Sears has been a struggling Canadian brand for some time now and tried hard to hang in there before its recent bankruptcy filing. One of the things it attempted was honing in on specific products it could compete on and pumping dollars into ads. And one of those products was mattresses. So, with a new slogan in tow, Sears launched a campaign that told consumers: “There is no reason to buy a mattress anywhere else”. With online ads, flyers, and radio spots, Sears was off and running.
Until Sleep Country Canada took them to court. Sleep Country Canada claimed that Sears’ new slogan infringed on its trademarked slogan, “WHY BUY A MATTRESS ANYWHERE ELSE?”, which Sleep Country has used in Canada along with a catchy jingle in print, radio, and online ads since 1994. The court agreed, noting the striking similarity of the two phrases, and granted a temporary injunction, barring Sears from using the slogan until a court makes a final ruling (something that won’t happen for 12 – 24 months and may not happen at all since Sears is shutting down). Sears poured tons of time, effort, and tens of thousands of dollars into the new campaign, and in one fell swoop, the law stopped the company in its tracks. And while we don’t know what the court would have ruled in the end, the similarity of the two slogans and Sleep Country’s prior trademark rights are a good indicator that Sears would have had to back to the drawing board if it wanted to continue the campaign.
Good Marketing Ideas. Bad Marketing Mistakes
So how does a multi-million dollar brand that’s existed for decades make such a costly blunder? Well, it’s more common than you’d think. You might not have heard of Abbot Laboratories, but it’s a marketing goliath with over 74,000 employees and operations in more than 150 countries. So when it was time for a new marketing campaign for infant formula in boxes marked with the tag line “ONCE UPON A FARM”, it thought it had a way to warm up to consumers who tend more and more to look for natural choices. The problem was that a company with the exact name – Once Upon a Farm – already exists, and has trademarked the name in the US. A manufacturer of organic baby food, the company is small, but has already landed its product on the shelves of Target, Whole Foods, and Costco. Once Upon A Farm filed a lawsuit against Abbot, and they’ve got a pretty good chance of winning in court.
Before You Use That Slogan…
When entrepreneurs, startups, and even big brands dream up names, slogans, logos, designs, and jingles, and whip them into marketing campaigns that they hope will drive sales, few consider the legal implications of such efforts. Brands and the “identifiers” or “marks” that make them up, such as business names, product names, logos, designs, jingles, and of course, slogans, are examples of intellectual property. That intellectual property is a central element of what makes brands so valuable. But before you create and invest in intellectual property, you need to be sure no one else already owns it.
The way to do this in Canada is with a search in the Canadian Intellectual Property Office (CIPO) database. To search is free and the database is open to anyone. So why don’t big brands use it? Most probably do, especially since they have large, high-paid legal teams and trademark agents on staff. Sears has no excuse. A turn of events like this doesn’t usually mean the end of a big brand. But entrepreneurs, startups, and small businesses can’t afford to make these kind of mistakes. All the more reason to do their due diligence before pouring heart, soul, and bank account into a brand. There’s just one problem…
Deciphering Trademarks
Unless you’re a licensed trademark agent with an in-depth understanding of how the Canadian Intellectual Property Office (CIPO) makes decisions about which marks can be granted and what constitutes trademark infringement, performing a trademark search on your own might not be the best idea. Without the proper training…
- How can you be sure you’ll know what to search for?
- Will you be able to find ALL “confusingly similar” marks in the database that could lead to your application being rejected?
Let me clarify with an example. Let’s say you want to register the brand name “Love Shirts” in connection with clothing items. Will you know to search for alternative spellings like “Luv Shirts” or “Love Shirtz”? If you find those spellings, would they be considered confusingly similar and thus hinder your application’s success, or are they different? What about “❤️ shirts”, or “shirtsss”, “shirtzzz”, or even something like “Luv T-Shirts”? And what about “Love Sweaters”?
Before you go about investing time, effort, and money into a brand, it’s crucial to make sure you’re not infringing on someone else’s prior trademark rights. To do this successfully, you need help from a trademark agent. One mistake or omission could mean major delays in getting your mark approved for registration or even your application’s outright refusal, leaving you having wasted time and money and no better off. Luckily you can do this free! To help entrepreneurs and business owners, we’ve launched our Free Trademark Search service. Our trademark agent will perform a search to verify that the mark you’d like to register is available and registrable (meaning it does not violate CIPO’s registration criteria).