Have you ever thought about trademarking your race’s name or logo? Trademarking your race and brand could help protect your business against trademark infringement, and the risk of getting someone else’s event confused with yours, whether that is done through malice or ignorance.
Today we’re going to be looking at all aspects of trademarks and the trademark registration process, with the help of no less than three distinguished guests - Brian Gallant of Sinister Sports, who had to defend his race trademark against a competing claim not too long ago, and intellectual property lawyers Suzanne Sjovold and Jon Deppe who will be bringing the legal expertise in today’s highly technical subject.
We are going to be looking at the process of registering a new trademark, defending a registered trademark you own against infringement, as well as the many protections afforded to your brand by law even in the absence of a formal trademark registration, through the concept of common law trademarks. So stick with us to have all your trademark-related questions answered.
In this episode:
- Trademarks as a consumer protection device
- What aspects of a race can (and can't) be trademarked
- Trademark geographical limitations: federal vs state/regional protection
- Common law trademarks: what they are, and what protection they already provide for your race even without trademark registration
- Resolving conflicts between common law trademarks and registered trademarks
- Defending your common law trademark against a competing trademark registration
- Why using your trademark in trade is crucial for establishing trademark protection
- Registering a trademark, trademark registration classes, and trademark search best practices
- Establishing registration priority with intent-to-use trademarks
- The cost of registering a trademark
- DIY trademark registration: is it worth it?
- (R) vs TM: Understanding trademark symbols and when/where to use them
- Renewing and defending registered trademarks
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Brian, welcome to the podcast!
Thanks, Panos, for having me.
Well, thanks so much for coming on. Can you tell our audience a little bit about where you're based?
I am in Crowsnest Pass, Alberta, which is at the south end of the province in the Rocky Mountains of Canada. I've been a race director for 21 years now. We focus primarily on ultra and trail races and marathons.
Awesome. I think, in your case, we need to also mention the name of the company which is a super cool name - what is it called?
Right. We are Sinister Sports Inc, and that comes from our landmark race Sinister 7 Ultra, which comes from the Seven Sisters mountains that are just west of town.
Excellent. How's business these days?
It is actually a really great year. Things have completely rebounded from the last two years when we were largely shut down. In 2020, we didn't work at all. I think we maybe had one tiny race of 40 people. Then, last year, we had about half the number of people that we normally would have. This year, it's as good as it could ever be.
Fantastic. Well, let's hope that keeps up. Now, we also have with us, today, Suzanne Sjovold joining us from Canada and Jon Deppe joining us from the US who are going to be the legal experts in today's discussion. We're going into a very technical topic today and it's good to have, at least, a lawyer or two around. So, welcome to the podcast, guys!
Thanks for having me!
Well, thank you very much for joining us today. We can definitely all benefit from your expertise. Do you want to maybe introduce yourselves a little bit to the audience? Tell us a little bit about yourself, maybe, starting with Suzanne.
Sure. Thanks, Panos for the opportunity. I am also in Alberta, just about an hour and a half east of where Brian is located. I am a trademark and patent lawyer here in Lethbridge, Alberta at the south end of the province. I can see the Rocky Mountains from here, but I'm not lucky enough to get to live in them nor do I do the races that Brian's company sets up. I have friends, certainly, who have done them and I know the mountains of which he speaks, but I don't try to peak seven of them in a day - that's too much for me. I've been an intellectual property lawyer, generally. We do more than just trademarks - although that's what we're focusing on today - for about 15 years. It started in Edmonton, north of the province and, then, generally, slowly moved south for the nicer weather and to be closer to the mountains. I hope that my goal here today comes across which is to explain the language of trademarks. As you say, it is a technical topic. It's something that people don't necessarily understand. I get lots of calls from people who want to patent their brand that's not a thing and can't be done. So, I hope, today, that we can get across to your listeners what it is, what we do, and how to protect their brand, their slogans, and their logos properly, and to do so without the headaches that Brian unfortunately endured, that is no fault of his own, obviously.
Absolutely. Because we should say, actually, that you were the lawyer who helped Brian trademark his races - we're going to go into some of the histories of that, which is quite interesting. You're looking at the Rockies - is that the connection with Jon? I mean, they run all the way down to you, Jon, down in Denver - where you're based?
That would be quite the race if you did that. So yeah, I'm based outside of Denver, also, in the mountains - a relatively new transplant to the mountains. So, at 300 feet, I'm ready to test out my altitude training in one of Brian's races, for sure. So, yeah. I live in Denver. I've been practicing, as Suzanne said, intellectual property law, generally. And at the firm, Holzer Patel Drennan, here in Denver, I've been practicing for about 12 years. I have a wide variety of trademark clients from a lot of different industries, with a lot of different products and services, and I hope to shed some light on the mystery that is trademark law.
Fantastic. And again, I should thank you both for taking the time to be with us today. So let's start with the most basic question of all - and whichever one of you can start us off on that - what is a trademark? I think people may even have some misconceptions around that.
I can jump in. A trademark is an identifier of a source of a good or a service - that's the technical legal definition. Suzanne might pitch in on differences in Canada but, in the US, the rationale for providing protection to brand owners in their trademarks is actually consumer protection. So, as a consumer goes to the store or goes online to try to find a race or any product or service, generally, they want to be able to have genuine goods or services and know the source of those, which is why the government provides protection in those brands. It's a consumer protection rationale.
That's true, and it's the same in Canada. So, there are slightly different margins at our site. There are quite a few differences between the process in Canada and the United States - the technical steps that you go through to protect yourself, your brand, and your consumer goods - but what John is saying is the same in Canada. Do you have a slogan, a logo, or a name that you use to market the goods or services that you provide to the public? If so, then you have what we call a trademark, and it's a very broad definition. The Trademarks Acts in Canada was just revised recently in 2019 to include a large number of things. So, it's not just words or logos, but it can, in fact, include designs, tastes, textures, moving images, modes of packaging, holograms, sound, sense, etc. Som that brings us more in line with what the US already had - the ability to trademark anything that you're using to promote your products and services to the public.
And just to pick up on John's point, I guess, at least the consumer protection aspect of why trademarks were introduced is so that when I go to a store and pick up a can of Coke or something, I know that I'm drinking Coca Cola or something and that someone can just pick up a can, slam the same logo on it, and start selling coke under a different company, but same brand name, right?
That's exactly right.
That's it. It all comes down to confusion. So, the consumer protection element of it is that I want to know the source of my goods. Historically, for US and Canada, we can date trademarks right back to the Queen when she or her family was ordering silver steel for their swords and they wanted to know that it was coming from the appropriate steel maker - with adequate strength and quality of goods. So, they would stamp their logo on the swords, and the crown would know that they are, in fact, obtaining the source of swords that they want. Obviously, being in southern Alberta, we have a lot of ranching community here and that's another common place where you use it to actually brand your cattle - you know that it's AAA Alberta Beef if it's got that particular logo branded on it. So, it's to prevent confusion in the public.
Yeah, and we'll go into the confusion, which is actually a point that is also very pertinent for events as well and we'll go into a couple of examples. So, trademarks, as you say, have all different aspects to them and you can trademark, like, senses, fields, and whatever these days, I guess. If we want to narrow this down a little bit to events, I see lots of confusion - we have a race directors group on Facebook, Race Directors Hub, and people discuss these things often - around what can be trademarked about an event. Like, people, obviously, may know that a name might be trademarked, but they don't know whether specific processes or other aspects of the event can be trademarked. So, can we clarify that a little bit for people and, also, nuance it if there are differences between Canada and the US on that?
Yes. I would say, generally, anything that the consumer is going to encounter, either purchased or received as an associative product with the race can include a trademark - the race itself, the organization, the services that go along with all of the events, and what's provided to the participants. Obviously, that's a service that's provided and can have a brand. That same brand can be provided on goods that are either distributed or sold in connection with the race - T-shirts, water bottles, whatever other accessories or products that they get distributed in association with that race. I'd say that's probably the two primary aspects that come along. But, if you had other products like-- let's say, you had nutrition line that you distributed at the race. You could trademark that particular nutritional supplement or what have you. So, really anything that the consumer encounters can be trademarked with that appropriate branding.
That's the same in Canada. There are, under our Trademarks Acts, and according to the common law - which is how we refer to the case law-- we're judges in Canada. Federal court have made rulings on particular trademarks not being registerable. There are certain things that cannot be protected and those are not necessarily related to the product. As Jon was saying, pretty much any product or service can be protected - it's more so the brand or the logo or the trademark that you're using, that is limited. So, for example, you can't describe your endurance race as Brian's endurance race because you cannot use someone who is living or has passed away in the last 30 years - their name or their surname. That's not a trademark - that's just what he does, that's what his company does. You cannot clearly describe the goods. So, you can't have exclusive use of words that are commonly used in common parlance. So, endurance races, that's not the brand, that's the event, that's what's happening. So, you wouldn't be able to use the words 'endurance race' in your logo, in your slogan, and in your trademark. You can't be deceptively misdescriptive. So, where this comes up, for example, is to describe something, let's say, as an organic product. So, you have organic in your brand name somewhere but, in fact, the product is not organic. Or you use the word titanium to describe something and there's, in fact, no titanium strength in there. You cannot use places of origin, so I couldn't have Lethbridge in my brand, which comes up with Brian's Canadian Death Race mark, which we can talk about down the line. You can't have words in other languages. And, obviously, as we've discussed, you cannot register something that is confusingly similar to something that's already out there. So, there are limits to the mark that you can protect. But as far as the goods and services go, it's really whatever it is that you're selling, provided that you describe it adequately and you give it a good enough description of what it is that you're making and selling.
I think it's also important to point out that the ideas, possibly, behind the races aren't really protectable as trademarks. So, for example, Brian has the different races that he has there. As a local example, here in Colorado, there's the Triple Bypass race where it's a bike race that goes over three different mountain passes. I can organize an identical race that has the same route, goes over those same passes, call it something different and still get trademark protection for that and not be infringing - to the extent that the Triple Bypass has trademark rights if I don't call something similar. So, the idea is that this is my race. I'm going from here to here to here to here. That really can't be protected as a trademark - it's the branding associated with that. So, again, you might not be able to prevent somebody from doing an identical race, as long as they don't present it under a confusingly similar name. That's what the trademark protection provides - preventing others from peddling your reputation, your brand.
Yeah. I think there's actually a very interesting case here from races that puts across some of those points, and that's the Color Run. The Color Run is a very popular series of races where people run a 5K or whatever and they throw color powder at each other - you may have come across that. Basically, I was reading up on that and, to Jon's point about, sort of, like, the format, protecting the Color Run format is not something you can do. You can't say, "I will be the only race that is exclusively going to have people running and throwing color powder at each other." That's the first point. Then, the other point - to Suzanne's point - earlier about the use of names, I was actually reading about the Color Run that they didn't manage to trademark the name, "The Color Run", although it sounds very generic for the type of race it is. It's almost like trademarking the trail run today or whatever. They were able to do that because, back in the day, the Color Run was, sort of, more like a brand rather than a format kind of thing. It wasn't generic enough and they managed to trademark it, whereas if they had it today, if you had like 10 Color Runs, they couldn't just go and say, "I want to trademark the Color Run." Does that make sense?
It does. And we may be skipping ahead here a bit. At least, in the US, when you apply for a mark like that and, let's say, it's somewhat descriptive - as Suzanne alluded to earlier - you can't have a descriptive mark. I can't say the race from Lethbridge to Calgary, wherever that might be - that's descriptive. If your mark is found to be descriptive when you file for the registration, you can show what's called 'secondary meaning' in the US where you demonstrate that, even though the mark is descriptive, the consuming public has come to know that mark with your particular goods or services. The threshold to establish that secondary meaning is pretty high - it takes quite a bit of evidence to demonstrate that - but you can do that, assuming you do have that brand recognition sufficiently established to provide that. The other thing that I would mention there is that this also brings up potential genericide, which is when your mark - even if you have rights in your trademark - becomes so pervasively used that the consuming public stops associating that particular mark with your products. So, for example, there's a famous campaign in the US for the velcro company. Velcro is not a product. Velcro is a brand. It is a velcro hook and loop fastener that they provide. Again, there's a lot of diligent efforts they would try to avoid people calling all hook and loop fasteners, Velcro, under the fear that they would lose rights to that mark. So again, even if Color Run had protection, it could be that if it becomes so pervasively used that it becomes just a general descriptor of a format, you might actually lose rights if you had them at one point.
Another example of that is Google. Google, unfortunately, has become a verb - let's 'Google' it - which is not. It's a search engine. It's a brand name of a search engine but is slowly losing its distinctiveness because it is being used incorrectly, improperly in other ways, and how would you ever enforce that? But going back to your question, Panos, about the color run, there are exceptions to all of those rules. As Jon mentioned, in the US, it's called 'secondary meaning'. In Canada, we call it 'inherent distinctiveness'. There are circumstances where the brand has been used and has become so inherently distinct. So, when people hear it associated first with the brand as opposed to, for example, someone's name, it can be registered. Tim Hortons up here is a good example of that. It's obviously someone's name. He was a famous Canadian hockey player who opened a donut store and it's now part of our culture, I would argue, but that's his name. So, how did he protect that brand? Well, because we don't think of Tim Hortons, maybe, as the person anymore, but more so as the donut coffee shop instead. So, he became so inherently distinct as a brand that it is protectable
Yeah, that's very interesting, actually. I mean, these are the subtleties that make this whole area so interesting, and we're gonna get into all of those areas around precedent and usage and common law usage in a sec. Just explain to our listeners, if you may, what kind of geographies trademarks typically cover, particularly, in places like in the US and Canada, where you have this, kind of, like, federal type system. When I apply for a trademark, besides the distinction of what it is I'm protecting, where it is that I'm getting protection for?
This is where we differ quite a bit, I think. The short answer is, in Canada, we have a very simple system - it's a federal act. So, our law is the federal Canadian Trademark Acts. So, if I file and protect a trademark in Canada, it covers you from sea to sea. It's a federal registration. We do not have provincial registrations.
So in the US, it depends, and I would say it gets complicated. The first point that I'd like to make is super, and I think this holds true in Canada as well. Trademarks are territorial. If I file a US trademark or I have a US trademark, that doesn't necessarily provide me any rights in Canada. So, if I want to have protection in Canada, I might have to take specific steps in Canada to obtain protection for that. So, it is a country-by-country determination at the broadest sense. In the US, primarily - you mentioned common law - trademark rights actually do accrue at common law, which is to say, in the US, you don't have to do anything other than begin to use your trademark in order to obtain rights in that trademark. But in the US, as you begin to use your mark, you only obtain rights to the extent that it becomes that source identifier and people associate your mark with your goods or services. In the old days, it was a little bit more nuanced. If I set up a storefront here in Denver, I might have notoriety within the Denver Metro area, but somebody in New York or Florida or elsewhere in the country might have no idea about my brand and I might not have protection in those areas. So, the common law in the US, there was a geographic component to the extent of your brand recognition. With the internet, that's somewhat waned. You put up a website and anybody across the country can typically access it across the world for that matter. The other consideration in the US is that, with a US federal registration, when you file for that federal registration, you do get constructive nationwide use. So, again, even if I've only used the mark in a more limited geographic extent, if I filed for that federal registration, I do get constructive use. The US treats it as if I've used it across the country pervasively when I file for that registration.
That's very interesting. Generally, I guess, in the context of a local event or even maybe a series that spans a few states, would the advice be for people to seek protection at the federal level or at the state level? Does it matter? Should they start with one and then broaden it out to the latter? How does it work?
So, in the US, I would say, again, it depends upon the extent of the event. So, the other kind of nuance in the US is that you can only obtain a federal registration for your trademark to the extent that you use that mark in interstate commerce. The US Constitution is set up to where Congress, the federal legislature, can only pass laws to the extent that it affects interstate commerce. So, if you organize a race and the services were solely provided within a given state and, let's say, you only had participants within that given state, you might not be eligible for federal protection of that trademark. Again, as you alluded, are these races geographically centric? I mean, if my race is in Vail, Colorado, that's where the race is going to be. But again, to the extent that you mark it outside of Colorado and have participants coming in from all over the country in different states, that's typically sufficient to show that the mark is being used in interstate commerce, in which case, you can obtain that federal registry or really try for that federal registration. It's the kind of use that would qualify.
So it's interesting. Let me clarify a point on what you said there. So, if I try to apply for a federal trademark, there will also be an examination of whether I need, kind of, like, a federal trademark on the merit of whether my products are interstate or not, and I may be denied it on those grounds?
That's correct. In the US, when you apply for federal registration, it does go in front of an examining attorney at the United States Patent and Trademark Office who will examine the trademark for a number of different requirements. But in the US, in order to obtain a federal registration, you have to demonstrate that the mark has been used in order to obtain that protection, and you can do that in a couple of different ways, but unless and until you use the mark in interstate commerce in the US, you won't actually be granted federal registration for that mark.
Since we are going into pretty nitty-gritty legal stuff in today’s episode, have you ever wondered who owns the participant data in your registration platform? I mean, legally, who has the right to use the data your participants provide, and how?
You may think that the answer is straightforward - you, as the race director, own the participant data for your race and only you can use that data. Right?
And I can tell you that’s a big deal, and often super-annoying, for most participants.
Well, RunSignup, a leader not only in technology but also in transparency, has a super simple policy on data usage. It’s not very long, but it sort of says it all - “Participants and races own their data.” That means your participants will never receive promotions for other products or events, and they’ll never see another race ad on your custom race website - ever. It’s that straightforward.
Ok, now, let’s get back to the episode… Let's move on to another super fascinating topic I found - when I was looking at trademarks because I've, sort of, have been through this process with some of the stuff we did in the past - and that's common law trademarks, which Jon alluded to there. It gave me great comfort when I came across them and thought, "Oh, I'm sort of half-covered already." Does one of you want to, sort of, tell us a little bit about what common law trademarks are about?
Sure, I can speak to that and actually use Brian's marks as an example. Because he or his predecessors, I should say, the company who used the marks before him actually started using Death Race and Canadian Death Race to market the endurance race here in Alberta, up in Grande Cache, about 20 years ago. They did so at common law, as John mentioned, just by using it. So, that's why trademarks are great for startup companies or people who are just getting their products out to market. The more that you can stamp your logo and your name on your products and services, the better you are as far as your rights accruing. The day that you launch and put your trademark out to the public is the date that you first use your brand and that is the date that we use as far as protection at common law. That brand, even though you haven't taken the steps yet to register it federally in Canada - or state, as John mentioned it in the US - it is still legally enforceable. So, 15 years ago, let's say, for example, I could not have started a competing race in the same line of trade as the Death Race, because then I would have been confusingly similar to the general public. Even though the mark was not registered, the Death Race trademark, as an unregistered Mark could have been used to make me cease and desist. So, that long-winded confusing way to say "That is an unregistered common law trademark" is just as legally enforceable as a registered mark. The difference publicly that we ask our clients to use to denote an unregistered trademark is the 'TM' superscript symbol at the end of the word or somewhere close to the logo, and that's typically enough to satisfy the courts that, "We've been using Death Race for 20 years. We've got our 'TM' associated with that." That's enough for them if we ever needed to enforce our brand. Then, fast forward 20 years, at some point, Brian decided to take the step to then register the mark. And that is, as Jon suggested, a formal application process where we prepare a trademark application that lists all the goods and services that you want to protect, that you want to cover in association with your brand. You file it at our Canadian Intellectual Property Office here in Ottawa and it gets examined, as we talked about, and then registered. That's when you can use the 'R' with a circle around it. So, that's the difference between the 'TM' and the 'R'. It's just that the person who has the 'R' has taken the steps to register their brand in a national database here in Canada. I appreciate it's a bit different in the States, and that 'R' has a time limit to it. It can be renewed but it's just an added level of enforcement and notoriety, I guess, across the country.
So let's bring Brian actually in on this point. I know the story behind the Death Race a little bit - it's fascinating - and how you took over it from another race director. As Suzanne said, it's been a race for more than 20 years. Then, you decided that the common law trademark protection wasn't enough for you, I guess, and you decided to file for an actual trademark registration. What was the thinking behind that?
So, we actually had one prior trademark for our other events, Sinister Seven, and that was a process that started a year and a half, maybe, before I took over the Death Race. So, I purchased the intellectual property, all the goods, and the goodwill of the events. So, we took over, kind of, everything associated with the event. I knew right away that another event company had filed a trademark for the name 'Death Race'. I will say there was no animosity or anything, but I really wanted to keep the name and be able to use it. I talked to my trademark attorney at the time who was not Suzanne - it was a different attorney at the time - and the advice was to proceed with it, and that we would have prior usage because it had been around for so long, and that we had sort of the upper hand in the eyes of the court and the eyes of trademark office. As soon as we filed, he turned around and said, "Well, no, that's actually false. That's not the way it works anymore. Whoever files first gets priority. So, you have to, kind of, fight for it now, and you better fight for it if you want to keep the name." So, that's what came down to. Again, there was no animosity between myself and this other company - we didn't speak, to be honest. I just really wanted to keep the name and I want to make sure that we were able to keep using that brand. I took a lot of time and did a lot of financial resources to take over that brand, and I wanted to make sure that we were able to get the most out of it that we could. That's not exactly the same reason why we trademark Sinister Seven. That was more to do with the fact initially that we were seeing people who were trying to capitalize on our name, like, "Hey, I'm gonna put out a bunch of shirts and put your name on it. Are you okay with that?" I'm like, "No. I'm not really okay." I felt at that time that, in order to get really broad protection, because it was becoming, sort of, a more known entity, I felt that we need to take bigger steps and that goes with both Death Race and Sinister Seven. I thought we just needed to take those steps to really make sure that we were enforcing our claim to the brand, letting people know that it's not okay to just co-opt our goodwill and to get use out of that without our permission.
So for Death Race, specifically, which is a super cool name by the way-- there are a few races in the US as well - nice fun runs. So, for that one, was the other company trying to capitalize on the goodwill and the, sort of, the recognizability of the original Death Race that you were running or did they, sort of, like, independently wake up one day and they thought, "Death Race. That sounds cool. Let's put on a Death Race." and they tried to trademark that, and then they run into conflict with the existing race?
I would say it's definitely the latter. They weren't trying to capitalize on anything that we were doing. They just liked the name. As you said, it's a great name. We're lucky to have it. So, there is no concern on my side about them trying to pretend they were us, although this wasn't what it was about at all.
No. My understanding with that - and this is a good example of the jurisdictional line being drawn - is that they actually did operate some Death Races in the US, and then ultimately decided to branch out into Canada not knowing, perhaps, or unbeknownst to them, that there was already a Death Race operating here for 20 years. So, going back to Jon's point, you have to have the use in the jurisdiction where you want to seek the protection because, if you don't and there's somebody already using that name even if you've had it in the States, you won't necessarily have success in Canada.
So, a couple of years ago, we tried to trademark a series of events - details are not important - and we approached a specialist firm doing trademarks. One of the aspects of that service was actually running a common law trademark, kind of, like, discovery thing, basically. In the case of the Death Race, if I were that other person trying to register it, they would go out, they would Google it - I guess, it's very simple these days - and they would actually see if there are other Death Races already trading under that name. How come that didn't come up in this case? Jon, is that something quite common in the US for the trademark process to have this, kind of, like, searches?
I would say it is common. It's not a requirement that you search before you file a trademark. The onus thing goes to the examining attorney to determine that. The other thing I should say is with those trademark searches, sometimes, it's more of a hurt than a science. A lot of times, there are budget considerations there. I mean, obviously, there's a lot of products, there's a lot of services out there. Searching a database of the USPTO or the Canadian Office may come back with results, but just searching in a few spots and trying to clear that mark as far as nobody else being used can be actually tricky. There could be people out there using the mark, but it's just not super prevalent. They may still have some existing rights in that mark. So, I would say it is common. Unfortunately, there's no such thing as a perfect search. So, they can give you some good indications of whether there are likely issues with that mark, but I'd say it's oftentimes not an ironclad or a guarantee that there are no other people out there that don't have rights in that mark, or adjacent rights, let's say, in a similar mark.
And in Brian's case, why should he have felt so concerned and felt like there was a race registering the trademark when someone started the process since he has been using that? I mean, he had common law protection for such a long time. You would have thought that you would have been covered but, still, he felt like that wasn't enough when someone started actually registering a trademark against him?
Well, I think that's what ultimately led to the good news or end of this story. Because Brian had such extensive use of the mark in association with endurance races, he was able to show the trademark office that the newcomer coming into the jurisdiction shouldn't have those rights, and he should. So, what happened effectively is that even though Brian's trademark applications were filed after the other user by about six months, he was still ultimately able to oppose that earlier application based on his prior use, and was successful at knocking them out to get registration of his marks. Did he have to take the steps of applying to register the mark? No, the results likely would have been the same, but it does go to the timing of when it's probably a good idea to take the steps to register the mark. I often say to clients, "When you're just getting started, you're just getting off the ground, focus on getting your brand out there and getting your product out there, and use your time, effort, and money on getting the product off the ground. 2, 3, 4 years from now, when you're making money, and you're starting to see successes, and you're thinking about branching out, maybe that's a time then to start thinking about taking the steps to register the brand. Going to the search question, the search should be done before you launch whether you're going to register or not. So, that's still a good idea for anybody who has a logo or a slogan or something that they want to use.
For me, I put out little events all the time. We're always trying a new thing. We just will pilot a new event almost every season. Before that, I do a search on the Canadian trademark database and in the US just to make sure that I'm not, sort of, stepping on anybody's toes. I just don't want anybody to think that I'm simply trying to steal their idea. It's not even a matter of me being worried about being sued. I just don't want to be seen as somebody who is trying to cover up somebody else's intellectual property.
And actually, in the case of the Death Race, how was it that you were alerted to the fact that someone was trying to register the trademark? How did you come across that?
Somebody had mentioned it to me, but I always do searches on that kind of stuff fairly regularly. That was one of the first things I did when I took it over - I did some due diligence on my own. I did speak to my former attorney about that and he did a search as well - he found out for me. So, we knew, kind of, right away that we were going to have to do something, whether it was filing. I didn't know at the time how we were going to handle it, but I knew that we had to do something to make sure that we were forcing our ownership of the brand.
And Suzanne, if the competing trademark had been registered, and Brian didn't have the good fortune of finding out before the application was accepted, where would Brian have been left after that?
That's a good question. Because of this issue coming up all the time, there are certain time points during the application process where someone like Brian can oppose the application by the other party for that reason. There are lots of opportunities-- I shouldn't say lots. There are two main opportunities where you can oppose, which is ultimately what we ended up doing. But let's say on the bad luck story that, in fact, they did get their Death Race trademarks registered for endurance races, they could ultimately enforce their registered mark by suing Brian for trademark infringement of his unregistered mark. The circumstance would play out in court and, ultimately, Brian would win because he has the date of first use. So, even though they have a registered mark, the interesting twist to this story is that they had not yet used it in Canada. They had not run an event in Canada. So, they have no brand protection in Canada effectively. Yes, they have a registered mark, so they are registered in our national database, but they have absolutely zero public awareness to support their brand. Whereas Brian, on the other hand, has 20 years of brand protection. You just don't ever want it to get to that point. I think that that's why the trademark office affords you these interim opportunities to oppose those pre-existing applications for that very reason.
A big part of that too was, at that time, looking forward, you just see these different endings, sort of, playing out - a lot of them met a lot of time in court and spent money on trying to retroactively defend what we were doing. I just thought, for me, it's more important to get out in front and to lead that charge instead of just trying to do it from the back end.
Which they probably understood. I mean, I can't speak to their side of things but if I'm their trademark attorney, looking at the story, I'm thinking, "We have no leg to stand on." So, ultimately, what happened is we opposed their applications based on our prior use during the opposition period of the application process and they effectively agreed to withdraw their applications.
Yeah, which ultimately, I guess is very comforting for people out there who are probably going to be on the defensive side of this to know that, at the end of the day, if you've been trading on a brand name for a while, and there's recognizability, and you've established all that common law foundation, then you're in a pretty good spot, even if you weren't as fortunate as Brian to happen to come across, like, a competing trademark. I mean, obviously, it's not great if you have to drag yourself in court but, at the end of the day, you're gonna come out the winner in this, which is really good. So moving on to the actual process, as Suzanne says, it shouldn't be your first priority because you first need to establish the brand and trade under it, and you should even worry about this, but definitely do a search to see if you're infringing on someone else's trademark, potentially. As soon as you start trading and, at some point - like Brian with Sinister Seven - when you want to move on to a formal registration process, what does the process look like in the US, Jon, for something like that, if you want to register a trademark?
Yeah. In the US, I believe it's a little bit different than in Canada. Actually, to kind of piggyback on what Suzanne said, there is actually a motivation in the US possibly to consider filing for a registration, even if you are just getting off the ground, and that is, in the US, when we file a trademark application, there are several different bases that you can file under in the US, and that's basically the statement of the reason why you're entitled to the mark. So, in the US, you can file what's called a use base application, which kind of follows the model that Suzanne noted. You've been using your mark. You're using it in commerce. You've had sales. You've got some notoriety. You file for a federal registration. At that point, you can go to the USPTO and present what are referred to as specimens of use where we show, "This is how my branding appears to consumers. This is how I've been using it. I've been using it as early as some date." The other option in the US - or one of the other options - is to file what's called an Intent-to-Use mark. So, in the US, as I alluded to earlier, you have to use your mark in interstate commerce in the US prior to obtaining a registration but, in the US, you can obtain some priority to your mark with that Intent-to-Use mark. So, if I haven't begun to actually use the mark in the US yet, I can still file for a registration where I say that I have a bonafide intent to use this mark in commerce in the US, and that US mark - we file it with USPTO, the United States Patent Trademark Office - still provide that constructive nationwide use. So, again, even though I haven't used it, I can establish some priority which, in the US, I would say, provides some motivation to consider potentially filing for registration, even if you haven't begun to use in the US - you can still get some priority rights there. Again, going back to Brian's story, that priority right can streamline the process and avoid having to go through opposition proceedings or cancellation proceedings to a second junior user that tries to trademark or register it before you do. Again, if you get kind of crossed paths there where you've been using it before some other party but they try to register it before you begin to register it, it does get messy and it can get very complicated and costly. So, considering that early registration, sometimes, in the US has an Intent-to-Use mark can somewhat circumvent those issues.
So this is almost, I guess, saying this Intent-to-Use mark that there's, like, a cryptocurrency boom. I have an idea of launching a company called Coinbase. Then, some other guy has the idea of launching a company called Coinbase. If I filed this Intent-to-Use mark even though none of those companies still trade, I'm sort of ahead of other pretenders when it comes to the actual trademark - I, sort of, have a slight precedent over them.
Exactly, yes. The priority is established based on your intent to use filing dates. The idea is once you file your registration in the US, even it is still pending, it becomes publicly available. So, any junior user or second comer, let's say, that wants to use their mark, the idea is that mark, even though the registration hasn't been issued yet, is still publicly available in the search. So, if I'm going out and starting my cryptocurrency business, or a race or whatever product I'm going to search, I can see that that mark is pending and, basically, come into that mark, knowing that somebody else has a senior Intent-to-Use that mark which, again, would be hopefully discovered in a search before starting to use your mark. Continuing that process in the US-- once you file your application for federal registration, as I mentioned, it gets assigned to an examining attorney that then reviews it for both formalities as well as substantive issues in the US. Is the mark descriptive? Are there prior uses, prior US registrations, or applications for registrations that your mark would be confusingly similar in view of? Are there geographically descriptive terms at issue here? Those different requirements are examined by the US examining attorney. Assuming you can get through all those hurdles, it's not descriptive, there are no prior marks out there. Then, again, if you've filed an Intent-to-Use mark, what you do is you receive a Notice of Allowance in the US. At that point, you have a certain period of time to then come back and say, "Okay, now that this mark has been loud. I'm actually using it. I've begun use in the US - interstate use - and here's how I'm using it and showing that evidence to the USPTO." That period of time, you get an initial six-month period that is extendable out to a maximum of three years. So, there is a time horizon, if you have that Intent-to-Use application. There's the dependency till it first gets examined up to your Notice of Allowance. Once you receive your Notice of Allowance, you have three years to then show use. So, if you file an Intent-to-Use mark and you're not going to use it for five or six years down the road, that can be problematic. As long as you're going to begin to use within that three plus or minus six months time period, that Intent-to-Use mark can cover you and you can still obtain your registration.
Suzanne, does the process follow similar patterns in Canada?
It does. As I mentioned, we have a relatively new trademarks act. So it has been revised to where we did have different bases of application that Jon was talking about, which has now been removed effectively. So, you can file your trademark in Canada now whether you have actually used it or whether you do intend to use it. There is no timeline per se, as to how long after your mark is registered that you have to use it if you file on an Intent-to-Use basis, but there are circumstances-- as we've alluded to, the whole point of a trademark is to get it out there, get the public recognition, build that goodwill, and build that brand. So, as Jon said, if you haven't done so after a certain amount of time, there are processes under our Act by which junior users who want to come in and use those marks can question you. They can say, "Hey, have you started using it? If not, why not?" or, alternatively, ask the registrar to remove your mark if you haven't used it, for example, for a period of three years. If you can't prove that you've used it, then it's not really fair that you get the exclusive rights to it. So, you can be removed from the register for that purpose.
And how long does the process generally take from starting to file for a trademark until a decision is arrived at by the PTO or other officers you guys have in Canada.
So, before COVID, it was a lot faster. Unfortunately, we are dealing with a significant backlog right now because of COVID. Because of our Act being revised, there are many more applications being filed. There are not enough examiners there to review the files. So, currently, if I were to prepare and file a trademark application for you today, there are some things that we can do to get it through a little bit faster. Relatively speaking, we wouldn't hear back from a trademark examiner who has now reviewed the file for at least two years or, probably, closer to three years. Then, you have a certain timeline to respond to the examiner's letter. They'll send us a letter saying various comments. For example, they might reject the description of the race. They want a more detailed description. "Well, what do you mean by endurance race?" So, you have to then respond to that letter - you have a certain amount of time to do so and that back and forth can go on. They're trying to limit that back and forth as much as they can, but it can go on for six months, nine months a year. Then, once you get allowed by the examiner who has agreed to the terms, the description of the goods and services, who doesn't think the mark has any issues, the examiner will issue a Notice of Allowance. At that point, the mark then gets advertised in a trademarks journal. So, every Thursday, the Canadian Intellectual Property Office releases a trademarks journal of all the marks that have now been allowed, and a two-month opposition period starts. So, for someone like Brian, he can check that journal every week and say, "Are there any other Death Race related marks out there or marks that I have an issue with?" and at that point oppose it. If you do oppose it, that kind of derails the application process and takes it offline into a, sort of, a trademark's opposition process. But if you don't get opposed after the two-month advertisement period, the mark then gets granted and you pay a registration fee. It's good for 10 years, and then you can effectively renew it every 10 years indefinitely, provided that you're still using it.
Jon, is that the case in the US - two or three years, after COVID, to go through the process?
The process is very similar in the US. Fortunately, in the US, we don't have quite the same backlog that Canada does. I think that the USPTO is still currently over their target to first action and, currently, we're around seven months. So, if we were to file a US Federal Application for registration today, we wouldn't get that first action from the examining attorney for about seven months as opposed to the two or three years that Suzanne was alluding to. Then, at that time, the process is very similar to Canada. Seven months from now, when the examining attorney picks up the application and reviews it, they'll substantively review it for all the issues. If there's a problem, you'll receive an office action and, again, have that back and forth where we either amend the description or argue different points with the examining attorney. Then, if it's an Intent-to-Use application, we would receive a Notice of Allowance. If it is a use base application, it is simply published. But in either instance that Suzanne alluded to, the US has what we call the official gazette that the USPTO publishes - I believe ours is on Tuesday rather than Thursday. In the US, we have a one-month initial opposition period where within that one-month period, nobody opposes the registration as advertised. Then, again, if it's a use base application, you would proceed to registration because you've already demonstrated that you've been using the mark. If it's an Intent-to-Use application, after that one-month period expires, there's no opposition, you would receive a Notice of Allowance and then, again, have that initial six-month period extendable to supplement your application with evidence that you've used the mark, show the office, "This is how we're using our trademark. We've been using it as of such and such a date. Similarly, in Canada, if you are opposed, if there's another user out there that believes that they have a legitimate reason why you shouldn't have that registration, that also does derail that process and moves it into proceeding before the US trial and trademark appeal board where that opposition would be heard. I think it's similar to Canada. In the US, that very much turns into, kind of, a mini-trial. It's an administrative proceeding, so it's not like you're in court, per se. It's an administrative court, but it does become kind of adversarial at that point and it's us versus them. Then, that's where all the arguments are heard to determine who has the rights in that mark.
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Ok, now, let’s get back to the episode… Brian, do you remember how long the process took in your trademark case for the Sinister Seven and for Death Race?
Mine were not shining examples. I was told at the time when I started the Sinister Seven trademark process that it would be probably 18 months if it went nice and clean. Unfortunately, I feel that my former attorney was a little bit on the haphazard and, kind of, lazy side, so things didn't seem to get done. It was lots of "Oh, I forgot to file this. I gotta go ask for an extension now." and on and on and on like that. Although there was no oppositions to it or anything, it just seemed to take over two years. The Death Race, because of all the complications, took about four years in the end. We switched attorneys to Suzanne probably, about halfway through the process - maybe not quite halfway through the process.
Are you at liberty to disclose just to give people an idea of how costly the process had been for you in each case?
I don't even recall now. It was just only a few thousand dollars for the first one. There were two trademarks for the second. There was a filing fee. The legal fee wasn't that much different just because there were two being done simultaneously - Death Race and Canadian Death Race. It wasn't outrageous. I would say that, because I was dealing with two different attorneys, it did cost a bit more. That's just a part of the process. It was my choice to switch attorneys partway through. I had already paid all the initial fees to the one, and then had to do a lot of that over again later. So, to me, it was more worth it to make sure that I was taking care of my brands than it was to worry about a few thousand dollars here and there.
In the end, did you end up trademarking the name, the logo, and other stuff in each case? What bits did you trademark from the events?
Just the names of each one.
Just the names. Okay, so you weren't concerned about trademarking. Suzanne, would that be something that you advise people to basically not bother with logos and other stuff, and just go for the name?
That's something that maybe we should have spoken to a bit more about at the outset, but how do you know what to trademark in terms of your brand and your slogan, etc? The way that it typically works is the word mark - which is just the words Death Race - is usually broader in the scope of protection than a logo would be. So, if Brian uses the words 'Death Race', then the brand is protected. If he incorporates them into a logo, they are also ultimately protected, not as a registered trademark granted, but there is still protection they're afforded by incorporating your word into your logo. Whereas the logo is a bit more limited in scope in the sense that if you decide to rebrand or change your logo or update it in any way, the logo registration is no longer valid. That happens quite a bit when companies decide to rebrand. So, the word mark is usually where we start - I would typically say that's where you want to focus your time and effort. If you have a logo that you're tied to and really love, and you're going to use it for at least 10 years, then it can certainly be worth doing both. So, there would be two separate registrations covering the same goods and services, but two different assets, ultimately, for the company in the end.
And the other thing I think we should have mentioned is that there are also different categories, right? So, in terms of trademarking - even a word mark - I can have the name 'Bolt', it can be trademarked under different categories in different types of products. It doesn't mean that if I trademark 'Bolt', no one else can use 'Bolt'. I may have a race called Bolt and the other guy has a running store which people may think is fairly similar, but it's not even the same thing. My trademark doesn't basically have any bearing on what someone else does in a different category, right?
That's right. And we call that the lines of trade. When we draft a trademark application for a client, we refer to this international categorization of goods or what they call the Nice Classification of Goods and Services. There are about 34 categories of products that we are supposed to, sort of, tie into and use as a basis for drafting the goods and services. Then, there are about 10 categories of services. So, if I have 'Bolt' for endurance races and you have 'Bolt' for a shoe store, they may be in different categories of goods, and therefore are not as likely to be confusingly similar to the public. Your only line of defense is that if you're in different categories, there's no confusion - that's not necessarily true. A shoe store can still be confusing with endurance races if the public is confused. That's always our bottom line - does the person know when they're signing up for the race that it's not affiliated with the shoe store? But there are ways that you can describe those lines of trade of the goods and services so that you differentiate yourself from others for that reason.
The same in the US. So, I think it is important to note that in the US, the scope of your trademark protection is still determined by what is confusingly similar to the public. So, as Suzanne said, while the classes can be helpful, the offices - both Canada and the US - use those, kind of, for organizational purposes, as an example. In the US, the filing fees are based on the number of classes that you're in. So, if you file for, let's say, one class of services for the organization of the race, and another class for apparel for merchandise that goes along with the race, those two different classes are going to require two different filing fees. The US often will use that for, kind of, organizational purposes. That being said, even if it's in a different class, if it's confusingly similar and the consuming public is confused, there still can be infringement. It's not a defense to say, "Oh, that's a different class than what I'm doing. You have to look at the facts and see whether it's confusing."
And this is sort of what happened with you, Brian, in Sinister Seven - you said that the motive behind pursuing that was that people wanted or started printing shirts with the race logo on it. Was that the case?
Yeah. We were seeing all kinds of stuff like that. Manufacturers and small manufacturers saying, "Oh, I'm gonna print a line of shirts, sort of, on behalf of you." What do I get out of it? "Oh, well, don't you want me to be successful kind of thing?" Yeah, but I need to be successful too in that deal. So, that kind of stuff was starting to happen. My former partner and I had a big talk about it, and we just decided it was a good time to make sure that we were taking those steps. Then, we could have something to point to and say, "Look, if you want to do this, you got to talk to us. You can't just assume it's okay." I think it was the right choice. Ever since then, in a number of occasions, we have been approached and asked by people, "Hey, can I do X, Y Z? I want to manufacture this thing for you. I want to brand this thing with you with your event." We can say, "Look, we just have to come up with a use agreement. You need to pay us X amount of money, and it's really straightforward. This is what we have to do now." This actually deterred a lot of people who were, kind of, just like, "Hey, I want to make a bunch of, like, coasters or something for you.", which is nice to kind of get that hussle off my plate a little bit, but it has also been really great for larger companies that we've partnered with - we have an understanding of how we're going to work together and it's very straightforward. I don't, at all, regret going through this process by any means. I think it was the right thing to do.
So, you mentioned there that people may approach you to use your brand on your behalf and you may agree to that. What's the legal, sort of, regime in something like that? Would you be licensing that or, like, give someone the right to use the trademark? How would that work?
Well, like what both Jon and Suzanne have said, you can do all of that through the common law. Perhaps, the trademark wasn't necessarily required for these things, but I wanted the legal protection. So, what we ended up doing is we work with another attorney to create a brand use agreement, basically. We set up the parameters of where it can be used, how it can be sold, how much we get out of it, and any other details. If it's going to be, "Hey, you're doing graphics and you're going to sell them out of your shop, here's how we monitor getting our percentage. Here's where your trade area is. Here is the limit of that - you can print shirts but not hats because somebody else may have the right to print hats for us." We really get down to granular detail to describe the kind of stuff that they're allowed to do. We'd like to work, preferably, with broader strokes - we like to have somebody who can do more for us than less. We just end up getting these vendors that can do a lot for us - they have very good parameters and there's no guesswork. So, we have a really nice little brand use agreement that we signed with everybody. Even if somebody wants to just do some free shirts to wear at the race just for them and their family, I still have an agreement with them. It's just me and a no-cost agreement, but it states that, "Hey, you're not selling these. You made it for yourself." I have said, "That's okay" because it'd be really hard to sue me for printing a shirt that said Xerox on it and just wearing it around, right? I'm not really worried about that. I'm really worried about people that are trying to capitalize on sales. It also goes back to the brand confusion. Something has happened in the last couple of years on social media. We get people signing up for our Facebook groups and pages and they start to post, "Oh, hey. I'm making these shirts now and it has our logo." And they're obviously scammers, right? So, you get those kinds of characters as well. So, it makes sense to make sure that we have everything covered.
Yeah, we're gonna move into enforcement in a sec and you can tell us what you do with those scammers, Brian. Before we get there, I have a question for everyone. Race directors - Brian would know that better than anyone - are a thrifty bunch. I guess, theoretically, the option is open to everyone to go through the process themselves, I guess - is that right? You don't need formally to engage with a lawyer - you can file for a trademark as an individual. What are your thoughts on this one? I want everyone's reaction on this one, I guess, starting with Brian. Is that something you would even consider doing? Looking back on it, would you have done it?
I started out Sinister Seven years ago, filing it myself. I thought, "Hey, I can probably handle this." And you know what? I failed at the first step because I didn't remember to do X, Y, and Z for the next step, and it was a lengthy process. I feel that having a good lawyer that can do this for you is actually really valuable. It's something that I don't want to be managing necessarily. We started out trying to just trademark the logo and we felt that was enough at the time but, again, it ultimately failed and it was rejected. I think I actually filed two different forms - one had different dates than the other. So they immediately just said, "Well, no, this isn't right." and it all came back to me after a few months, and they said, "Your applications are rejected and I didn't do anything on it, and it was expunged." So, that was that. Then, we started officially with an attorney, and it actually went relatively smoothly.
I guess I know your answers, guys, but let's have them. Jon, Suzanne, should people do this on their own?
I agree with you - you can. You can file what's called a pro se where you just file with USPTO. Again, yeah, I personally would recommend it. My thought there is that I understand that race directors - like a lot of entrepreneurs who are in startups - are very frugal and have to be in order to be successful. One thought is, typically, an application for trademark registration is not terribly expensive - and I know that's relative for everyone. I would say that the costs, as Brian kind of alluded to, for doing it incorrectly, if you have to file twice, that typically covers almost, probably, the cost of the attorney to do it right in the first place. Also, I think the attorney brings in possibly a bigger, broader context where you can consider things that you might not as an individual - to either get a broader scope of protection, or maybe more rational protection or something that makes a little more sense for what you're doing or what your goals are. Again, it's not a $10,000 process by any stretch of imagination to get that, assuming things don't go wrong. The other issue there is that things do start to spiral when you have a senior user that you encounter. Your attorney, I think, can provide you some very, probably, some good feedback on relative costs, what the process looks like moving forward, and it gives you that input then to make a decision, "Well, should we change our name? Should we consider a different brand? Is it going to be more cost-effective to maybe pivot and rebrand than it would be to needlessly fight opposition's or cancellations or these other litigation adjacent type activities?" That could just be a huge money sink, frankly. So again, it's not going to be, I wouldn't say, prohibitively expensive, given the alternatives out there. If you do run into problems, I think you get very good feedback and the likelihood of success and whether it makes sense to pursue it or not.
Yeah. I mean, I would agree and echo everything that Jon and Brian have said. I think it's better to have the knowledge and spend a bit of money upfront and do it properly than to have to deal with the corrections and the mistakes that occurred down the line. I know, in Canada - I think it's the same in the United States - we have to pass a trademark exam in order to be qualified to do this. So, you may not even need a lawyer necessarily, but I do urge individuals who are interested in getting more information about trademarks in Canada to, at least, speak to a trademark agent. Our Canadian Intellectual Property Office database - the website - has a list of every registered trademark agent in Canada. There's no harm in picking up the phone and calling a few of them. I know most of us don't charge for initial cold calls to just answer questions like "What's the difference between the 'TM' and the 'R'? How much does it cost to file? What's the Nice classification? What should I be considering?" So, even just to get you through the gate as a starting point, I think it's worth trying to at least get more information and speak to a trademark agent. And I echo what Jon's saying too - as far as costs go, the application fee in Canada is $335 for one category of goods. Over and above that, you're maybe looking at an hour of attorney time to prepare the application for you. So, it shouldn't be too much money if you limit what you're protecting. If you want everything under the sun, then maybe it's going to be a bit more, as far as fees go, but there are ways to minimize those costs and to think about doing it properly.
Once I have my trademarks in, what should I be thinking about in terms of renewing or using them, just to protect them against lapsing, perhaps? Does that even happen with trademarks? Can they lapse over time?
In Canada, they do. If you have a registered mark, if it's a common law, "No", as long as you continue to use the mark - you maintain your protection with the goods and services that you continue to use. So, maybe, I don't sell mugs anymore, but I still have water glasses or water bottles. So, there may be goods or categories of goods and services that have lapsed, because you haven't used them within a certain amount of time, but as long as you continue to use the brand, you should be okay. For registered marks, it is good for 10 years from the date of registration, and then you pay a renewal fee to keep it going for another 10 years. So, again, as long as you continue to use it and want to continue to protect it, that's all you need to do - it's a pretty straightforward process.
Similar story in the US. The one difference in the US is that we have an initial five-year renewal period where you have to renew it on the five-year anniversary of your registration. But one of the other primary, I'd say, benefits of the federal registration in the US is, at that five-year period, you can actually petition for what's called incontestability, which means if somebody then tries to challenge your mark, let's say, based on their own prior use and say that you were never entitled to that registration because they were using that mark before you were, if they tried to do so after you petitioned and been accepted for that incontestability status, their options to do that are very limited. It's almost a "You have five years to speak or forever hold your peace" kind of, as the saying goes. If you don't oppose or try to cancel that mark in that period and you didn't achieve that incontestability status, you can severely limit the third party' abilities to contest your mark. So that's a benefit. Then, once that five-year period lapses - it's the 10-year anniversaries from your registration day - you have to demonstrate that you're continuing to use the mark with a specimen and make it a statement that it's still in use. At that point, it renews for another 10 years.
And in terms of the symbols that are being used that Suzanne alluded to there, we have the 'R' in the little circle, which is for registered trademarks. Then, we have just the 'TM' which anyone can use for common law trademarks. Is that right so far?
That's correct, yeah. The TM in the US is basically providing notice to the public that you believe that that's a trademark. So, it doesn't mean that you've done any research or know that you definitively have common law rights in that. It's an indicator that you believe that that's a trademark and that you're intending to use it in a trademark sense. I would also say that once you get your registration, we typically provide counsel to clients on how to use the mark. As we alluded to earlier, there are genericide or other issues that can crop up, as an example. Suzanne, I think, said this earlier - the mark is a descriptor of the goods or services, it is not a good and it is not a service itself. So, it's the Death Race Endurance Race, right? Endurance Race is the type of event and Death Race is the name of the event. Similarly, for goods, it's a Death Race branded water bottle - not a Death Race bottle - and that usage can be very important as far as maintaining your mark and using it in a proper way.
So, is there any actual benefit for race directors out there starting slapping TM on everything that they think might be a common law trademark? Or actually, to put it another way, Is there any downside on not using that TM symbol? What does it practically do?
Practically, there's really no reason not to use it. I would caution you, if you use the circled 'R' and you don't have a registration, that's referred to as false marking and that can get you in trouble. But the TM, again, is just designated -you believe there's a trademark there. So, again, if you're starting a race up and, let's say, you don't want to invest in registration, use that TM and use it consistently and continuously throughout all your materials and your marketing - that can really help bolster those common law uses that you have.
Yeah. That's a good point actually about using the R with the circle - legally, we're not allowed to use that unless you have a registered mark. So, that's a good point, Jon, and something that probably should be clearly stated that it's not just as easy as putting the R with a circle up. You do have to have a legally registered trademark in order to use that symbol. So, the TM comes in handy for those that don't. I think the risk of slapping it up all over is, perhaps, just thinking through what it is that you're branding. So again, Brian's Endurance Races is not a TM. The logo, or the slogan, or the unique way that you are marketing your company, the source of the goods and services to the public is what the TM is for. So, we all know the Apple with a bite out of it is one of the most valuable logos in the world - it has nothing to do with the hardware or software that that company sells. It's completely obscure and unique and random and has nothing to do with what the company sells. So, one tidbit that I do say to clients is, "Come up with something that is completely random, completely made up, and that's your TM. That's what you want to use."
And just to clarify before we move on, the registered R in a circle symbol can only be used once the trademark has been granted and completed, right? Even if you're in the process, you can't be using that?
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Ok, back to the episode… I want to wrap up - and it's been a super interesting discussion so far - with a quick discussion on actually defending trademarks and resolving disputes. We had the example of the Death Race, which fortunately was resolved before even that trademark was granted. Brian, you were mentioning earlier about all those cases - and I see instances of these being mentioned in our race directors group as well of people on social media trying to capitalize on the brand and trying to sell things on behalf of a brand you own, a trademark you own - have you had to defend one of your trademarks more robustly than just telling people to just stop using that?
The company that filed the initial trademarks for Death Race has subsequently filed a new trademark for another variation of Death Race, and we sent them a cease and desist to let them know that we are going to defend this, so you might as well stop right now.
We said, "Look, by the way, you can't do that." They apologized right away and stopped. It hasn't gone as far as having to write an actual cease and desist letter like in most cases, but it has come up.
But generally, I guess, from the legal professionals' point of view, the first step would be to just tell someone to stop using the trademark basically if you feel that they're, sort of, like, infringing on your own. Is that the idea?
That is the idea. As Jon mentioned with the Velcro situation, you want it to be hook and loop, you don't want your name used by companies who are not allowed to use it. If you don't take those steps to enforce it, that's ultimately what can occur. It is often just as simple as writing a cease and desist. 9 times out of 10, companies don't want the public to be confused by the source of the goods. They want their brand to be protected, and they want their goods to be associated with their company. So, unless a company is clearly trying to steal that goodwill and infringe on that trademark, there will ultimately be a cease and desist, and it comes down to that date of first use - who had it first. There are lots of ways to settle it out before you go to court. So, in circumstances where-- Canada's a big country. Let's say we have somebody in Alberta, Western Canada, who has been using a marketing association with a particular good, who decides to start to brand across the country, and finds out that there's somebody on the East Coast that has also been using it, unbeknownst to each other. They value each other's companies and it's not to say that they want to necessarily prevent each other from using the marks. We can create agreements that allow both trademark owners registered or unregistered to coexist in Canada. So, for example, company A is allowed to continue using the mark in association with both the goods and services in Western Canada, but they won't ever go into Eastern Canada, and vice versa. So, there are ways to settle it out and handle it, but you do have to take that first step of writing that cease and desist to get to that stage.
I would echo that and say that there's a lot of options for enforcement, short of suing somebody, and I've found that the more you have your T's crossed and I's dotted and, kind of, your house in order - you have a registration, you have evidence of use, you have evidence documenting when you first started using the mark and, again, it's not super complicated, but it's more just kind of record keeping and being thoughtful of these issues - that tends to help when you go to either send a cease and desist or contact a competitor or somebody that's using the mark and say, "Hey, can you stop?" Or if you have to go to the next step and file an opposition proceeding, or somebody that has filed, or file a cancellation, again, all that evidence is very helpful, either in the proceeding itself or to demonstrate to the party that they're, frankly, in the wrong. The other thought there is - again, I don't know if it's maybe as applicable to the race directors just because it's a different kind of channel trade - also a non-judicial solution. So, for example, if you start to see Death Race T-shirts on Amazon, Amazon has a process where you can say, "I have a registered trademark in Canada and this person selling and they're not authorized to do that. And Amazon can actually enforce that." It typically requires a demonstration of your rights through registration. So, again, that registration, even if you don't ever intend to sue anybody, can be valuable for those extra judicial, whether it's Amazon or eBay or domain registries for that matter. If somebody has a website that's selling infringing goods, sometimes, if you contact the domain registry, you can take steps short of litigation which, frankly, is costly and long to take steps to enforce your mark.
And I think one of the very important points that you brought up that I think we should stress once more is that when there is an instance of infringement, whether it's intentional or otherwise, it is very important at that point to defend the trademark. Your ownership and continued, sort of, ability to gain the benefits of having the trademark rely on you being very robust in defending your rights. Right?
Correct. Piggybacking on Suzanne's point about coexistence, for example, if you become aware of that East Coast company that's using a confusingly similar mark, you might say, "Oh, that's not an issue. We're not going to take any action there." That can actually hurt you later. Somebody else that you do have an issue with can point to that other company and say, "Look, that person's been using it. So, therefore, your rights aren't as strong as you say they are." If you have that coexistence agreement or that agreement that says, "Hey, this is the understanding of all the parties. They're going to use it in these provinces or this geographic extent. I'm going to use it here or in this manner for these goods." You can point to that agreement to say, "Look, we've been actively policing our market, sometimes referred to as policing and enforcement action." We've been actively policing our mark and, yeah, they're using it, but it doesn't degrade our rights at all because we're all on the same page. We have a very clear understanding of what their rights are and what our rights are. So, if a third party comes along, they can't point to it or use it if it's covered under that agreement, where everybody's on the same page.
Yeah, very important. So I guess we're saying that you should probably err on the side of caution. Even with those cases of coexistence, try to document it. And Jon, as you said, it even, sort of, like, adds to your ammunition, when it comes to it, to actually say that, "We do have a formal agreement between us." That basically builds on your case that you're trying to defend the trademark. Guys, I can't think we've left anything out. Maybe, if you do, we should mention it now. One thing I want from you guys is to just tell our audience where they can find more about you, the services you offer, and maybe follow up with you if they have any need for any trademarking or any other kind of, like, intellectual property services from the both of you, Jon and Suzanne.
As I said, the firm is Holzer Patel Drennan. Our website is www.hpdlaw.com - that provides contact information and, I think, a link to the email. If you have any follow-up questions, my contact information can be found there as well as, kind of, my background and biography.
The law firm I work with is a regional firm in southern Alberta called North and Company. Our website is just northandcompany.com. As John mentioned, you can find my information there. Generally speaking, I think it's important to know that any trademark agent is of value and of service. If you're looking for somebody in Alberta or Western Canada, I'd be happy to answer any questions or pick up the phone and speak to you directly. But anywhere you are, find somebody who's qualified and has a bit more information than just the general info about any intellectual property. We've obviously focused on trademarks, but Jon and I both also do patents, copyright, industrial design, or design patents, as they're called in the United States, as well as other forms. So, we'd be happy to chat with anybody who has any other questions.
Of course, I mean, they can use anyone but I suggest they use you guys because you were so generous with your time and so clear with your answers. Brian, besides Race Directors Hub, our race directors group, where else can people find you? Do you have an email? Maybe, they want to reach out about anything that you may have said about your experiences with trademarking - maybe it has resonated with someone. How can they reach you?
Awesome! Guys, thank you very much for your time today. It's been awesomely entertaining and educational. I want to thank you again. I want to thank everyone listening in and we'll see you all on our next podcast!
I hope you enjoyed this episode on trademarking races with my guests Sinister Sports’ Brain Gallant, and intellectual property lawyers Jon Deppe and Suzanne Sjovold.
You can find more resources on anything and everything related to race directing on our website RaceDirectorsHQ.com. You can also share your questions about race trademarks or anything else in our Facebook group, Race Directors Hub.
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