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The term "use" has a very special meaning in trademark law, which is very different from the common-sense meaning of the word. Find out what trademark use actually means in this short cartoon.
NARRATOR: Maureen runs a business that sells plants and trees. She decided to register her trademark, SHIVERING GREENHOUSE.
MAUREEN: Hi, I think I’m ready to proceed with registering my trademark, SHIVERING GREENHOUSE.
TRADEMARK FACTORY: Great. We’ll be happy to help.
TRADEMARK FACTORY: To file the trademark application, I need to know what goods and services you offer using this name.
MAUREEN: Well, we sell plants and trees; we also put this name on our business cards and baseball caps; we have a website and a YouTube channel.
TRADEMARK FACTORY: Looks like I need to explain what the term “using” means in context of trademarks…
MAUREEN: Is it different from the common-sense meaning of the word?
TRADEMARK FACTORY: Yes. Let me explain. The word “using” in trademark law differs substantially from
the word “using” in the common sense of the word.
TRADEMARK FACTORY: “Use,” in relation to physical products (goods, or “wares” as they are called in Canada) requires that the trademark be placed on the product itself or its packaging, or that the trademark is otherwise associated with the goods in the mind of the purchaser when he makes the purchase.
TRADEMARK FACTORY: The rules are more relaxed with respect to services, and a trademark is considered to be used if it is displayed in the performance or advertising of those services.
MAUREEN: So when we’re selling our plants and trees, are these products or services?
TRADEMARK FACTORY: Are you selling trees that you grow yourself?
MAUREEN: Yes, and we also sell other farmers’ greens.
TRADEMARK FACTORY: Then, for your own plants and trees, if you are labeling them with your trademark, that is if you are marking the plants or their packaging with the words SHIVERING GREENHOUSE, it means you are using the trademark in association with plants and trees.
MAUREEN: Yes, we have nice labels for our trees.
TRADEMARK FACTORY: Great. In addition to that you operate a store that sells plants and trees. Whether or not you sell your own trees and plants or those of other farmers, the activity of selling is a service in association with which you are using the trademark.
MAUREEN: I think I’m getting it. What about the website?
TRADEMARK FACTORY: You probably noticed that a trademark is considered to be USED in association with SERVICES even if you simply advertise the service using the mark. But advertising a PRODUCT is not enough to claim that you are using the trademark in association with these products.
TRADEMARK FACTORY: There are special rules around website. Like with any other advertisement, a simple website that features the trademark to advertise your SERVICES is sufficient for the purpose of establishing that the trademark is “used”. Even though simply having a website that talks about your product will not satisfy the requirement of trademark use, if you provide an online store where visitors can ORDER and BUY your products, that would be sufficient because you are not simply advertising your products, but are actually selling them through your website.
MAUREEN: I understand. What about the business cards and baseball caps?
TRADEMARK FACTORY: Are you in the business of selling business cards and baseball caps?
MAUREEN: Of course not, why?
TRADEMARK FACTORY: Just because you use various types of media to draw attention to your business, does not mean that you are “using” your trademark in association with all of these types of media. Business cards are a great example. Every business uses them in some form, however, only commercial printers would typically register their brands in association with business cards. This is because they ARE in the business of selling business cards. It’s not that they are using business cards to draw attention to some other business, such as in your case.
MAUREEN: This makes perfect sense. But if we don’t register the trademark for baseball hats, can we still make them? We may actually even sell a few!
TRADEMARK FACTORY: The purpose of registering your trademarks is not for you to get a permission to use your own trademarks in association with particular products and services. As long as you are not selling something illegal and as long as you are not infringing on somebody else’s trademarks, you can use your brand in association with any products or services, regardless of whether you have a trademark registration. The purpose of registering your trademarks is to be able to stop OTHERS from using your trademark in association with particular products and services.
MAUREEN: So I would only put “baseball caps” in my trademark application if I was worried that someone would start a business that sells baseball caps under the SHIVERING GREENHOUSE brand?
TRADEMARK FACTORY: Yes.
MAUREEN: Thank you!
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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