Over the past decade, small to mid-sized professional practices have demonstrated unprecedented interest in branding. The resulting names, logos, taglines and marketing campaigns contribute to the goodwill and equity of the business but it remains without any actual trademark protection. To what extent should a practice invest in obtaining a registered trademark?

I interviewed Kelly Johnson, trademark clerk, and Marie Lussier, trademark lawyer, at Chitiz Pathak to shed light on the trademarking process, specifically from the perspective of the small to mid-sized professional practice.

Let’s begin with the burning question for most. Is obtaining a trademark cost prohibitive for smaller practices?

Obtaining a trademark registration should not be seen as a cost prohibitive proposition. It is possible to complete this process for approximately $2,000, assuming that there are no objections from the Trademarks Office and that your application is not opposed by others. Once you obtain your registration, it can be enforced across Canada. The registration is valid for 15 years and can be renewed indefinitely for approximately $500 each 15 year term.

Armed with a trademark registration, does a small practice stand a chance against a corporation with deep pockets?

Even without a trademark registration, you can take action against a business that is using a name that creates confusion with your brand. A registration will, however, greatly improve the likelihood of a positive result, particularly for those cases that land in court.

Whether or not you’ve registered your mark, the rules of the market are still in play. If your opponent is ready and willing to invest heavily in defending its brand, you may want to consider other options. With the help of a trademark lawyer, you can open negotiations with the other side to try reaching an agreement whereby both brands can co-exist without confusion – or even form an alliance with the other side.

What is the key benefit to obtaining a trademark registration?

A registration puts other businesses, including your competitors, on notice of your rights, essentially preventing them from copying your registered name, logo or tagline.

What are the advantages of working with a lawyer to file a trademark?

At the initial screening stage, an experienced trademark lawyer or clerk can provide advice as to whether the name, logo or tagline that you wish to register might create confusion with an existing trademark. A lawyer would have the experience to predict and handle objections by the Trademarks Office, possibly in a more cost effective manner than if you were left to your own devices at this stage in the process.

Finally, if you encountered hurdles along the way, such as if your application was opposed, your mark infringed or if a third party claimed that you had infringed its mark, a trademark lawyer could help you decide on the most business-savvy way in which to proceed – whether by mounting a defence, seeking to reach a compromise or opting for a different mark.

Trademarks and Your Professional Practice – Q & A with Trademark Specialists, is based on an interview between Sandra Bekhor of Bekhor Management and Kelly Johnson, trademark clerk, and Marie Lussier, trademark lawyer, at Chitiz Pathak. This article is meant to serve as a resource for Canadian small to mid-sized professional practices exploring options to protect their brands. It is not meant to be a substitute for professional advice and should not be relied on as any such substitute.

Related articles: The Tagline: A Hidden Gem in the Branding Toolbox and 10 Do’s of Professional Logo Design.