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Intellectual Property

Maintenance of Trade-Marks

By March 6, 2014No Comments

In both Canada and the US, trade-marks must be consistently used in their original state in order to maintain their validity.  In Canada, the Trade-Marks Office (“TMO”) only requires that a client certify that they are using the trade-mark in association with its wares and services in order to qualify for registration.  The TMO does not require any pictures or samples.  It is possible, therefore, for little changes to the trade-mark to go unnoticed.

This is contrasted by the US Patent and Trademark Office which requests filing “specimens” of use prior to registration.  The specimens are also required for renewal of the trade-marks years later.  This additional requirement for these specimens often catches clients off-guard, but allows trade-mark practitioners like myself a unique opportunity to assist clients in ensuring that their trade-marks are being properly used.  My practice is to assist clients with these requirements in both Canada and the US, despite the TMO not requiring it.

Here’s an example: Often a client might think that ABC WIDGETS is a great trademark, and use it for years.  However, over the years, their marketing department stops using ABC WIDGETS on products, and develops the plan to include only the ABC portion of the trade-mark on new products, and displays ABC TOOLS, ABC HOLDER, and/or just ABC on their products.  Unfortunately, while these are similar, they are not the client’s original trade-mark.  If the client were to then attempt to register or renew ABC WIDGETS in the US, they likely would have difficulty proving that the trade-mark was used on all of these new products, and it may have not been used at all.

This is not only important to clients in ensuring that they have proper specimens for proving use or for renewal of their trade-marks, but in both Canada and the US, if you are not using your trade-mark consistently within the last 3 years, any third party can apply to have your trade-mark expunged (cancelled) from the register.  This could be tragic to your brand image and cost you thousands in re-branding and marketing costs.  Therefore, while the issue is most prominent in the US as a requirement with registration and renewal, in either of Canada or the US, if you can’t prove actual use of the trade-mark in the EXACT form as was registered, your trade-mark may be cancelled.  I wrote a blog post on the Canadian process here: Section 45 Proceedings.

It is also important that if you wish to alter the appearance or text of your trade-mark, you speak to a trade-mark practitioner as you may want to file for an additional trade-mark with the new text/logo.  It is recommended in most situations to also display both trade-marks, for example ABC TOOLS and ABC WIDGETS, to continue the use of the original trade-mark, while also developing rights for the new one.

For more information, contact me.


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