2013 October

October 23, 2013

Coastal Trademark Opens Satellite Office!

Coastal Trademark Opens Satellite Office!

Coastal Trademark Services is proud to announce that we have recently opened a satellite office in British Columbia’s beautiful Okanagan region, in the city of Kelowna.

Our head office, which will remain in Vancouver, has been earning the trust and respect of some of North America’s leading law firms and companies in industries such as manufacturing, pharmaceuticals, and technology. We will now be positioned to service our expanding portfolio of Okanagan clients including law firms, retail and, of course – wineries! Kelowna is one of Canada’s fastest growing cities and Coastal Trademark Services looks forward to providing our interior clients with the same personalized, efficient, and cost-effective approach to service as we have for our clients on the coast for over 25 years.

As owner of Coastal Trademark Services, I will be travelling between the Vancouver and Kelowna offices, following my passion for trademarks and dedication to high quality service. To grow, every company must innovate, respond to market demands, and be consistent in their service levels. We remain committed to providing you with strategic and practical solutions for your trademark needs.
We wish to extend our thanks for your continued support throughout these years. We are really proud to be part of your success stories and business growth. If you know of any law firms or companies in the Okanagan who would benefit from our personalized trademark expertise, please feel free to let us know. We appreciate the opportunity to grow our community of like-minded professional companies.
Warm regards,
Tanya Reitzel

As Your Business Evolves So Should Your Trademark Strategy

As Your Business Evolves So Should Your Trademark Strategy

Successful businesses evolve to meet the changing needs of their customers.  This can take the form of new and innovative product and service offerings.  It can also involve new or updated names, logos and slogans.  Too often, businesses neglect the need to shore up their trademark rights during this process.  The following are some key points to consider from a trademark perspective as your business evolves: 
When Introducing New Products and Services – The fact that you have a trademark registration or have been using your trademark for a long time does not mean that you are protected if you decide to move into a new field.  Review your existing registration(s) to determine whether the wares and services descriptions are broad enough to capture your new products and services.  If not, have a clearance search conducted to determine whether the path is clear to move into the new line of business with your current trademark.  If the path is clear, file a new trademark application or application to extend an existing registration to cover the new products and services. 
When Adopting New Trademarks – You’ve come up with a clever name for a new product line, or a catchy slogan for your new services.  Protect that mark by having a clearance search conducted and, if the path is clear, file an application to protect the new mark.
When Updating Your Trademarks – Most brands go through some form of a refresh or modernization at some point.  Perhaps your original logo does not reflect the new direction of your business, or is an out of date design that doesn’t resonate with your current customer base.  Depending on the significance of the changes to your marks, you may need to file new applications to protect the updated trademark(s). 
When Expanding to New Regions Within Canada – If you have registered your trademark(s) with the Canadian Intellectual Property Office, good news – you have secured your rights across the country.  If not, you run the risk of violating someone else’s trademark rights in the new areas where you plan to do business, unless you take steps to clear and secure your rights. 
When Expanding to New Countries – A trademark registration in Canada does not protect you in the United States, Europe, China, etc.  Before you expand to new countries, first ensure that no one has prior rights in your mark(s), and then secure your rights by filing applications for all important marks. 
Using a trademark that has not been properly cleared is a risk.  If someone else already owns an identical or confusingly similar mark, you may find yourself faced with a lawsuit.  Having to change a trademark after you have started using it can be expensive, disruptive to business, and can waste the goodwill you have acquired in the brand.  Failing to register your marks for all of your products and services can restrict your ability to expand to new areas and enforce your trademark rights against third parties. 
At Coastal Trademark Services, we can assist your business by performing the necessary clearance searches and protecting your trademarks in Canada, the United States and abroad.

Why Your Brand Needs Innovation

Why Your Brand Needs Innovation

You probably invest a lot of money protecting your brand, because it’s a point of differentiation between you and your competition. But what happens when the category you exist in starts to change around you? And while the brand loyalty you’ve built among your users is strong, their presence is diminishing.

That’s when the notion of innovation becomes a strategic priority for most organizations. Innovation, though, is a term that is widely used and is often ambiguous. Even though organizations acknowledge that to maintain growth, innovation is essential, most organizational teams don’t know how to execute it, strategically.

You may think that innovation has to be disruptive in nature to be a true innovation, like Apple’s iPod or Dyson’s vacuum, but disruptive innovation requires a massive appetite for risk, which most organizations avoid. There is, however, the alternative “small i” innovation, focused on delivering incremental results. 

Small i innovation combines leveraging existing assets with applying fresh inspiration to spot new opportunities within existing markets.  Two examples of incremental innovation are TD Canada Trust’s mortgage vacation, based on the customer insight that sometimes people just want to take a break from their payments, and Molson Canadian’s new Wheat beer, based on the insight that consumers want to try fresh, new flavours with a brand they trust.  By understanding user needs, both organizations built a product that evolved their brand through relevant innovation.

Innovation focused on growing your brand can easily be applied through a few simple steps: focus, exploration, insights and ideas. It’s a simple formula that has successfully grown market share for companies like Reckitt Benckiser, Revlon, Molson-Coors and TD Bank. Now, what’s stopping you from building your brand through innovation?

This article was written for Coastal Trademark Services by Colleen Reitzel, Director at Happen. Happen specializes in Insight, Innovation, NPD, Brand Positioning, Strategy, Technology and Commerce. 

Proper Trademark Usage – Part 2

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.