Trademarks are commonly classified as intellectual property, but there is nothing intellectual about them at all. It may be thought of independently, or it may be someone else's idea. None of this matters. Nor do any rights to a trademark flow from mere creation. Only use or its surrogates - public recognition or an intention to use - create rights, and then not in the creator but in the person behind the use, intent, or creation of public recognition.
A trademark is a way of distinguishing one trader's product or service from that of another trader. Canadian law is based on the premise that the function of a trademark is to indicate the source or origin of a trader's product or services. Primarily a trademark distinguishes the products or services of one trader of those of another and protects the goodwill and reputation associated with a products or services. Trademark law provides essentially no protection for the ideas or concepts underlying the technology, product or service associated with the trademark except that certain well-known shapes may be protected as distinguishing guises.
Careful attention should be paid to the selection and design of trademarks. Unlike a patent that has a twenty year enforcement period measured from the filing date of the patent, trademarks (for goods) and service marks (for services) may remain in force indefinitely. The value of the trademark thus increases each year and if the business that owns the trademark is ever sold, a significant proportion of the sales price can be attributed to the trademark. In the area of Trademark Law the Firm provides a full range of domestic and international trademark services including: clearance searches and risk analysis, registration, enforcement and litigation, licensing.
The Canadian Intellectual Property Office (CIPO) and United States Patent and Trademark Office (USPTO) maintain searchable databases of registered trademarks and pending applications for registration. Just because a similar trademark is shown on the CIPO or USPTO search result does not necessarily mean that the proposed trademark cannot be registered. It is possible the trademark registrant has abandoned use of the trademark even though it is still technically registered.
Thomson & Thomson full search includes active U.S. Patent and Trademark Office trademark applications and registrations filed with the USPTO since 1884, and expired, canceled or abandoned trademarks since 1984. New applications and status changes are updated daily, and provide enhanced Trademark Trial & Appeal Board detail; state trademark databases including records from all 50 U.S. states, plus Puerto Rico and Guam. The Thomson & Thomson search is by far the most comprehensive and the only search report on which our office will base a formal opinion.
No amount of trademark searching can completely
clear a proposed mark for use and registration. There are numerous factors that
determine whether one trademark is confusingly similar to another under Canadian
or United States trademark law. Although there is no “litmus test” the following
thirteen elements, when relevant, must be considered:
1. Appearance, sound, connotation;
2. Goods or services;
3. Channels of trade;
4. Care that is used in purchasing;
5. Fame of any prior mark;
6. Similar marks in use with similar goods;
7. Nature and extent of any actual confusion;
8. Concurrent use without actual confusion;
9. Variety of goods on which a mark is used;
10. Agreements/relationship between mark owners;
11. Applicant’s right to exclude others;
12. Extent of potential confusion.