What can brands trademark? Should trademarks be registered in Canada, North America or globally? And what is the best way to proceed to get a trademark, and what are some of the potential issues?
We invited Andrew Di Lullo, managing principal of Listrom Di Lullo—listromdilullo.com—to talk about this important business asset.
Listen to our podcast here:
Recorded on March 5th, 2021
Brad Breininger: 0:00
Hi everyone and welcome to this week’s Everything is Brand. This week we have a special guest Andrew DiLullo from Listrum DiLulllo and he is going to talk to us about trademarks. So let’s talk about trademarking your brand. So, Andrew DiLullo was our special guest this week, he is the managing principal of Listrum DiLulllo. And their law firm focused on providing legal services, everything that a small business requires, and their real goal is to help business owners focus on their passion instead of the paperwork, and he is knowledgeable on trademarking. And so we’re gonna jump right in with a bunch of questions that we have for him. But first of all, Andrew, welcome to the podcast, and we’re happy to have you.
Andrew DiLullo: 0:44
Thanks, Brad. It’s a real pleasure to be here.
Brad Breininger: 0:48
Awesome. So to start off, Andrew, let’s start with the real basics. What is a trademark and why is it important? What are the things that we need to know about trademarking when it comes to our brands?
Andrew DiLullo: 1:00
Okay, so it’s trademarks very simply they’re symbols, which show that a particular company is a source of a particular product. And when I say product, I mean a physical good or a service product, it can be a good or service. And mostly they’re about distinguishing one product from another when they might be on the same shelf or advertised nearby. This happens an awful lot in stores or on the internet, where you’ll see multiple different brands, distinguished by their different trademarks on a shelf in a Walmart or Canadian Tire or something like that. So the start of it is distinguishing products from one another. But then over time, trademarks become a mark of quality or guarantee of an experience. So consumers can learn that a particular trademark means a particular experience, and then they go seek out that trademark to obtain that experience.
Gabi Gomes: 1:53
So Andrew, what do brands need to trademark. Should they trademark their logo? Their name? Their tagline? Is there anything else they should trademark?
Andrew DiLullo: 2:00
Well, trademarks are traditionally words or designs. And the design can include a word so famous here in Canada is of course the the scripted Tim Hortons, that entire script plus the word together as a trademark. But in Canada, you can also trademark some really interesting things like sounds, smells, tastes, textures, those can all be trademarked. And you can also trademark some more abstract things like moving images, or even a particular style of packaging. Some people build their brand by having particularly useful reusable packaging, and that can actually be trademarked. So in terms of things that can be trademarked, the sky is the limit. But generally speaking, when you want to think about trademarking something, you want to strike a balance between being distinctive and recognizable, and also being useful for building a brand. So it’s trademarks only protect what’s actually registered. So if you were to register something like a smell, you’d get no protection for the word for that smell, it would literally just be the smell. And you kind of want to trademark the elements that are going to be consistent across your range of products and things that can be applied to everything in your product range. So this is why words and designs tend to be the most useful or common kinds of trademarks. Because you can apply those sorts of designs to the T shirts, to the front of your store, to your letterhead, to your emails, you know, really whatever you’re doing, whereas it’s more restrictive if you’re trademarking a sound or a smell. But that’s not to say that sound or smell is a bad idea, because some brands are entirely about something other than the visual appearance. You think about this a Dolby Digital in the movie theaters, you don’t think about their logo, you think about that crescendo of sound, and it’s similar for other products, you might want to be trademarking, what is distinctive about that product as opposed to the name for that product? That said, it’s always a good idea to get a branding expert involved so they can tell you what actually is distinctive and what you might want to be building out?
Brad Breininger: 4:06
Yeah, we really endorse that branding expert idea that you had Andrew.
Gabi Gomes: 4:13
Yeah, not only that, but we always talk about brand being beyond the logo. And that’s interesting to hear that you can also trademark sounds and smells That’s fantastic.
Andrew DiLullo: 4:22
In this day and age, how about URLs, do brands need to keep in mind domain names for example, and trademarking? I mean, absolutely. Not just if you’re planning on going global domain names are important, even if you’re staying local here in Canada. One thing to remember is that domain names, they’re not just different from trademarks. They’re also treated differently in different parts of the world. So you need to think about the areas of the world that you’re going to be offering your product and get the appropriate advice for that area of the world when you’re dealing with domain names. So I can just talk about Canada. Specifically, like I said, domain names are different from trademarks; are two different areas of branding or of IP. And they don’t really interface with one another. So the Canadian Intellectual Property Office, which is dealing with trademarks, they don’t talk to any domain name registrars and the databases are not coherent in any way. So registering a trademark gives you no priority, or rights over any equivalent domain names. And if that domain name is already in use by a competing or similar business, registering a trademark in Canada won’t give you the right to push them out of that domain name. Only if that domain name was registered after your trademark, you can presumptively put somebody out of a domain name. So it’s usually a good idea to if you’re intending to build a brand, make sure the domain name that you’d be satisfied with is also available. So that you can deal with that in parallel to your trademark application, usually a lot faster, but you do have to deal with it in parallel. And it’s also a good idea just to do that. So it’s because again, you’re trying to build a brand. And if you’ve got this trademark that you’re really, really happy with but.com.ca.org, .net, and.co.uk are all taken for that particular trademark, it can be just that much more difficult to build your brand. So good idea to do a domain name search as well as a trademark search. When you’re thinking about branding. It’s a complicated area. And it’s not entirely clear, necessarily what if there’s a dispute or if there’s some kind of overlap precisely how you deal with that, to resolve that problem. There’s multiple different solutions, all of which are available based on the specific facts as scenarios. So you definitely need to get some expert help if you find yourself in that overlap, which all just goes back to trying to avoid the overlap in the first place.
Marko Zonta: 6:48
When you talk about domain names, same kind of getting it as your branding, or establishing the brand name. Whenever we work on developing a new name for our brand. That’s definitely one of the top priorities is making sure that the domain exists, that we can actually own it, or if that would help with trademarking for sure.
Andrew DiLullo: 7:08
Definitely. One thing a lot of people seem to think that adding.com to a trademark creates a brand new trademark. And this is one of the areas where the different areas of the world, different jurisdictions have differing opinions on that. So you can have this adding .com to a very simple already existing trademark to end up with or an already existing phrase to end up with something completely different in trade markable. So there’s lots of opportunities in this sort of nexus between domain names and trademarks, to find more spots to build a brand.
Marko Zonta: 7:42
So you brought up the global aspect. When should businesses look at getting trademarks? Just for Canada? Or let’s say North America or international? Like, how is that determined? Is that based on the size of the business, your market area? Like? How is that really determined, then what what should be the right approach?
Andrew DiLullo: 8:03
Yeah, broadly speaking, I think it’s probably the size of the business, but not in terms of its balance sheet, I mean, the areas of the world where it operates. Trademarks really can only be registered in the regions of the world where you’re offering your product. If you’re not offering your product or not about to offer your product in that region of the world, then for the most part, that region will not accept your trademark, they won’t register it at all, or they’ll register provisionally, and then after a period of time where you haven’t provided proof that you’re offering your product, they’ll deregister it. And so in that situation, the applicant company will have paid a great deal of money to go through the application process spent a great deal of time, and at the end of it, they may have nothing to show for it just failed registration. The other thing about having a trademark in that region of the world, its trademarks are really only valuable as brands when you’re building and defending them. So if you don’t have the resources to protect yourself against trademark infringement, in a region of the world where you have a registered trademark, you run a steady risk of losing that registration through the process of confusion. Other companies who are not you begin infringing on your trademark passing off using your trademark inappropriately and if you fail to defend that zealously, then you run the risk of your trademark becoming lost from your control in that region of the world, which is grounds for deregistering the trademark.
Marko Zonta: 9:34
Is that one of the reasons why sometimes we hear large companies going after smaller businesses, let’s say for kind of protecting their trademark or their name or whatever it may be. And to people it may seem fairly aggressive that “the large corporation is going after such a small business”, but is that really the reason that they’re basically to have to do it in order to protect their brands, their trademark long term Because if they’re not defending it, they could potentially lose it or run into problems.
Andrew DiLullo: 10:05
Absolutely. A trademark is only useful and register bowl so long as it’s unique. And if it starts losing its uniqueness. If you start losing control over your trademark, then it’s no longer a trademark, because as we said at the outset, a trademark is a company offering the product. It’s those two things together, it’s not just the product, it’s not just the company, it’s those two things together. So if you lose that tight Association, you start losing your trademark. And since all of the value of your brand is effectively inside of that trademark, if you lose that trademark, you’ve lost all of the equity you’ve built up in your brand. So it really is a large corporation with lots of valuable IP, their hands are tied, they have to do everything they can to defend the uniqueness of their trademark. Now, that’s not to say they can’t be exceptionally aggressive tone and address as well. But they are obligated to make the attempt. And I think there’s a real space in the trademark area over for in trademark practice now for lawyers to try and hit that tonal balance of like, we have to do this, but we’re not evil. We’re just this is how we have to do it. And there’s a lot of really great examples in trademark legal circles. So some really amusing letters being sent back and forth to try and hit that tone with the appropriate recipient.
Brad Breininger: 11:17
A little legal comedy, if you will, okay.
Andrew DiLullo: 11:20
Actually, it’s tragic is about this funny,
Brad Breininger: 11:23
Exactly. Exactly. Very Shakespearean.
Gabi Gomes: 11:26
I was gonna ask in terms of our proximity to the States, should people who were up here in Canada be looking to trademark something in the US as well, just due to their proximity, like, I think nowadays is kind of difficult to say, we’re only going to be up here in Canada, I think with everything being online and goods and services being so going across borders, is that something that you’re seeing happening more and more? Is that something you’d recommend going forward with trademarks?
Andrew DiLullo: 11:53
Well, I think it’s definitely something you have to keep in mind, just offering your product on the internet, even though you may be shipping cross border to the United States may not be the level of involvement in the US market, where you’re concerned about building your brand there, a Canadian trademark might be sufficient. And also, if you’re mostly offering your product through a sort of third party sellers, like Amazon, or you’re, you’re primarily using those third party platforms, they have an interest in defending sort of uniqueness amongst their various client sellers. So even though it’s not to the level of trademark protection, they’re going to make sure that their own individual marketplaces have a little bit of clarity. And it’s in their interest to do that. So they have an internal dispute resolution process. So if you’re concerned about that, it’s certainly something to keep in mind, it’s when you start offering products more directly to the United States, when you’re offering it through your own website, when you’re attempting to perhaps build a brand or build a relationship with a local supplier, or a local reseller of your goods. And you want to be known as a trusted source of your particular product in the US. That’s when the application might make sense. Canada has a lot of reciprocal agreements with a lot of large markets, world markets, international trademark agreements, as well as the US. And so there is room to make Canadian applications, start growing your business, start building that brand. And then if the brand grows, well, you can use that Canadian application for a priority application in a foreign jurisdiction. So it’s not do it right now, or you’ll have no further opportunities. You might have some restricted opportunities in the future, but you will have opportunities to get priority applications.
Brad Breininger: 13:41
So Andrew, we have quite a range of listeners everywhere, from agencies to individual brands specializing either in services or in products, whatever it might be. What would your advice be to them about when to start bringing a lawyer into this process? When should that whole legal consideration be involved?
Andrew DiLullo: 14:03
There’s lawyers and there’s trademark agents as well. Trademark agents are often also lawyers, but it is two different professions. And so getting in touch with the trademark agent almost immediately, I think would be a good idea at that great marketing is also a lawyer, they can offer the further services but the trademark agent is probably the most important person to get in touch with immediately. And that would be because trademark applications in any jurisdiction, have a very precise language to them. As we spoke about a couple of times trademarks have to be unique, and they have to be registered in the trademarks database. So to make that trademark database useful for assessing uniqueness is not a free for all and how you describe your trademark. It uses exactly scientific language but specific language in order to make sure that the trademarks can be registered and differentiated from one another in a database so people can look at a trademark database and say, oh I I’m on site here. I offside here, here is the available space for our trademark. So trademark agents absolutely know that somewhat artificial constructed language and they can make sure your application gives you the entire trademark that you’re interested in, not just perhaps a small subset, plain English language that you might apply for yourself. Beyond that getting a trademark lawyer involved is only absolutely necessary if you’re in trademark litigation, if you need that representation from a legal professional if you’re involved in litigation, but prior to that, I think you’re mostly looking at branding specialists, I think you’re mostly looking at a trademark agent. And I think you’re building your branding plan that way. That said, those professionals might recommend bringing a trademark lawyer in at some point along that process, because they’re going to want to make sure that any potential legal liability, or legal friction is avoided, rather than run into and then dealt within litigation. The lawyer is an advisory role, I think.
Brad Breininger: 16:02
Got it. I think like anything getting them involved early, whether it’s the trademark agent or the lawyer, depending on what you’re trying to do, getting them involved early is always better, because then they understand what it is that you’re trying to achieve.
Andrew DiLullo: 16:12
Right. And as often keeper do, because there’s always a lot less expensive to prevent a problem than it is to solve the problem after it arises. I know it doesn’t always feel that way. Yeah, but certainly I see that value when I provide to my clients. And I’m able to point out that we avoided multiple $1,000 penalties or litigation during the forum correctly the first time.
Brad Breininger: 16:34
Yeah. So speaking about problems a little bit, what are some of the pitfalls of this process? What are some of the things that people should watch out for as they’re kind of going down this road of trademarking their brand?
Andrew DiLullo: 16:45
Well, I guess there’s sort of two things that I always try to make my clients available or aware of, I should say, the first is to set expectations trademarks cost money, you’re probably talking at least in the low 1000s of dollars, tends to be the medium, or median for a simple mark. And they take time, about a year, maybe two, even these days, because things have been backed up for a while, and you have to defend them zealously, I make those points. So it’s not this time and money to apply it’s time and money to maintain. So that’s something that people necessarily expect to trademark so I always make sure that they’re aware of that. The other thing that I try and make them aware of is that an application process can be subject to refusals and opposition’s. And in addition to costing more time and money, it means that a trademark registration or an application for registration is not a slam dunk. Even with a good trademark agent and a good trademark lawyer on your side, you can have trademark applications fail on basis of confusion, excess similarity to existing trademarks, or a whole host of other reasons, including poorly described trademarks. So it’s not a guaranteed thing. It’s getting more and more a sure thing all the time as you know, trademark practice develops. But trademark registrations trademark applications are, you know, their work, they’re perhaps more work than you might realize.
Brad Breininger: 18:08
I’ve read some things where it said that if you’re using a trademark in a certain marketplace, sometimes you can defend based on the fact that you’ve been out there for a very long time and as long as you can prove that, so I don’t know if that’s true or not, but if it is, do people have to register a trademark or by simply using it? Are they kind of setting their spike in the sand so to speak?
Andrew DiLullo: 18:33
Well, I mean, it’s absolutely true. There is such a thing as an unregistered trademark in Canada. unregistered trademarks have. It’s not a subset of protections for a registered trademark. It’s a different set of protection. So they actually in some areas have more protections and in other areas have far fewer. But the restriction on an unregistered trademark is I think, largely geographic. Unless you can show that your trademark has been used in the geographic area that you’re arguing you build your brand in, there’s absolutely no chance of a protect can apply. So unregistered trademarks have really restricted geographic sort of boundaries. You never end up with an unregistered trademark globally. The unregistered trademarks are local, but they can be incredibly strong. There is a Barbie’s barbecue in Quebec, I believe, which defeated Mattel for the Barbie trademark within its town.
Gabi Gomes: 19:29
Wow, way to go Barbie!
Brad Breininger: 19:32
You know, to your point is that the reason that this exists is to protect those small businesses that might not have the clout or the dollars to defend a trademark that they’ve spent years and sweat equity and, you know, financial equity kind of building apps.
Andrew DiLullo: 19:49
I don’t know if that’s how it started. But it absolutely grew into something that protects small businesses small local businesses that have strong local brands. From sort of predatory global brands moving in and sweeping them away, it absolutely does work that way.
Brad Breininger: 20:05
So Andrew, any final thoughts for our listeners around what they need to consider what they should think about trademarks as they’re building their brands, or naming their companies or coming up with new tastes and smells that they want to own in the marketplace?
Andrew DiLullo: 20:20
I mean, I think trademarks are incredibly interesting, I think that they can often be one of the most valuable parts of your company, if you start building them early and start building out that brand. And you’re piling it all into a registered trademark, you can have an incredibly valuable piece of your business, if your brand is built correctly. And I think that recognizing that your intellectual property is a real asset in this day and age, will really let you analyze and start planning for that aspect of your business. If you’re discounting that as an asset, I think you might be going a little bit wrong.
Brad Breininger: 20:54
Yeah, well, that’s great advice to anyone out there who is either building a brand or defending a brand or trying to figure out how they can own what they own in the marketplace and making sure that you have all of your “T”s crossed and your “I”s dotted is always good. And the thing I would add to that is probably get a good trademark agent are a good lawyer involved very early on in the process. So Andrew, thank you so much for joining us this week, it’s been a great discussion and your insights have been invaluable. I think that everything that you’ve said have opened my eyes. The greatest takeaway I’ll have from this is that you can trademark a taste or smell. So I’m going to run with that. And in my brand consulting, I’m going to really make sure that I start to build that into my toolkit of how we help clients. So thank you enter. We appreciate that. For all you listeners. You can find Andrew at ListrumDilullo.com. We’ll put that information in the description on the podcast. Andrew, thank you for joining us and for all you listeners. Join us next week again when we’ll have a brand new topic and a brand new discussion and remember, everything is brand.