Her CEO Journey™: The Business Finance Podcast for Mission-Driven Women Entrepreneurs

Weekly show where my featured guests and I explore the financial and business challenges women face on the entrepreneurial journey to success. You'll hear them talk about the money side of their businesses in ways you've always wanted to know about, but wouldn't dare ask. They openly share their disappointments, failures, successes, and everything in-between as they grew sales ranging from 6 to 9 figures. Knowing where your business stands financially helps you make critical decisions with confidence. It's simply the best way to be sure you grow a business that fuels the life you want to live.

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episode 133: Assert Your Business Identity: Why It’s Important to Trademark a Name - The Journey of Cynthia Mason (Intellectual Properties Series) [transcript]


Having a trademark is fundamental to protecting your business assets and potential growth.

A challenge that comes with growing your business is protecting ownership of your primary assets. And you can do this all by creating an identity that sets yourself apart from your competitors.

In this episode of Her CEO Journey™, trademark agent and lawyer Cynthia Mason talks about the value of trademarks and how many business owners can benefit from registering for one. She discusses why a trademark is essential to assets and ownership. She also shares some great advice on naming your business, especially when you want to stand out. Finally, we learn about how to register for a trademark and common misconceptions around trademarks.

Tune in to find out more about how trademarks can bring value to your business!

Here are Three Reasons Why You Should Listen to the Full Episode: 

  1. Learn about the benefits of having a registered trademark for your business.
  2. You will discover the common misconceptions of business owners concerning trademarks.
  3. Cynthia shares her advice on the step-by-step process of how to trademark a name.
Episode Highlights

  • [04:41] Cynthia’s Journey 
  • [05:30] What is a Trademark?
  • [08:38] What Makes A Good Name 
  • [11:17] The Small Business Perspective on Personal Names
  • [14:16] Selling Your Business Under a Personal Name
  • [17:03] Types of Trademarks
  • [18:01] Trademarking Your Methodology
  • [21:40] Deadlines for Registering to Trademark a Name
  • [24:33] Using the ™ Symbol
  • [28:37] How to Trademark a Name
  • [34:04] The Value of Having a Trademark Agent
  • [36:39] Your Trademark Channel 
  • [38:30] Doing Research Before Using a Name
  • [39:06] Common Misconceptions About Trademarks
  • [43:32] Registering a Trademark without a Lawyer or Agent
  • [47:15] Benefits of Registering Your Trademark
Enjoyed This Podcast?

Write a review and share this with your friends.

Connect With Me

Ready to transform your purpose into an impactful business financial story, profit, and joy? Schedule a chat with me at any time.

Resources

  • Growing Your Business with IP-Backed Financing - The Journey of Lally Rementilla
  • Scaling Your Business and Attracting Investors: How IP-Backed Financing Can be Your Growth Strategy for Business - The Journey of Lesley Gouldie
  • Download the Forecasting Guide so you can create an improved finance strategy for your business!
  • Find out more information on trademarks from the Canadian Intellectual Property Office.
  • Mason PC Trademarks
  • Markably®
  • Connect with Cynthia: LinkedIn


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 2021-09-16  50m
 
 
00:03  Cynthia Mason
Regardless of
00:03
whether you're going to register
00:05
it or not, if you start using a
00:05
trademark that is confusing with
00:08
somebody else's, you are
00:08
encroaching upon their legal
00:12
rights. The claim that they have
00:12
against you depends on whether
00:15
they're registered or not. But
00:15
that's why it's important for
00:18
you to ensure you do searches
00:18
before you start using a name
00:22
with or without the symbol.
00:25  Christina Sjahli
Today is the
00:25
last and final episode of our
00:28
Intellectual Property Podcast
00:28
Series. Over the last few weeks,
00:32
starting from Episode 128, we
00:32
share with you the different
00:37
types of intellectual
00:37
properties, the step you need in
00:40
creating IP strategy, how to
00:40
protect this asset, the journey
00:45
of a female founders who is in
00:45
the trenches in building her IP
00:49
strategy to get financing. You
00:49
also heard from an alternate
00:54
commercial lender who focuses on
00:54
providing capital through
00:58
IP-backed financing. And last
00:58
week, you heard from a female
01:03
CEO who was able to grow her
01:03
company and attracted the right
01:08
investor using her intellectual
01:08
property.
01:12
One area of intellectual
01:12
property that we want to explore
01:16
further is trademarks. Trademark
01:16
has been mentioned several times
01:20
throughout this Intellectual
01:20
Property Podcast Series. So for
01:24
the final episode, we are joined
01:24
by Cynthia Mason, the founder
01:29
and CEO of Mason PC, and
01:29
Markably. Cynthia is a
01:33
trademark lawyer and trademark
01:33
agent located in Ottawa, Canada.
01:39
In today's episode, Cynthia
01:39
shares, among others, what is a
01:43
trademark, the three different
01:43
types of trademarks, why you
01:47
should register your trademarks,
01:47
how to register your trademark,
01:51
and what are the common
01:51
misconception around trademarks.
01:56
If you are not located in
01:56
Canada, don't jump to the
01:59
conclusion that this episode is
01:59
not relevant to you. You may
02:03
find tips on how to ask the
02:03
right question to your trademark
02:08
lawyers in the country where you
02:08
operate your business. Take the
02:11
time to listen until the end
02:11
because this episode can give
02:15
you useful tips for businesses
02:15
globally.
02:19
You're listening to Her CEO
02:19
Journey, the business finance
02:22
podcast for mission-driven women
02:22
entrepreneurs. I'm your host,
02:25
Christina Sjahli. If you are new
02:25
here a big warm welcome. If we
02:31
are not connected on LinkedIn,
02:31
please reach out and say hi
02:34
because that's where I hang out
02:34
and share my business finance
02:38
tips. If you have been listening
02:38
to this podcast for a while, and
02:42
you are a regular listener, I
02:42
want you to know, I appreciate
02:47
you. My podcast won't be around
02:47
without your support. This is a
02:51
free weekly show where my guests
02:51
and I want to inspires you to
02:55
balance between mission and
02:55
profit, to create an impact in
02:59
this world, and to achieve
02:59
financial equality through your
03:04
business for good.
03:05
When your business is growing
03:05
fast, you are not only focusing
03:09
your effort on securing
03:09
financing, you also need to
03:12
understand where your business
03:12
is going in the long run. This
03:16
is where a need for a long-term
03:16
financial forecast comes in. If
03:21
you are at a stage where you
03:21
realize you need to build a
03:25
robust financial forecast, but
03:25
don't know where to start, we
03:29
have a solution to your problem.
03:29
Download the Forecasting Guide
03:32
we have created for you and
03:32
start creating a better and
03:36
improved financial forecast. You
03:36
can find the link to this guide
03:40
in the show notes. Let's say
03:40
after using the guide you think,
03:45
"Hm, this guide helped. But I
03:45
think it's better if I focus my
03:49
time on doing what I really
03:49
love, which is building and
03:53
growing my business. I know
03:53
business finance is important,
03:57
but I don't love it." That's
03:57
when we are here to partner with
04:02
you. We understand building a
04:02
proper and robust financial
04:05
forecast takes time,
04:05
accountability, curiosity, and
04:10
passion for your business.
04:10
Connect with us at
04:13
christinasjahli.com/lets-chat.
04:13
Now, let's find out Cynthia's
04:20
CEO journey.
04:21
Cynthia Mason, welcome to Her
04:21
CEO Journey. It's a pleasure to
04:26
have you here today.
04:27  Cynthia Mason
It's a pleasure
04:27
to be here.
04:29  Christina Sjahli
Before we dive
04:29
into details about the ins and
04:32
outs about trademark and then
04:32
why it's important, why we have
04:35
to start thinking about it,
04:35
let's start with your journey in
04:38
building your law firm.
04:41  Cynthia Mason
Well, I started
04:41
my journey almost 20 years ago
04:45
at a big Bay Street law firm. I
04:45
started from day one, I was in
04:50
the trademark department. I
04:50
stayed at that firm for about a
04:53
decade and then I worked at
04:53
another large national law firm,
04:57
but I didn't really want to
04:57
start working at another law
04:59
firm, and kind of start building
04:59
my practice, and all of that
05:03
over again. So I took the less
05:03
than 60 seconds and decided, you
05:07
know what, now is the time to
05:07
start my own law firm. I just
05:11
wanted to do trademark
05:11
protection work. And I wanted to
05:13
do it on my own terms and with
05:13
the clients that I choose. It's
05:17
been just almost eight years
05:17
where I have been on my own in
05:23
my own law firm. We just really
05:23
started growing in the last two
05:27
years.
05:28  Christina Sjahli
Let's start
05:28
with this, what is a trademark?
05:31  Cynthia Mason
A trademark is
05:31
anything that you use to kind of
05:35
distinguish and set your
05:35
products and your services apart
05:39
from everybody else. Now, the
05:39
most typical ones that we think
05:43
of are names. You see a name
05:43
like Home Depot, or Nike, KFC,
05:50
or like all of these, these are
05:50
names. And that is the main way
05:55
that the consuming public can
05:55
find what you're selling amongst
05:59
everybody else. So your name is
05:59
your main trademark. But when it
06:04
comes to creating a name,
06:04
there's a lot that goes into
06:07
that to make it a good name.
06:07
Oftentimes, we lawyers are a
06:11
little bit at odds with the
06:11
marketing people who come up
06:14
with names in terms of what we
06:14
like to think is a good name and
06:17
what they think is a good name.
06:18
A lot of marketing, people like
06:18
to tend towards descriptive and
06:23
suggestive names because they
06:23
think it's easier to tell, to
06:26
educate consumers what you're
06:26
selling if your name is a little
06:30
bit suggestive. Whereas
06:30
trademark lawyers, we love
06:33
completely coined and like
06:33
arbitrary words, and because
06:38
they're so different from
06:38
everybody else, that yeah, you
06:41
have to invest a little bit more
06:41
in the initial stages of
06:44
marketing. But once you start to
06:44
build that momentum, a
06:47
completely coined or an
06:47
arbitrary name is so much easier
06:51
for consumers to remember. And
06:51
it's that memory that will
06:54
really build into valuable
06:54
goodwill and your ability to
06:58
stop other people from kind of
06:58
encroaching on your territory.
07:01
So that's kind of a long
07:01
explanation of your main
07:04
trademark is your name. But you
07:04
know, people don't just use
07:07
names without any sort of
07:07
stylized component to it.
07:10
Most businesses have a logo that
07:10
incorporates their name or is
07:15
used in connection with their
07:15
name. And so logos really are
07:19
the other primary type of
07:19
trademark that businesses use to
07:23
differentiate their products and
07:23
services from others that are
07:26
out there. You can also have
07:26
taglines, which you know, don't
07:30
tend to appear often on
07:30
products, but they're often in
07:33
advertising, and particularly in
07:33
social media. And all of this,
07:37
like, tag lines are another
07:37
really valuable and powerful
07:40
trademark because you start to
07:40
associate them with one
07:44
particular company. Like Nike
07:44
is, "Just do it." The other
07:48
banking one is, "You're richer
07:48
than you think." Like these are
07:51
taglines that we see over and
07:51
over and over again, and we
07:54
associate them with one
07:54
particular company. And that's
07:57
really what makes them powerful
07:57
trademarks.
08:00
If you're a product seller and
08:00
you have a very unique
08:03
packaging, that can be your
08:03
trademark. If you've created a
08:07
jingle that goes along with your
08:07
advertising, that can be a
08:11
trademark. The Canadian
08:11
Trademarks Office just recently
08:14
added a whole slew of what they
08:14
call non-traditional trademarks
08:17
that you can now register as
08:17
your trademarks. And jingles.
08:21
You can do holograms, you can do
08:21
smells, and tastes like anything
08:26
really, that you can use to
08:26
distinguish your products and
08:30
services from others can be your
08:30
trademark.
08:33  Christina Sjahli
So tell me
08:33
from a lawyer perspective, what
08:37
is the good name?
08:38  Cynthia Mason
We like to think
08:38
of it in terms of there's a
08:40
scale of names. You know, you
08:40
start at like the gold standard
08:44
or the great names, and you can
08:44
move down to completely bad, bad
08:49
names. So the top, the cream of
08:49
the crop really are coined
08:54
words. So I mean, one of the
08:54
biggest one that I can think of
08:58
is lululemon. It wasn't a word.
08:58
It was completely coined by a
09:02
company. And now we associate it
09:02
with one specific company, but
09:07
it's a completely coined word.
09:07
It meant nothing, but was
09:11
adopted as a trademark and
09:11
marketed and so it has become
09:15
very well-known.
09:16
So one step down from these
09:16
completely coined words that
09:19
didn't exist before the company
09:19
started using it as a trademark.
09:24
You have arbitrary words. So
09:24
these are words that don't have
09:28
any relation whatsoever to the
09:28
associated goods and services.
09:32
So Apple would be one. It's a
09:32
common English word, but was
09:37
used and is now a very
09:37
well-known trademark for
09:39
computer products. Other
09:39
arbitrary words like Uber. Well,
09:44
it's kind of like a, it's a
09:44
foreign language word, has
09:47
nothing to do with, you know,
09:47
transportation, but it was
09:51
adopted as a trademark. And now,
09:51
it's a very well-known one.
09:55
So you've got your coined words
09:55
and then you've got arbitrary
09:58
foreign language words that
09:58
don't have any relation to the
10:00
goods and services. And then you
10:00
have words that are a little bit
10:04
suggestive of what you're
10:04
selling. So Staples would be
10:09
one. Although that one kind of
10:09
borders on descriptive because
10:12
they're selling staples, but
10:12
words that are suggestive so
10:16
that you look at them, and you
10:16
can make a good guess at the
10:18
type of thing that you're going
10:18
to be buying or the type of
10:21
service that they're selling.
10:23
The step below that are just
10:23
completely descriptive words. So
10:27
SlimFast would be a completely
10:27
descriptive word. It's telling
10:31
people that if you consume these
10:31
products, you will slim down
10:34
fast. Those words don't function
10:34
as great trademarks because
10:41
anybody in your industry should
10:41
be able to use them. And they
10:44
probably do use them in a
10:44
generic sense. And so if you're
10:48
using a generic word or
10:48
something that's very
10:50
descriptive, there's really a
10:50
challenge to stop other people
10:55
in your industry, your
10:55
competitors from using the same
10:57
words or very similar words and
10:57
terms. And so there's really
11:01
nothing setting your name apart
11:01
from everybody else. That really
11:04
is the goal is you want a name
11:04
that's going to set you apart
11:08
from everyone else and that
11:08
people are going to remember. So
11:11
that is kind of like the scale
11:11
of great to not good.
11:17  Christina Sjahli
But now, let's
11:17
think about this: From the small
11:20
businesses perspective, a lot of
11:20
small businesses out there,
11:23
they're using their name as
11:23
their brand or their company.
11:28  Cynthia Mason
It is descriptive
11:28
in a legal sense in that,
11:32
basically, if you're using your
11:32
name, and then it's very common
11:34
practice for a lot of
11:34
freelancers, they operate with
11:38
their personal name as their
11:38
brand, as their trademark. And I
11:42
mean, here's the reality when it
11:42
comes to personal names is that
11:45
you can't stop somebody else
11:45
with the same name using that.
11:49
So if you've got a really unique
11:49
name, sure, maybe it'll fly. But
11:54
if you have, like a fairly
11:54
common name, you can't stop
11:59
other people from using that
11:59
name or something very similar
12:03
even to compete with you.
12:05  Christina Sjahli
You cannot
12:05
even trademark it.
12:07  Cynthia Mason
No, you can't. I
12:07
mean, there are registrability
12:10
rules. And it is very, very
12:10
difficult to register a personal
12:14
name as a trademark. You really
12:14
can only do it when you're
12:17
famous. We really I mean, a lot
12:17
of celebrities. And here in
12:21
Canada, there's a very difficult
12:21
threshold to meet in terms of
12:24
registering a personal name as a
12:24
trademark. You have to file
12:28
evidence that a significant
12:28
portion of Canada would, they no
12:32
longer see it just as a name,
12:32
they see it as a brand. So you
12:35
know, like Justin Bieber is a
12:35
registered trademark in Canada,
12:38
but it wasn't just automatically
12:38
granted registration. His
12:41
company had to file proof
12:41
showing a lot of sales, a lot of
12:45
recognition in the name in order
12:45
for it to be considered a
12:49
trademark and a reputable
12:49
trademark.
12:51  Christina Sjahli
So if there is
12:51
another Justin Bieber, before he
12:54
filed the trademark, he
12:54
literally cannot do anything to
12:58
protect that if somebody
12:58
basically go in there, and then
13:01
said, "Oh, I want to trademark
13:01
Justin Bieber," before he did?
13:05  Cynthia Mason
It would be
13:05
difficult. If the person's name
13:07
was Justin Bieber, and they're
13:07
both doing their own thing.
13:11
There was a situation of this on
13:11
the US: Kylie. So Kylie Jenner
13:16
wants to trademark Kylie as her
13:16
trademark. But you know, Kylie
13:20
Minogue got there first. And so
13:20
Kylie Jenner wasn't able to do
13:23
it because Kylie Minogue was
13:23
able to establish that she had
13:26
brand recognition first. I think
13:26
the thing to kind of remember
13:30
it, if you're in the position of
13:30
thinking of how you're going to
13:33
brand your business, there is a
13:33
lot of appeal to certainly using
13:37
your personal name. I mean, we
13:37
at least in PC aren't going to
13:40
cast any stones about people
13:40
using their name because my last
13:44
name was known. And I wanted my
13:44
clients to kind of see that
13:47
continuation when I started my
13:47
own firm. But from a trademark
13:51
perspective, like I'm not
13:51
stopping other lawyers from
13:54
using the last name, Mason, and
13:54
I can't. So it's not, it's not
14:00
great if you're looking to build
14:00
a bigger business that you want
14:04
to be able to kind of have that
14:04
name exclusivity.
14:08  Christina Sjahli
I also wonder
14:08
if you are using a personal
14:11
name, as your business name,
14:11
right or your brand, is it going
14:16
to be harder as well to sell the
14:16
business later on? So
14:20
technically, probably, the value
14:20
of the name or the brand, there
14:25
is no value basically, later on.
14:25
I'm just thinking like
14:28
long-term.
14:30  Cynthia Mason
I would tend to
14:30
agree with you on that. Offhand
14:33
companies that have been able to
14:33
kind of carry on without the
14:37
original founder, even though
14:37
the branding is based on the
14:39
founder, maybe in the fashion
14:39
design industry, you can
14:43
continue using a name but if
14:43
you're doing personal services,
14:46
where, you know, the vast
14:46
majority of new businesses are,
14:50
I would think, yeah, in order to
14:50
completely step away from your
14:54
company and be able to sell it
14:54
to someone to operate and it's
14:58
got your name on it, I wouldn't
14:58
think that that's the ideal
15:02
position you want to be in.
15:04
It's fairly common when we
15:04
encounter freelancers who are
15:08
really in the kind of like the
15:08
phase of scaling, they're
15:12
looking at adding team members.
15:12
And they're looking at ways to
15:15
kind of get out of the trading
15:15
time for money situation where
15:19
instead of the revenues deriving
15:19
entirely from the hours that
15:23
they put in, and instead,
15:23
they're generating assets that
15:26
create income for them. This is
15:26
the phase where a lot of
15:29
freelancers start looking at
15:29
rebranding and coming up with a
15:34
coined or completely, you know,
15:34
new name, that they could, at a
15:40
certain point, their business
15:40
will become an asset and less
15:44
dependent upon them.
15:45  Christina Sjahli
Because once
15:45
you start seeing that your
15:47
business can grow bigger, or you
15:47
have a bigger vision now, and
15:51
then you have this vision that
15:51
maybe someday you want to get
15:54
acquired, or you want to go
15:54
global, or something like that,
15:57
then you started thinking like,
15:57
"Oh, is it really do I want to
16:01
keep continuing carrying my
16:01
name, or should I just rebrand
16:04
and then have a new name?"
16:05  Cynthia Mason
And at that
16:05
point, you have now lost several
16:09
years of marketing hustle where
16:09
you could have been building
16:14
your original brand name or the
16:14
ultimate brand name, the one
16:17
that you want to eventually take
16:17
forward and grow. Instead, you
16:21
kind of a little bit, chose the
16:21
easy route and went with your
16:24
name. And now you have to kind
16:24
of educate your buyers and the
16:30
public as to, "Okay, well, it's
16:30
the same great service, but it's
16:33
a new name." And easy is never
16:33
the best solution.
16:38  Christina Sjahli
I think from
16:38
the perspective of someone who
16:40
is just starting out, sometimes
16:40
it's hard to envision, what are
16:44
we going to do? Do I really have
16:44
something special over here? Is
16:47
my framework or the methodology
16:47
that I have, does it really make
16:51
sense? I agree with you. In the
16:51
long run, is it going to be
16:54
problem? You already mentioned a
16:54
few things here about types of
16:59
trademark. If you can help me
16:59
summarize it, what are the types
17:03
of trademarks out there that my
17:03
audience need to understand?
17:07  Cynthia Mason
Well, the first
17:07
one, and their first priority is
17:09
their name. So it's either the
17:09
name of your business is
17:13
oftentimes your trademark, or
17:13
it's a unique name that you have
17:18
for a particular product or
17:18
service. Then the next level and
17:23
the next type of trademark is a
17:23
logo. So it really is the
17:26
artistic articulation of your
17:26
name, of a design component that
17:31
you're using in your business to
17:31
differentiate your products and
17:35
services from everybody else's.
17:35
And then kind of the next level
17:38
are these other types of
17:38
trademarks, like taglines, that
17:43
they're not your primary
17:43
branding. It's not the primary
17:45
way that you're differentiating
17:45
your products and services, but
17:49
it is something that is uniquely
17:49
you and you are using to kind of
17:54
indicate that this product or
17:54
the service comes from your
17:56
company as well. So those are
17:56
the main types: names, logos,
18:00
taglines.
18:01  Christina Sjahli
I also saw
18:01
sometimes framework or
18:04
methodology. Is that consider as
18:04
trademark? Because I would saw
18:09
like a or I would saw with
18:09
circle.
18:15  Cynthia Mason
You just
18:15
referenced the two main
18:17
trademark symbols here in Canada
18:17
and in the United States. The
18:21
symbol is the symbol for an
18:21
unregistered trademark. And the
18:24
symbol in a circle is a
18:24
registered trademark. I'm
18:27
willing to bet that these
18:27
symbols were used in connection
18:31
with the name of the
18:31
methodology. And it's not really
18:34
protecting the methodology
18:34
itself. So if you have a unique
18:39
and proprietary way that you are
18:39
providing your service,
18:44
basically your methodology, this
18:44
is pretty common with coaches.
18:48
You've developed your own
18:48
special way of doing something.
18:51
Now, you can't use a trademark
18:51
to stop other people from
18:55
copying your method. Your
18:55
trademark will stop people from
18:59
using the name that you've
18:59
created for your special
19:03
methodology. But the way to kind
19:03
of stop people from copying your
19:07
methodology is you kind of have
19:07
to, using intellectual property,
19:11
you have to use different
19:11
branches of it.
19:15
So you would use copyright in
19:15
order to protect the written
19:19
components. You know, if you
19:19
have, you know, PowerPoint
19:22
slides. You have videos. You
19:22
have books. You have workbooks.
19:27
All of these different elements
19:27
that are included in delivering
19:30
your methodology are protected
19:30
by copyright, and you as the
19:34
owner, have the exclusive right
19:34
to copy, whatever the thing is,
19:39
whatever the work is. So you
19:39
would use copyright to kind of
19:43
protect that component The other
19:43
way that you would, and then
19:47
this goes against marketing and
19:47
how you would want to sell your
19:52
unique methodology, but the
19:52
other way to kind of protect it
19:55
from being copied is to keep it
19:55
secret, and really only disclose
20:00
it to people that have paid and
20:00
agreed to your terms. So
20:06
trademark law isn't going to
20:06
help you protect your
20:09
methodology other than the name.
20:09
But that doesn't mean that your
20:12
methodology is out there and
20:12
that other people can copy you.
20:15
There are ways that you can kind
20:15
of keep elements of it
20:18
exclusive, just not using
20:18
trademark law.
20:21  Christina Sjahli
Now I
20:21
understand it's the name; it's
20:24
not the framework or the
20:24
methodology that they are using.
20:27
They're just trademarking the
20:27
name of their methodology or
20:32
their systems. But anyone else
20:32
technically, if you put it out
20:37
there in social media, people
20:37
can just like grab your method,
20:43
because it's no longer a trade
20:43
secret. Because I think what
20:46
you're talking about when
20:46
keeping it a secret, it's kind
20:48
of like a trade secret, like
20:48
nobody else knows, except people
20:52
that are working with you. And
20:52
then they probably have to sign
20:54
an agreement, saying that you're
20:54
not allowed to do anything to
20:58
disclose anything or talk about
20:58
it.
21:00
Initially, I thought, as soon as
21:00
people put a there, it's
21:04
protecting everything .
21:04
Including, if they're saying my
21:08
method likes, let's say they,
21:08
they put a name, and then there
21:11
is a method 123, whatever
21:11
they're doing in their coaching
21:15
business, for example, then
21:15
automatically, nobody can follow
21:19
it. But then I would see another
21:19
person, a different coach, that
21:24
is kind of using similar
21:24
methodology, but a different
21:29
name. I know like in a patent,
21:29
you have about 12 months to
21:34
basically register it, I
21:34
believe. Is there any deadline
21:38
for trademark?
21:40  Cynthia Mason
No, there is not.
21:40
And then kind of just comes down
21:43
to the reality that there are
21:43
registered trademarks, and there
21:47
are unregistered trademarks.
21:47
They're all trademarks; the
21:50
difference between them really
21:50
is the scope and the ease with
21:54
which you can stop other people
21:54
from copying them. So you could
22:00
create a business and never
22:00
register a trademark. It's not
22:04
smart in my view, but you can do
22:04
it. Whereas when it comes to, if
22:09
you developed a patent or an
22:09
invention, you have to apply to
22:13
patent it within 12 months of
22:13
disclosing it to somebody else.
22:17
There isn't any such limitation
22:17
in the trademark world. You can
22:20
apply to register your
22:20
trademarks at any time. The best
22:25
time to do it, though, is before
22:25
you launch it to the public. And
22:30
there's a couple of reasons for
22:30
this.
22:32
One is filing a trademark
22:32
application, and you can do this
22:36
years before you ever start
22:36
using a trademark, filing the
22:40
trademark application gives you
22:40
legal rights in that name. It's
22:43
a valuable tool in order to
22:43
claim a name for your future
22:46
use. Otherwise, your legal
22:46
rights in a name start the day
22:52
you start selling something in
22:52
connection with that name. So
22:56
this is important for a lot of
22:56
new entrepreneurs who are
22:59
developing a product or a
22:59
service and they haven't yet
23:02
commercialized it, but they've
23:02
given it a name. They don't get
23:05
legal rights by claiming the
23:05
domain names. You got the social
23:09
media pages. You maybe
23:09
registered a business name with
23:13
the province or, or what have
23:13
you, those actions don't give
23:16
you legal rights in that name.
23:16
The legal rights can only be
23:20
obtained by selling something or
23:20
by filing a trademark
23:23
application.
23:24
And so that's why we recommend
23:24
when you think of a name that
23:29
you're going to use with your
23:29
business, you do some searching
23:32
to make sure nobody else is
23:32
already using it or something
23:34
very similar. And if it's all
23:34
clear, and you want to go ahead
23:38
with it. File your trademark
23:38
application and claim it for
23:41
your future use. And then you
23:41
can develop your business idea
23:44
with a little bit more
23:44
competence and assurance that
23:47
there isn't going to be somebody
23:47
else out there who grabs your
23:50
name and starts using it before
23:50
you get to start using it. And
23:53
it's kind of like you've given
23:53
your baby a name. And when it's
23:56
born, this is what it's going to
23:56
be called. But you actually
24:00
don't have any legal rights in
24:00
that name until you start
24:04
selling something. So that's
24:04
kind of the money component of
24:07
it. So yeah, you're using it as
24:07
a trademark, like the word trade
24:11
is intended to mean this is a
24:11
commercial symbol, a symbol that
24:15
you're using to sell something.
24:15
So you can jumpstart those legal
24:19
rights by filing a trademark
24:19
application. You don't have to
24:23
sell something as long as you
24:23
have filed your trademark
24:25
application, you have claimed
24:25
that name for your future use.
24:29  Christina Sjahli
So what about
24:29
if they start using the
24:33
symbol?
24:33  Cynthia Mason
The symbol is
24:33
just telling the world this is a
24:36
trademark. It's not an
24:36
indication of whether you have
24:40
an intention to register it or
24:40
you have a pending application
24:43
in place in order to register
24:43
it. The symbol is available to
24:47
anybody who's using a name or a
24:47
logo, and they just want to tell
24:51
the world it's their trademark.
24:51
That is one of the common
24:55
misconceptions that businesses
24:55
have is about the use of the
24:58
symbol. Oftentimes, they think
24:58
they're not entitled to use the
25:02
symbol until they filed a
25:02
trademark application. And it's
25:04
kind of the in-between symbol
25:04
before you have a registered
25:08
trademark. So you can use the
25:08
and the circle. They think,
25:11
"Okay, well, I have a pending
25:11
application. So I can use
25:14
right now. And then when it's
25:14
registered, I'll switch it to
25:16
." In fact, you can use the
25:16
symbol without ever having filed
25:20
a trademark application. And you
25:20
should. I mean, there's never
25:23
any harm in telling the world
25:23
that this is your trademark. And
25:26
what it is it's telling people
25:26
that, "Okay, maybe it's not a
25:29
registered trademark, but I
25:29
still have every intention of
25:31
enforcing it as mine."
25:32  Christina Sjahli
How long can
25:32
you use the symbol? And then
25:36
if somebody is using the same
25:36
name, can you even legally sue
25:42
them?
25:43  Cynthia Mason
You can but as an
25:43
unregistered trademark owner,
25:46
here in Canada, your legal claim
25:46
is really passing off. And so
25:53
that is opposed to if you have a
25:53
registered trademark, to the
25:56
point where your application has
25:56
gone through the process and is
26:00
now registered, you can sue
26:00
people for trademark passing off
26:04
or infringement. Infringement is
26:04
easier and has a different legal
26:08
test than passing off. So the
26:08
claim of passing off requires a
26:12
couple of different things that
26:12
a registered trademark owner
26:16
doesn't have to prove.
26:17
So if you have a registered
26:17
trademark, the fact of the
26:20
registration, the certificate of
26:20
registration is your proof that
26:23
you own that trademark. It's
26:23
what grants you ownership of
26:27
that trademark. And so you would
26:27
just file that in, you know,
26:31
your statement of claim and say,
26:31
"I'm a registered trademark.
26:34
It's mine." Where if you are an
26:34
unregistered trademark owner,
26:38
and you're trying to stop
26:38
somebody from copying you,
26:41
you're limited to a claim of
26:41
passing off. And part of that is
26:44
you have to prove that you were
26:44
using that trademark first. You
26:49
have to show that their use is
26:49
going to cause, is likely to
26:53
cause confusion with you. And in
26:53
that analysis, the court would
26:57
look at how you've used your
26:57
trademark, and they're looking
27:01
at how they're using their
27:01
trademark and making the
27:05
assessment, "Well, are people
27:05
likely to be confused by the
27:08
source of you know, the products
27:08
or services?" Versus an
27:11
infringement claim, the
27:11
certificate of registration is
27:15
proof that you own the
27:15
trademark. So you don't need to
27:16
prove that you own the
27:16
trademark. It's already there.
27:20
And the question of confusion is
27:20
a lot more hypothetical, because
27:24
that certificate of registration
27:24
for your name, for example,
27:28
gives you the right to use that
27:28
name in connection with the
27:31
goods and services that are
27:31
claimed in your registration.
27:34
But it also gives you the
27:34
ability to stop people from
27:37
using something confusingly
27:37
similar. So that kind of
27:40
broadens the scope a little bit.
27:40
They don't need to be using
27:44
their trademark in the exact
27:44
same way as you. They just need
27:47
to be using it in a way that
27:47
would be covered under your
27:51
trademark registration,
27:51
regardless of whether you've
27:53
used it that way. It's a better
27:53
position to be in when you're
27:57
trying to stop somebody from
27:57
using a similar name. You want
28:01
to have a trademark
28:01
registration. You want your life
28:03
to be that much easier should
28:03
you ever have to take them to
28:06
court. And I can tell you this
28:06
from being on the end of sending
28:12
a cease and desist letter to a
28:12
potential infringer and being on
28:15
the receiving end of it, you are
28:15
in a much better position if you
28:19
can point to a trademark
28:19
registration in that cease and
28:22
desist letter. And it's a much
28:22
more compelling reason for the
28:25
person on the receiving end to
28:25
stop.
28:28  Christina Sjahli
So
28:28
technically, you can carry that
28:30
forever?
28:32  Cynthia Mason
Yes, absolutely.
28:34  Christina Sjahli
So what are
28:34
the steps to register a
28:36
trademark?
28:37  Cynthia Mason
We always do this
28:37
when we register trademarks on
28:40
behalf of our clients is you
28:40
want to search first. You want
28:44
to make sure that the trademark
28:44
you want to register is actually
28:48
available for your registration.
28:48
And so this is dependent on a
28:52
couple of different things. One
28:52
is what's already on the
28:55
trademark's register? Because
28:55
that's what the trademarks
28:57
office is going to look at.
28:57
They're going to search the
28:59
trademark register to see if
28:59
there's anything confusing
29:02
already there. And if there is,
29:02
they're going to raise it as an
29:06
obstacle to your mark. And so
29:06
you want to know that before you
29:10
file your trademark application,
29:10
because otherwise you're wasting
29:14
your trademark application in
29:14
the government fees and filing.
29:17
But not only that, if something
29:17
confusing is already registered,
29:21
you are potentially infringing
29:21
that trademark. And so before
29:25
you file your application,
29:25
always do a search to make sure
29:28
there's nothing that's going to
29:28
be an obstacle to your
29:30
registration and that you're not
29:30
infringing somebody else's mark.
29:33
I would say, you also want to be
29:33
searching in kind of your
29:38
channels of trade, where you're
29:38
going to be selling to make sure
29:42
that there isn't somebody
29:42
already using a mark that is
29:45
confusingly similar to yours.
29:45
Because while it may be an
29:48
unregistered trademark that's in
29:48
use, they would have the ability
29:52
to oppose your trademark
29:52
application and prevent you from
29:55
getting a registration. So it's
29:55
always best to search before you
29:59
file. Then search before you
29:59
even fall in love with a name.
30:03
Like you shouldn't just start
30:03
using a name. You should for
30:05
sure search it to make sure that
30:05
there isn't somebody else
30:08
already out there.
30:09
So once you're sure that the
30:09
mark that you want to register
30:13
and use is available, then you
30:13
file the application. The
30:17
application has to include,
30:17
obviously, the trademark, but it
30:20
has to include the owner name
30:20
and an address for the owner.
30:24
And then it has to include a
30:24
list of the products and
30:28
services that you plan to sell
30:28
in connection with the name or
30:32
the trademark. And so these
30:32
products and services have to be
30:35
described in specific and
30:35
ordinary commercial terms. And
30:39
they have to be classified. And
30:39
so the classification system for
30:42
trademarks is based on an
30:42
international convention.
30:46
There's 45 different classes of
30:46
products and services. And
30:50
anything that you could sell
30:50
will fall into one of these
30:52
classes. And so you have to take
30:52
your products and services and
30:57
divvy them up into the
30:57
appropriate classes. And then
31:00
based on the number of classes
31:00
is what will determine your
31:03
government registration fees.
31:05
So its classification is a
31:05
little bit of an art a little
31:08
bit of a science; it's not easy
31:08
to do. And it's something that I
31:12
mean, this is where trademark
31:12
agent will really add value, and
31:16
help you kind of prepare a
31:16
trademark application that is
31:19
much more likely to just sail
31:19
through the registration
31:23
process. Because what happens is
31:23
once you file your trademark
31:27
application in Canada, it's
31:27
going to sit there for two
31:30
years. The government's not even
31:30
going to look at it for two
31:33
years, two years. And so yeah,
31:33
you could be really far in your
31:38
marketing plans. By the time the
31:38
trademarks office looks at your
31:41
trademark and says, "Well, for
31:41
you, this is not registerable or
31:44
somebody is else already using a
31:44
confusing mark." So this is
31:47
really one of the other reasons
31:47
why you want to make sure that
31:50
you're there's nothing
31:50
confusing, that's going to block
31:52
you because you're not going to
31:52
know. The trademarks office
31:54
isn't going to tell you for two
31:54
years.
31:56
And what happens at the two
31:56
year, around the two year mark,
32:00
the trademarks office examined
32:00
your trademark application to
32:03
make sure that the mark and the
32:03
application comply with
32:07
trademark laws. And so like I
32:07
said, they're going to search
32:10
for confusing marks already on
32:10
the register. They're going to
32:13
look at your mark from a
32:13
registrability perspective. So
32:16
is it descriptive of the
32:16
products and services? Is it not
32:19
inherently distinctive? Is there
32:19
something about it that wouldn't
32:22
function well as a trademark?
32:22
They're going to look at how
32:25
you've described your products
32:25
and services. And they wanted to
32:28
know that they're sufficiently
32:28
specific and in ordinary
32:31
commercial terms so that anybody
32:31
could really look at this
32:34
application and understand what
32:34
it is you're selling. They're
32:37
also going to make sure that
32:37
your products and services are
32:40
properly classified and you've
32:40
paid the government fees.
32:43
And so if any of those things
32:43
need to be fixed, or there are
32:47
objections, you have the
32:47
opportunity to address them. But
32:51
it's going to slow your
32:51
application down even more. So
32:54
what will happen is if there are
32:54
deficiencies or objections,
32:57
they're going to issue an
32:57
examiner's report, setting them
33:00
out, you have the opportunity to
33:00
respond and fix up your
33:03
application if you can. And then
33:03
once it's re-examined after
33:08
you've done all that, hopefully
33:08
you've addressed all the
33:10
objections. The application is
33:10
approved, and then it's
33:14
published for public opposition.
33:14
So if there's anybody else out
33:18
there in Canada, who thinks that
33:18
you are not entitled to register
33:22
this trademark, they have the
33:22
opportunity to file an
33:25
opposition and to set out their
33:25
legal grounds for opposing. If
33:30
there's no opposition, then your
33:30
application just goes from the
33:33
advertisement stage through to
33:33
registration and your
33:37
registration is good for 10
33:37
years. So all in all, from
33:41
filing through to registration,
33:41
we are now around the three-year
33:46
delay. So it's a long process,
33:46
but you can make it shorter by
33:51
not having to deal with
33:51
objections after the examination
33:55
stage.
33:56  Christina Sjahli
So that's why
33:56
involving an agent earlier on is
34:00
a more efficient in the
34:00
long-run?
34:04  Cynthia Mason
Yeah, well, I
34:04
mean, agents are well-versed in
34:06
searching. So they will be able
34:06
to tell you if there's anything
34:09
that's going to be an obstacle,
34:09
if you're going to be infringing
34:11
anybody else's mark, and they
34:11
can ensure that your goods and
34:15
services are described and
34:15
properly classified so that
34:19
that's not going to be something
34:19
that holds up your trademark. So
34:22
yeah, there is a lot of value to
34:22
it.
34:24  Christina Sjahli
When you say
34:24
agent, does it mean lawyer,
34:27
trademark lawyer?
34:28  Cynthia Mason
Well, yes and no.
34:28
The designation trademark agent
34:32
is actually, it's a specific
34:32
title here in Canada. It's
34:37
unique to Canada. It means that
34:37
you are basically licensed by
34:43
the Canadian Intellectual
34:43
Property Office, or they just
34:46
licensed it out. They've kind of
34:46
moved that responsibility out to
34:49
a different party. But it used
34:49
to be that the Canadian
34:52
Intellectual Property Office has
34:52
granted you the right to call
34:56
yourself a trademark agent. So
34:56
in order to become a trademark
34:59
agent you need you know, at
34:59
least two years of experience in
35:03
the trademark field. And you
35:03
have to write an exam to show
35:07
them that you are competent in
35:07
prosecuting and advising clients
35:13
on trademark matters. It's a
35:13
difficult exam. It's not easy to
35:16
pass. It doesn't have a very
35:16
high success rate. And so
35:20
there's a limited number of
35:20
trademark agents in Canada.
35:23
There are a lot of lawyers and
35:23
other professionals out there
35:27
who are not registered trademark
35:27
agents who still advise
35:30
companies on trademark matters.
35:30
But unless you are a registered
35:34
trademark agent, you're not
35:34
allowed to correspond with any
35:37
one of the trademarks office on
35:37
behalf of a trademark owner. So
35:41
many trademark agents are also
35:41
lawyers, because the two there's
35:45
a lot of overlap in what we do.
35:45
I am both a lawyer and a
35:49
trademark agent. And there
35:49
really is not a lot of
35:52
distinction between the legal
35:52
opinions, the trademark
35:55
availability opinions that we
35:55
give. And in the process of
35:58
registering a trademark, it's
35:58
something that a trademark agent
36:00
will do. So it is a specific
36:00
designation in Canada.
36:04  Christina Sjahli
But not
36:04
anywhere else?
36:06  Cynthia Mason
No, I mean, other
36:06
countries have their own kind of
36:09
requirements for dealing with
36:09
their national intellectual
36:13
property office. In terms of in
36:13
the United States, you have to
36:16
be a trademark attorney. That's
36:16
also a designation in the UK.
36:19
It's called a trademark
36:19
attorney. Here in Canada, we
36:22
just call it a trademark agent.
36:23  Christina Sjahli
Another thing,
36:23
you mentioned earlier that you
36:26
have to consider the channel
36:26
that you will be selling the
36:31
product or the name. When you
36:31
say channel here, do you mean
36:36
countries? Like different
36:36
countries where you're going to
36:39
be selling or there is a
36:39
different meaning than other
36:43
than countries?
36:44  Cynthia Mason
When I say
36:44
channel, what I'm really talking
36:46
about is where the likely
36:46
places, the typical places where
36:48
you're going to be selling to
36:48
your target customers? And so
36:53
when there's confusion between
36:53
trademarks, a lot of people
36:55
think that that means somebody's
36:55
going to mistake one trademark
36:59
for another. And that's actually
36:59
not the legal test for
37:02
confusion. The legal test for
37:02
confusion of trademarks really
37:06
means, would the average person
37:06
seeing both marks on products
37:10
think that those products come
37:10
from the same source and the
37:13
same company? And so when you're
37:13
assessing whether that is a
37:17
likelihood or not, there's a
37:17
specific test. And you look at
37:22
the degree of resemblance
37:22
between the trademarks. So the
37:25
degree of resemblance in the way
37:25
that they look, the way that
37:28
they sound, and the ideas that
37:28
they suggest.
37:31
But you also have to look at the
37:31
nature of the associated
37:34
products and services that are
37:34
being sold, or going to be sold
37:37
in connection with these
37:37
trademarks. And part of that
37:41
nature of the products and
37:41
services is where are those
37:44
products and services going to
37:44
be sold? So where are they
37:46
likely to be sold? And those are
37:46
really what we call the channels
37:50
of trade. So if you are selling,
37:50
for example, cereal, your
37:55
channels of trade are grocery.
37:55
Like you're likely not selling
37:58
your cereal on Etsy. It's got a
37:58
fairly typical retail channel.
38:04
Similarly, if you're providing
38:04
legal services, the way that
38:08
consumers and the public and
38:08
businesses can purchase legal
38:12
services is they're looking for
38:12
lawyers in specific places and
38:17
in specific directories. And
38:17
this would be your channel,
38:21
really.
38:22  Christina Sjahli
Would you
38:22
suggest to do the search first
38:25
before start using the if you
38:25
have the intention to register
38:29
later on?
38:30  Cynthia Mason
Regardless of
38:30
whether you're going to register
38:32
it or not, if you start using a
38:32
trademark that is confusing with
38:36
somebody else's, you are
38:36
encroaching upon their legal
38:39
rights. The claim that they have
38:39
against you depends on whether
38:42
they're registered or not. But
38:42
that's why it's important for
38:46
you to ensure you do searches
38:46
before you start using a name
38:50
with or without the symbol,
38:50
before you start using any name
38:53
in your marketing. You want to
38:53
make sure that you're not going
38:56
to be encroaching upon somebody
38:56
else's legal rights.
39:00  Christina Sjahli
Is there any
39:00
other common misconception made
39:03
by business owners about
39:03
trademarks?
39:06  Cynthia Mason
There are a few
39:06
that I have observed over the
39:09
course of my career. I think one
39:09
of the biggest ones really comes
39:13
down to a lot of business owners
39:13
think because they've registered
39:17
a business name with you know,
39:17
their provincial registry or a
39:21
federal registry that, that you
39:21
have legal rights in that name.
39:25
And that's actually not the
39:25
case. A business name
39:27
registration is more like, it's
39:27
a directory listing. It's a
39:31
place where the public can go to
39:31
find a particular business name
39:35
and determine who are the
39:35
individuals behind it versus
39:39
that that registration gives you
39:39
zero legal rights in terms of
39:43
the ability to use that name in
39:43
connection with the sale of
39:46
products and services.
39:47
So oftentimes, you'll see, we'll
39:47
encounter business owners who
39:51
are like, "Oh, no, I don't need
39:51
to register my trademark. I've
39:54
already registered it as a
39:54
business name." And they're two
39:57
very different beasts. They do
39:57
different things, and that
40:01
business name is not going to,
40:01
first of all, doesn't give you
40:04
the right to use that name in
40:04
connection with the sale of
40:07
products and services. But it
40:07
also doesn't give you the
40:09
ability to stop other people
40:09
from using something very
40:12
similar.
40:13
And that kind of leads into the
40:13
next misconception that we have
40:17
seen is that people think that
40:17
if a name is already in use, if
40:23
they just change it slightly,
40:23
it's available for their use. So
40:28
if you had a trademark, that,
40:28
you know, maybe let's call it
40:33
like, "Mom Shop." It's not a
40:33
great trademark, but let's just
40:36
say that's what it is. That
40:36
name's already in use. Well, you
40:40
can't just slap a "The" in front
40:40
of it. And you start your
40:43
business says, "The Mom Shop."
40:43
Like, that's not enough of a
40:47
difference for you to not be
40:47
encroaching upon their legal
40:51
rights. The test for confusion,
40:51
like I said it because there's
40:54
the degree of resemblance in
40:54
appearance, sound and suggested
40:57
ideas, both of those names sound
40:57
similar, they appear similar,
41:01
they have the same idea. And so
41:01
there is still a high likelihood
41:06
that you could be causing
41:06
confusion.
41:09
So it's not just that the
41:09
identical name is taken, that
41:13
you change it slightly, and
41:13
you're gonna be fine. That's
41:15
actually not true. You want to
41:15
ensure that the average con
41:20
umer out there isn't going to
41:20
ook at like, just assume tha
41:23
you guys are selling, your nam
41:23
s are on the same products and
41:25
their own side-by-side and she
41:25
ves, would people think that the
41:29
products are coming from the sam
41:29
company? And that really is the
41:32
way you want to consider the ava
41:32
lability of a name.
41:36
The other misconception that I
41:36
think a lot of business owners
41:40
have is that it's expensive and
41:40
difficult to stop people from
41:47
copying your trademarks. It's
41:47
actually not. I mean, it's only
41:52
the odd really contentious case
41:52
that goes through the court. The
41:56
vast majority of trademark
41:56
disputes are handled at the
41:59
cease and desist letter stage.
41:59
You send a cease and desist
42:01
letter to somebody advising them
42:01
of their, of your rights and how
42:05
they're infringing upon them.
42:05
And in the vast majority of
42:09
cases, you can resolve it in
42:09
that manner. You resolve it in a
42:13
way that makes you happy as a tr
42:13
demark owner, and protects yo
42:17
know, the integrity of your na
42:17
e going forward. It's ac
42:21
ually not that expensive to se
42:21
d a cease and desist letter.
42:24
It's not expensive to register
42:24
your trademarks to make sure
42:28
that you've got your legal tools
42:28
available at the ready should
42:31
you have to send a cease and
42:31
desist letter to somebody. It
42:34
really is a very, very small
42:34
investment compared to the
42:38
amount of money that you spend
42:38
in launching and growing your
42:42
business and marketing it. So if
42:42
you think of it from the
42:46
perspective of, "Well, should I
42:46
spend, you know, $1,000 or a
42:49
couple $1,000 in order to get a
42:49
trademark registration and send
42:53
a cease and desist letter if I
42:53
have to, what would happen to
42:57
the value of my business if I
42:57
don't take any steps and we end
43:00
up coexisting, and I lose
43:00
customers? Or maybe I'm going to
43:04
have to change my name because
43:04
you know, they're much better at
43:06
marketing than me? And so all of
43:06
a sudden, I look like the
43:08
interloper." And so the cost of
43:08
shoring up your ownership of a
43:13
name and your ability to stop
43:13
other people from causing
43:17
confusion is so much cheaper
43:17
than actually what you think
43:22
it's gonna be.
43:23  Christina Sjahli
But can people
43:23
do a trademark registration on
43:27
their own without a lawyer or an
43:27
agent?
43:32  Cynthia Mason
Absolutely,
43:32
absolutely. As a trademark
43:35
owner, you are entitled to file
43:35
directly with the Canadian
43:38
Intellectual Property Office.
43:38
You don't have to hire an agent
43:41
to do it for you. If you are
43:41
going to hire somebody to do it
43:44
for you, you want to, they have
43:44
to be an agent. But otherwise,
43:47
yeah, you can do it yourself.
43:47
And if you have the time and the
43:51
willingness to learn about, you
43:51
know, the classification system,
43:55
and how to describe your
43:55
products and services in
43:57
specific in ordinary commercial
43:57
terms, and there are resources
44:00
on the Canadian Intellectual
44:00
Property Office website that
44:02
will help you through that
44:02
process, you can absolutely do
44:05
it yourself.
44:06  Christina Sjahli
And I also
44:06
believe you have an online tool
44:10
that allow people to register
44:10
that trademark, and then you
44:13
have like a checklist, maybe you
44:13
can describe that as well.
44:16  Cynthia Mason
We have a very
44:16
specific way that we interview
44:20
our clients when they come to us
44:20
with new names and new logos
44:23
that they want to own and
44:23
protect. And so what I did was I
44:27
took that kind of questionnaire
44:27
and I moved it into an online
44:31
platform. So that instead of you
44:31
know you having to schedule a
44:37
phone call with me, and then we
44:37
have our back and forth and I
44:39
learn about your business, you
44:39
can input all your information
44:42
into this online form. And we've
44:42
structured it in a way so that
44:48
when you put in your products or
44:48
your services, it gets
44:52
automatically classified. So you
44:52
don't have to worry about
44:56
figuring out what class you know
44:56
your baseball hats falling into
45:00
or your candles are in. It's
45:00
done on the back end for you so
45:04
that when your application is
45:04
filed, you don't have to worry
45:07
about these objections stopping
45:07
your trademark application from
45:11
going through.
45:12
It's kind of the in between, you
45:12
know, a strict DIY, you figure
45:16
out how to do the descriptions,
45:16
and the classifications
45:18
yourself, you file your
45:18
trademark application, you deal
45:20
with the trademarks office. The
45:20
other end of the spectrum is you
45:23
just hire us. And we'll do it
45:23
all for you. We'll look at your
45:25
marketing plans. We'll interview
45:25
you about your business and what
45:29
you plan to do. We'll look at
45:29
what you're currently doing.
45:32
We'll create the description of
45:32
products and services. And we'll
45:37
figure out how to describe what
45:37
you're planning to do in the
45:39
future to give you enough
45:39
flexibility to allow your
45:41
business to grow. Like that's
45:41
kind of like the service that we
45:45
typically provide clients. But
45:45
the online tool, Markably,
45:48
falls in between there, where
45:48
it's not a strict DIY, but it's
45:53
also not a full-service.
45:54  Christina Sjahli
Is there like
45:54
a certain type of business? That
45:59
you would say, "You know, what,
45:59
you really need to consider
46:03
working with a lawyer or a
46:03
trademark agents or both?
46:08
Because if not, then it's going
46:08
to create a problem."
46:11  Cynthia Mason
No, I wouldn't
46:11
say, I think you know, the
46:15
difference between businesses
46:15
who should DIY versus who should
46:20
work with a lawyer, it really
46:20
just depends on what your values
46:24
are as a business owner. You can
46:24
DIY everything. You can DIY your
46:27
bookkeeping. I mean, I think
46:27
it's a tragic mistake. But you
46:30
can do that. Like, or you could
46:30
just pay an expert to do it for
46:33
you. So if you have the time and
46:33
the ability to kind of research
46:38
what needs to be done in how to
46:38
draw up the great trademark
46:41
application that's going to
46:41
protect your business in the
46:43
future, you should absolutely do
46:43
it yourself. It's not
46:46
industry-specific. It's just
46:46
whether you have the time and
46:49
the ability to figure that out.
46:49
Versus you know, if you don't
46:53
want to spend your time doing
46:53
that, and you want to spend your
46:55
time growing your business and
46:55
doing what you're really good
46:58
at, then hire somebody to do it
46:58
for you. It's actually not that
47:02
expensive to hire a lawyer to
47:02
register a trademark for you.
47:06  Christina Sjahli
Let's wrap up
47:06
our conversation here. And if
47:10
you can share, what are the
47:10
benefits of basically
47:13
registering your trademark?
47:15  Cynthia Mason
Absolutely. This
47:15
has been my entire reason for
47:19
existence over the last few
47:19
years is to really show business
47:23
owners that trademark
47:23
registrations are the most
47:26
valuable tools that you have
47:26
available in terms of owning and
47:31
protecting your primary, your
47:31
first business assets, which are
47:36
the name and the logo and the
47:36
way that people find your
47:39
products and services. So the
47:39
biggest benefit and reason to
47:43
register your name, and your
47:43
logo, and any other trademarks
47:46
that you're using, or you're
47:46
planning to use is that the
47:49
trademark registration gives you
47:49
ownership. Do you want to own
47:53
your name? Who would say no to
47:53
that question? Like if you want
47:56
to own it, you need to register
47:56
it. Otherwise, you know the
47:59
difference between owning your
47:59
name with a trademark
48:03
registration and using an
48:03
unregistered trademark, like I
48:06
said, you can enforce an
48:06
unregistered trademark, but your
48:09
rights only exist where you've
48:09
already had sales.
48:12
So if you're starting out as a
48:12
localized business owner say you
48:16
know you got a hair salon or a
48:16
spa or a restaurant in Toronto,
48:20
you have no legal rights in that
48:20
name. Even if you've existed for
48:23
like 20 years. You have no legal
48:23
rights in British Columbia.
48:27
You've got none in Halifax. Like
48:27
your real legal rights only
48:30
exist where you've had use. If
48:30
you want to own it all across
48:34
Canada, and stop other people
48:34
from using it anywhere in
48:37
Canada, you need to have a
48:37
trademark registration.
48:40
And this kind of leads into the
48:40
next big reason why you would
48:44
want to register your name in
48:44
particular as your trademark is
48:47
you need to have a trademark
48:47
registration in order to enforce
48:51
your trademark rights online. So
48:51
if there's somebody who has
48:56
opened and started using an
48:56
Instagram handle that is your
48:59
trademark or incorporates your
48:59
trademark, you want them to
49:03
stop. You can ask Instagram to
49:03
take it down but you need to
49:07
have a trademark registration.
49:07
Amazon gives benefits to
49:11
registered trademark owners who
49:11
are selling on the Amazon
49:14
platform. If your business is in
49:14
more of the your channel, your
49:19
primary channel would be
49:19
something like Etsy for example,
49:22
you can stop other people from
49:22
infringing your trademarks on
49:25
Etsy but you need to have a
49:25
trademark registration which
49:28
shows that you are the owner of
49:28
that trademark. So the benefits
49:33
are really surrounding the whole
49:33
ownership concept. If you want
49:37
to own something as a trademark
49:37
for your business, you need to
49:41
register it.
49:42  Christina Sjahli
So Cynthia,
49:42
where can people find you?
49:45  Cynthia Mason
Well, I mean the
49:45
best place to find me is through
49:48
one of my websites at
49:48
masonpc.com or markably.ca. You
49:54
can always schedule a 15 minute
49:54
chat with me through either one
49:58
of those websites. Or you can
49:58
connect with me on LinkedIn.
50:01  Christina Sjahli
Thank you so
50:01
much for being here.
50:03  Cynthia Mason
Thank you for
50:03
having me.
50:05  Christina Sjahli
And that's
50:05
brings us to the end of another
50:08
show. Thank you so much for
50:08
listening to another episode of
50:12
Her CEO Journey, the business
50:12
finance podcast for women
50:15
entrepreneurs. If you want to
50:15
create a proactive financial
50:20
plan and process for your
50:20
business so you are ready to
50:24
weather the financial storm over
50:24
the next few months, let's chat
50:28
and see what's possible for you.
50:28
Book in a time to speak with me
50:32
at
50:32
christinasjahli.com/lets-chat.