What you need to know about claiming—and defending—your trademark

Standing by your brand is a natural choice, but sometimes it may be more trouble than it’s worth. Here’s how to decide when it’s time to fight, and when to settle

Engineer at robotics work bench

An engineer works at robotics testing station inside the Clearpath Robotics Inc. facility in Kitchener, Ontario. (James MacDonald/Bloomberg/Getty)

Kitchener, Ont.-based Clearpath Robotics recently sued U.S.-based automotive startup Uber in a trademark dispute over the name “Otto.” Clearpath had originally filed a trademark for its OTTO line of industrial warehouse robots in September 2015 in Canada, and made its U.S. trademark application in February 2016. Meanwhile, ride-sharing app Uber bought an autonomous transport trailer startup called Ottomotto in August 2016; the acquired company had filed its U.S. trademark application in March 2016. Such trademark disputes can be time-consuming and expensive; is it worth the trouble? We asked the experts what to consider when legally claiming—and defending—your good name:

Think Unique

“Name generation is a really important part of strategic branding. Every regular word in the English language is already being used somewhere, somehow, as a brand.

“The onus is on you as a creator to come up with a list of names that are unique, then go through a legal search to be sure that the name you choose isn’t already being used. And 98% of the time you’re going to find someone else is using the wonderful name you came up with. That’s why name generation has taken on a new life. Many brand names are just letters smashed together to make words. It’s much easier to get a trademark for that type of word, and it’s harder to replicate, and, as a result, it’s harder to steal.

“Branding around any name will always have its challenges. But branding around a name that nobody knows, that isn’t assigned to anything people understand in any language, means that you’re starting with a clean slate. From a branding perspective, that’s wonderful. It’s also challenging, because you have to assign some kind of meaning and experience to that name. Brand awareness will be one of your biggest challenges.”

John Miziolek, President, Reset Branding, Oakville, Ont.

Get a trademark

“First, it’s really important to file your trademark as early as possible. That really was a smart move on Clearpath’s part, and seems to be making the difference here. Second, watch what your competitors are doing. This can be done by something as simple as setting up Google Alerts. You should oppose a trademark application that goes against yours as soon as you’re aware of it, and as soon as you legally can. Trademarks can be lost by a failure to defend them. So, if you notice there’s a problem and you don’t take steps to enforce your name, you can lose your right to that trademark. You pretty much have to take care of these things early, and forcefully.”

Lorraine Fleck, Lawyer, Fleck Innovation Law, Toronto

Keep a trademark

“It’s not enough to have a trademark; you need to use it, even before completing the registration. If you say that you’ve used it but haven’t, you’ve fraudulently obtained the registration. And if you don’t use the trademark in a period of three years, you can lose ownership of it. In Canada, your entitlement to obtain a trademark registration is based on being the first person to use the name or logo, not on being the first person to file a trademark application.

“The fact that you don’t have a trademark isn’t fatal, necessarily. But the process of fighting for your rights to the name can cost well over $60,000. Often, even if a business owner thinks they’re right, it’s not economically or practically feasible for them to fight about it.”

Jennifer Marles, Partner, Oyen Wiggs Green & Mutala LLP, Vancouver

Consider settling

“As a small business, if you’re really concerned about your brand, first-to-mind really matters. In marketing, whoever is the one to make the biggest impression in the largest segment of the population wins. So, if Uber had done a full-blown ad campaign introducing ‘Otto,’ Clearpath’s brand would have been screwed, because the connection has already been made in the mind of the consumer. It can be devastating for a small business when a giant firm runs out ahead, does its song and dance, and gets the brand name or logo associations.

“You can sue, and there’s case law for it—you can say, ‘These guys have done some serious damage to our brand,’ but that litigation itself will cost a lot of money. That said, I do think in a situation like this, there is a lot of money to be made for a business in Clearpath’s position—if Uber really wants that trademark, it might be willing to pay for it, and that amount of money might end up meaning more to a smaller company than its existing brand.”

Yusuf Gad, President, The A5 Agency, Toronto