Proper Trademark Usage – Part 2

October 23, 2013

Trademarks should be used consistently and exactly as registered.

In Part 1 of our ongoing series on Proper Trademark Usage, we discussed the use of trademark symbols.  Part 2 of our series discusses a number of reasons why trademarks should be used consistently and as registered:

 1.     To maintain brand identity

A trademark is a shortcut that helps consumers distinguish your products and services from those of your competitors.  If your mark is frequently changing, it will be more difficult for consumers to make the mental association with your products and services.  

Having a brand manual or style guide that outlines exactly how a mark should be used is a good idea, particularly when you are licensing your mark for use by different entities.  See Twitter’s Trademark and Content Display Policy as an example: https://twitter.com/logo.

 2.     To protect the validity of your trademark registration

 If the trademark you are currently using has significantly deviated from the mark that you registered, your registration is at risk of being expunged for non-use.

 If your mark doesn’t match what appears on your Certificate of Registration, consider filing a new application for the updated version of the mark.

 3.     To protect your ability to enforce your trademark rights

Trademark disputes are often decided based on who has earlier rights in a mark. 

If, in the past, you were using one mark, and over time you added, removed, changed, or rearranged elements of the mark, you may have actually lost any rights in the original mark.

In that case, you will not be able to claim rights dating back to that original use, and your entitlement date will stem from when you started using the latest version of the mark.  A later entitlement date may put you at a disadvantage in a trademark dispute. 

 Filing a new application each time your mark is updated will ensure that there are no gaps in your trademark protection.

 How much deviation is acceptable?

Most brands will at one time or another go through some form of an update, whether it is a simple tweak, a refresh, or a complete brand overhaul.  Whether the new look will support an old registration depends on the extent of the change. 

Have the dominant features of the mark been preserved? Are the differences so unimportant that a consumer would still assume that the marks identify goods of a common origin?  If so, your old registration should offer sufficient protection. 

In a well known Canadian trademark case, the use of a “slim” penguin was sufficient to maintain a registration for a noticeably more rotund penguin, where the dominant features of the mark were retained (see Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA)). 

In another case, the Board found that use of a design mark in which the word SUN appeared above the word EXOTIC within a sun and rectangle design was not use of the registered word mark SUNEXOTIC because “the trade-mark had lost its identity and did not remain recognizable in the form as used” (see Oyen Wiggs Green & Mutala v. Rubicon Products Ltd. (2007), 65 C.P.R. (4th) 54 (TMOB)). 

Changing the colour of a trademark will not impact the validity of a trademark registration that was filed in black and white.  However, if your registration included a colour claim, it may be necessary to re-file if you have changed your mark’s colour scheme.  

Predicting what the Trademarks Office will consider an “acceptable deviation” is not an exact science.  When in doubt, the safest approach is to re-file.

Brand identity and maintenance of trademark rights are good reasons to avoid altering your trademark.  However, when it is ultimately time for a brand refresh, having a trademark filing strategy in place will safeguard your rights during the transition and beyond.

 

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