Trademark is a very important asset of your business. It helps distinguish your products and services from those of your competitors in the market. Over time, you may be able to create goodwill associated with your trademark so that the customers will favor your products and services such that you can enjoy many benefits, including better customer loyalty and profit margin.
Unlike patents and copyrights, trademarks do not expire after a set number of years. Therefore, a trademark can last forever if you continue to use the mark in commerce to indicate the source of goods and services. A trademark registration can also last forever if you file specific documents and pay fees at regular intervals.
With the new Trademark Act of the Canada, “use” is no longer required for the registration of a trademark. However, anyone will be able to challenge the registered trademark for the lack of use for a period of three-years. As such, you may consider applying for your desired trademark before starting to use it to test if your desired trademark is registrable without incurring the cost of actually using the trademark. After the successful registration, you can then start using the trademark to avoid the trademark from being cancelled due to non-use.
If you are considering expanding your business into the United States, you should also consider obtaining a trademark registration in the United States.
Unlike Canada, the registration of a trademark in the United States requires use of commerce of the trademark in the United States if the trademark application is a stand-alone application in the United States. However, the showing of use in the United States can be avoided initially when the registration in the United States is based on a registration in a foreign country, for example, Canada.
As a result, if a registered trademark in both Canada and the United States is desired, you may consider apply for the trademark registration in Canada first. Within six months, an application to register the trademark in United States can be filed, claiming the earlier application date (priority date) of the Canadian application. Then, after the trademark is registered in Canada, the trademark may be registered in the United States based on the registration in Canada.
It is worth noting that a showing of use in commerce in the United States is required five years after the registration in the United Sates. Therefore, you will need to start using the trademark in the United States after the registration there.
Contact us if you need any help with trademark applications.