Canadian Small Business Women

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Starting Local and Deciding Whether to Go Global – Three Trademark Related Questions to Ask

As I find myself in both familiar and foreign territory visiting family overseas I have been appreciating the differences in the entrepreneurial rhythm of a different culture and society. Small business tends to dominate the economic fabric of most societies and in many places growing a small business beyond the local area it initially is set up to serve is just not be part of the plan. When there is a clear vision to serve a local customer base, a small business may have different branding and trademark priorities than a business that has an eye on growth and expansion beyond its local presence.

To tease out some of these differences and navigate the implications for developing a trademark strategy let’s focus on three questions: “Can I”, “Should I” and/or “When should I” take steps to adopt and register a trademark.

Implicit in this bundle of questions is the presumption that at some point consideration should be given to registering trademark(s). There are a multitude of good reasons for registering a distinctive trademark in order to support the branding of a business, locally focused, or not. Unless a business operates using generic or descriptive terms to make itself and its offerings known in the marketplace, often the issue is a question of timing and the prioritization of resources, and not so much if it is worth doing in the first place.

Using the food and beverage industry as an example, consider a customer’s dining experience at a hip restaurant in the trendiest part of town. If positive, the customer knows the experience depends on the chef and ambiance created on site. The name of the restaurant is a marker of where to go to get the desired experience. This is in contrast to when a customer likes a food or beverage product that has been scaled for distribution through multiple outlets. In this case, the trademark associated with the product is the one thing that can inspire confidence in consumers that they are getting what they are looking for from a reliable originating source. In both cases, the initial key legal concern is to avoid infringing on the marks of other food/beverage enterprises. Conducting a clearance search to address the “Can I” adopt and register a trademark question is the first investment needed before moving on to the “Should I” question, and/or to the “When should I” question.

If the “Can I” question is answered in the positive, going to the appropriate next question requires a deeper inquiry about whether to remain a locally focussed small business. Basically, any time that a small business owner turns their mind to developing product lines, franchising opportunities, or selling the business, the option to register trademark(s) should be visited, or revisited, as the case may be.

The “Should I” question of whether or not to register a trademark comes into play if the reputation and good will of your business is likely to develop primarily from customers associating their experience with the people and/or location representing the business, rather than a product that is being sold. Other examples of such businesses may be service-based enterprises (e.g. individual coaches and wellness providers), intermediate (B2B) supply chain distributors, and common commodity retailers (e.g. local convenience stores). Customers are attracted based on what they know about the experience interacting with personnel and/or the experience they have by accessing the business site. In these situations, when the customer has or can have more direct contact with the business owner, taking the step to register a trademark may not be as crucial.

In any event, the “Should I” question answered in the negative need rarely be a final decision. Within certain limits, this decision can become a decision to put off registering a trademark as part of a “When should I” inquiry. If after a risk assessment, putting off the registration of a trademark is the sound business decision to make, the ever changing commercial landscape is reason enough to periodically revisit that decision.  This can be done by monitoring the commercial landscape (e.g. through online searches) and the activity at relevant Trademark Offices. This allows small business owners the opportunity to have notice of marks being adopted by others and of applications to register confusingly similar marks. With notice, a small business owner can then take the necessary action, with the support of an experienced trademark professional, to address competitive threats through trademark registration, negotiation, or otherwise.

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Ariadni Athanassiadis

Kyma Professional Corporation

T: 613-327-7245

E: ariadni@kymalaw.com

W: www.kymalaw.com

Starting Local and Deciding Whether to Go Global – Three Trademark Related Questions to Ask

As I find myself in both familiar and foreign territory visiting family overseas I have been appreciating the differences in the entrepreneurial rhythm of a different culture and society. Small business tends to dominate the economic fabric of most societies and in many places growing a small business beyond the local area it initially is set up to serve is just not be part of the plan. When there is a clear vision to serve a local customer base, a small business may have different branding and trademark priorities than a business that has an eye on growth and expansion beyond its local presence.

To tease out some of these differences and navigate the implications for developing a trademark strategy let’s focus on three questions: “Can I”, “Should I” and/or “When should I” take steps to adopt and register a trademark.

Implicit in this bundle of questions is the presumption that at some point consideration should be given to registering trademark(s). There are a multitude of good reasons for registering a distinctive trademark in order to support the branding of a business, locally focused, or not. Unless a business operates using generic or descriptive terms to make itself and its offerings known in the marketplace, often the issue is a question of timing and the prioritization of resources, and not so much if it is worth doing in the first place.

Using the food and beverage industry as an example, consider a customer’s dining experience at a hip restaurant in the trendiest part of town. If positive, the customer knows the experience depends on the chef and ambiance created on site. The name of the restaurant is a marker of where to go to get the desired experience. This is in contrast to when a customer likes a food or beverage product that has been scaled for distribution through multiple outlets. In this case, the trademark associated with the product is the one thing that can inspire confidence in consumers that they are getting what they are looking for from a reliable originating source. In both cases, the initial key legal concern is to avoid infringing on the marks of other food/beverage enterprises. Conducting a clearance search to address the “Can I” adopt and register a trademark question is the first investment needed before moving on to the “Should I” question, and/or to the “When should I” question.

If the “Can I” question is answered in the positive, going to the appropriate next question requires a deeper inquiry about whether to remain a locally focussed small business. Basically, any time that a small business owner turns their mind to developing product lines, franchising opportunities, or selling the business, the option to register trademark(s) should be visited, or revisited, as the case may be.

The “Should I” question of whether or not to register a trademark comes into play if the reputation and good will of your business is likely to develop primarily from customers associating their experience with the people and/or location representing the business, rather than a product that is being sold. Other examples of such businesses may be service-based enterprises (e.g. individual coaches and wellness providers), intermediate (B2B) supply chain distributors, and common commodity retailers (e.g. local convenience stores). Customers are attracted based on what they know about the experience interacting with personnel and/or the experience they have by accessing the business site. In these situations, when the customer has or can have more direct contact with the business owner, taking the step to register a trademark may not be as crucial.

In any event, the “Should I” question answered in the negative need rarely be a final decision. Within certain limits, this decision can become a decision to put off registering a trademark as part of a “When should I” inquiry. If after a risk assessment, putting off the registration of a trademark is the sound business decision to make, the ever changing commercial landscape is reason enough to periodically revisit that decision.  This can be done by monitoring the commercial landscape (e.g. through online searches) and the activity at relevant Trademark Offices. This allows small business owners the opportunity to have notice of marks being adopted by others and of applications to register confusingly similar marks. With notice, a small business owner can then take the necessary action, with the support of an experienced trademark professional, to address competitive threats through trademark registration, negotiation, or otherwise.

 

Ariadni Athanassiadis

Kyma Professional Corporation

T: 613-327-7245

E: ariadni@kymalaw.com

W: www.kymalaw.com

Reaching for the Moon – Entrepreneurship and the Alchemy of Ideas and Relationships

 

ari-2In the coming months, I plan to cover those indispensable tips for working with various forms of intellectual property (IP) in your business, such as copyrights and trademarks.  To set the stage, I would like to touch on the desire we have as entrepreneurs to protect our “ideas”.  At the risk of bursting some bubbles, the reality is that the legal system is really not designed to protect ideas. Instead, the whole premise behind having IP legal regimes is to promote the conceptualization, application and exchange of ideas. So if this is the case, why have IP legal regimes or “protect” anything in the first place?

 Before going down a rabbit hole, let me back-up for a moment and try to clarify what I mean when I use the word “idea”. To me an idea is what comes from inspiration, like the epiphany in the mid-20th century that we could fly to the moon. Examples of innovation and creativity around this idea are everywhere, and include everything from Sinatra’s classic rendition of “Fly Me to the Moon,” to NASA’s Apollo missions, to today’s quest by Branson and others to make private space travel a reality. Our drive to innovate is so core to our humanity it bubbles up everywhere, all the time, in all corners of the universe, in all arts, fine or technical, and in all human enterprise and cultures.

So it is not the ideas, but the innovation that flows from them that is addressed by our society. One way this is done is reflected in IP legal regimes. These regimes speak to what happens when an idea is being translated into a result and made accessible to the public. This can only happen in the co-creative processes that take place in relationship with one another. In these relationships there will be intersecting interests and layered rights that arise and are engaged. Innovation in business is no less personal or fundamental to our existence as it is in other areas of our life, and like many other social imperatives can be supported by guidelines and frameworks for balancing interests and contributions to it. While the debate is always open about whether or not existing frameworks help or take away from achieving the best balance, society will always seek to find harmony through constructs for managing relationships.

The two primary issues that IP legal regimes address are who benefits from intellectual endeavour and how. In general terms, the various regimes create economic rights for creators/innovators and rights of use for the public because, after all, the governments and legal systems that grant rights in the form of patents, trademarks, copyright, industrial designs and trade secrets (confidential information) are there for and on behalf of the public.

So when NASA decides to release a chunk of its patent portfolio (under certain terms and conditions of course –http://www.sciencealert.com/nasa-just-released-56-patented-space-and-rocket-technologies-to-the-public) we are witnessing that the way things may have been done in the past can change and adapt to the way they need to be for the future, shifting the balance point in the relationship between governments, the marketplace, and the public interest.

At the end of the day, innovation is fueled by a continuing tradition of alchemy between ideas and the relationships which shape and mould them. In my experience, the ideas can be relatively easy to come by, but the magic comes from what we do in relationship with one another on our quests for the philosopher stone, or perhaps, just a little moon rock.

Ariadni Athanassiadis is the lead attorney of Kyma Professional Corporation, which provides intellectual property (IP) legal services to help your business develop and benefit from the creative efforts and assets that make it distinctive. Whether it is your brand, product, services, designs, technology or business processes, Ariadni can help design IP legal solutions which let you make the most of what you give to your business.

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Ariadni Athanassiadis

Kyma Professional Corporation

T: 613-327-7245

E: ariadni@kymalaw.com

W: www.kymalaw.com