Moosehead’s right to its sole use. What is more likely to win the day, though, is the fact that its trademarks were already used and registered in the United States.
This is not always the case for Canadian companies seeking to protect and enforce their trademark rights in other countries. Many times, Canadian trademark owners have not sought registration for their trademarks in the U. S. and only learn of this peril when they find themselves on the receiving end of a ceaseand- desist letter from a U. S. trademark alleging infringement there. Or, a Canadian trademark owner may not learn of the challenges or bars to use of its trademark in the U. S. until it seeks to expand the business, products or services there and find that the trademarks are simply not available.
Trademark owners who do not have registered trademarks may be able to assert in some circumstances that their trademarks have nonetheless acquired distinctiveness in another jurisdiction as a result of having a foundation of users and consumers in that jurisdiction who have come to know the trademark. That is a fact-based determination, so the outcomes can result on a case-by-case basis.
If a Canadian t rademark owner does not have that right to fall back on, the path to trademark protection in other countries can be a challenging one. It is also best practice for a brand owner to conduct due diligence at the outset to confirm whether the intellectual property that matters most to it is available in other countries to which it can foresee expanding within three or four years, and seeking trademark registration in those countries.
Otherwise, those trademark owners may be faced with some difficult branding decisions or even the threat of legal proceedings.