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If you own a trademark,
you must defend it
Written by Shirley Lichti for The Record,
December 15, 2004
Many people associate trademarks with companies
that have goods and tangible assets. But even companies with only
intangible assets such as goodwill and brand equity can also benefit
from trademark protection.
I registered my company, Marketing Magic,
in 1995 and have operated under this trade name ever since. Five
years ago I discovered that another company in southern Ontario
had started using the words Marketing Magic to promote a seminar.
I was concerned since I ran seminars under this banner.
To help protect my company's corporate identity
and its reputation, I registered a formal trademark.
The Canadian Intellectual Property Office
(CIPO) defines a trademark as "a word, a symbol, a design (or a
combination of these features), used to distinguish the wares or
services of one person or organization from those of others in the
marketplace."
There are three basic categories of trademarks.
- Ordinary marks are words
or symbols, or a combination that distinguish the goods or services
of a company such as Coca-Cola, IBM, and Intel.
- Certification marks may
be owned by one organization but can be licensed to others to
identify goods or services that meet a defined standard. For example,
the Woolmark design, owned by Woolmark Americas, Ltd., can be
used by licensees on clothing and other wares.
- Distinguishing guise
identifies the shape of goods or their containers. It can be a
key marketing tool, which is why Coca-Cola has trademark protection
on its distinctively-shaped bottle.
You can register a trademark through the
Canadian Intellectual Property Office or enlist the services of
a legal firm, such as Bereskin & Parr in Waterloo. One of the leading
intellectual property specialty firms in Canada, it offers a range
of trademark and patent services.
According to Tim Sinnott, a trademark and
patent agent with Bereskin & Parr, the fee to register a trademark
via his firm ranges from about $1200-$1600 for uncomplicated cases
plus government fees of $450. The process takes about 18 months.
Registration is valid for 15 years, and can be renewed every 15
years thereafter.
"Trademarks are territorial," says Sinnott.
Holding a Canadian trademark won't protect you in the United States.
You have to apply there as well. In his practice, many companies
register first in Canada, followed by the U.S. and then in the European
Community, which covers 25 countries.
Simply registering a trademark, however,
does not protect you. Although the Trademarks Office will prevent
anyone else from registering a mark that is the same or confusingly
similar to yours, it does not police trademarks nor take action
against cases of infringement.
Enforcement is the responsibility of the
person or organization that holds the trademark. Failure to enforce
a trademark can lead to forfeiture of exclusive use. Zipper, escalator,
and cellophane were all trademarked words at one time. Because action
was not taken to prevent incorrect usage, trademark protection was
lost.
An established trademark is a valuable asset.
According to BusinessWeek/Interbrand's annual ranking of the best
global brands, the value of the Xerox and Kleenex brands in 2004
was estimated to be $5.6 billion and $4.8 billion respectively.
That's why Xerox Corporation and Kimberly Clark (Kleenex) work hard
to protect the brand equity they have created in these two trademarks.
And that's why, when I recently learned of
a company in Northern Ontario operating under the trade name of
Marketing Magic, I quickly took action.
According to the company's website, it offers
"Boudoir Advertising." (Although "boudoir" refers to a lady's bedroom
or private sitting room, the company promotes bathroom advertising.)
The northern Ontario firm is using the exact
same company name as mine with a web address that is virtually identical.
I learned all this by accident when two people in two days called
me in a state of confusion because they had inadvertently ended
up at the "boudoir advertising" website instead of mine. Needless
to say, I was horrified.
When I visited the other company's website,
I also discovered they had copied one line of text almost verbatim
from my site. I called Sinnott at Bereskin & Parr and asked for
his advice. His assessment was that it was a clear case of infringement.
Not all cases are so simple, Sinnott says.
The British spiced-ham maker, Hormel Foods, for example, holds trademarks
for Spam. In the U.K., Spam accounts for $24.5 million in revenue
annually. In the U.S., 3.8 cans of Spam are sold every second. You
can understand the company's desire to protect its trademark.
According to Sinnott, although Spam represents
a famous trademark, the question becomes one of how far can it be
extended. Last year Hormel sued SpamArrest, an American anti-spam
company, for trademark infringement. Sinnott feels the case may
prove difficult because there is little confusion for consumers
between the meat product and unwanted email.
In my own case, there was confusion between
the services of the other company and mine. So Bereskin & Parr issued
a demand letter to the other firm on my behalf to cease and desist
from using my trademark.
It's too early to report any results. My
hope is that the letter will be met with compliance, leaving only
one Marketing Magic - mine.
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