September 11, 2022

By Mark Mikulasik

If you are going to invest thousands of dollars in building up the goodwill associated with the name of your business or product, it simply makes sense to consider registering it as a trademark. This is as true in Thunder Bay and the rest of northwestern Ontario as it is in Toronto or Ottawa, yet we frequently see clients rely on a business name registration or corporate name registration believing that to be adequate protection.

THE ISSUE

Registering a corporate or business name is simply notification that you are using the name. Other than providing evidence of use, it does not provide any protection to your name if others copy it or use confusingly similar names. It also does not give you any assurance that your name is not confusing with a trademark or other name already in use. The typical corporate name or business name search obtained for clients will bring to their attention names that the search engine believes are similar, but the policing of registrations is very loose because the registration does not equal protection. The search report offers no guarantees.

Trademark registration is cheaper than litigation, and much cheaper than rebranding.

THE CASES

A couple of recent news stories from the United States about weird trademark disputes illustrate the lengths that sophisticated parties will go to in attempting to protect their trademarks and how imperfect protection may result in disappointment, leaving you vulnerable to unexpected competition. Although American and Canadian trademark law is not identical, there are enough similarities that these news stories should serve to warn you about what happens if you do not take care of your branding, or in the other case, the lengths to which you may go to protect your trademarks because you perceive them to have special value.

The first case involves a very familiar product, particularly during the summer time. Most of us at one time or another have enjoyed a Dairy Queen Blizzard. It is a unique treat the occupies the space between a milkshake and ice cream with all sorts of weird and wonderful flavors. Of course Dairy Queen has registered the word “Blizzard” as a trademark. Why then did Dairy Queen lose their trademark infringement case against an office supply company selling Blizzard bottled water?

Each trademark is registered to protect its use for specific goods or services. In preparing trademark registrations, the trademark agent will typically describe the categories of those goods or services as broadly and inclusively as possible to allow the owner to expand product lines, and to prevent competitors from crowding into the space. However, trademark registrars will not allow descriptions that are overly broad compared to the use on which the registration is based.

For instance, in Canada Dairy Queen’s main Blizzard trademark is registered for milkshakes and floats. It is not registered for bottled water. Dairy Queen does not use the Blizzard name on bottled water. Dairy Queen uses a different brand of bottled water. The office supply store already sold paper products using the Blizzard name. There was no evidence of actual confusion. The judge therefore determined that no one would believe that Blizzard bottled water was a Dairy Queen product because Dairy Queen does not sell Blizzard bottled water, and the point of sale through an office supplier is very different from a Dairy Queen store. We may or may not agree with the judge’s decision, and presumably it will be appealed, but there is a certain logic to it. The litigation is no doubt also extremely expensive and left a bitter taste for Dairy Queen.

The even weirder tale is the story from People magazine that the Ohio State University has successfully trademarked the word “THE”. This is one we are not sure would be successful in Canada. As explained in the story, Ohio State University has invested considerable money over the years trying to convince people to call it “THE Ohio State University” because its initials, OSU, could also apply to other universities. If you watch American sports at all, you no doubt have noticed how announcers, players and fans put particular emphasis on that word that when the refer to THE Ohio State University, so clearly the investment has value. The trademark is how the university intends to protect that value. Assuming that the trademark remains valid, their use of the word THE under trademark will be limited to the specific use so that the rest of us may still employee that word in other contexts.

THE TAKEAWAYS

These two weird trademark tales illustrate the reach of trademarks, and their limitations. They also illustrate the value of a trademark. A few thousand dollars to protect a trademark through registration is a modest investment compared to re branding your business or litigating over the use of a trade name.

HOW WEILERS LAW CAN HELP

The work of a trademark agent requires constant familiarization with developments in trademark registration, the registrar’s attitude towards categories, and the subtleties of infringement. We maintain a good working knowledge of these issues and when we have clients intending to make the investment in registration of a trademark, we work closely with industry professionals to make it happen. We will work closely with you to obtain the best value in your registration, and will also integrate the trademark process with your other corporate law needs. If you would like more information about business names, trademarks, or other ways to protect your business, Weilers Law may be the right law firm for you.