I was recently asked, “How do I protect my business name across the country”? This question came from the owner of a provincial corporation in BC. It is a question that comes up a lot for people who have provincially-incorporated companies—and I wanted to share my answer with you since it might be helpful for others.
There is a process for registering your corporation in other provinces called Extra-Provincial registration. However, that is not what you want to do if you are concerned about protecting your business name across the country. The reason why is that if you are doing Extra-Provincial registration, you are registering in every province and territory, and there are a lot of costs associated with that. There is also not a lot of protection; you are basically registering a “Doing Business As…” name or saying that you are actively engaged in business in that province… and that’s it; there is no significant protection.
Another issue is that it might get you caught up with provincial taxing authorities and workplace safety authorities that you might not have otherwise have had to deal with.
Extra-Provincial registration has its place—it is important to do in certain circumstances—but if you are worried about protecting your company name across Canada, the best thing to do is a trademark application.
Trademarking
Trademarking is the best option for protecting your company name across Canada because trademarking happens at a federal level, under federal laws. So, when you file a trademark application, it will be for protection across the entire country.
If you decide to file a trademark application, then there are two big questions that you have to ask yourself at the beginning:
1. What do I want to protect?
Do you want to protect your whole company name or just the distinctive element of your company name?
Let’s say that your company name is, for example, “Green Thumb Horticulture Services, Inc”. The distinctive element would be “Green Thumb”. Unless there is something special about your company name as a whole, you probably just need to trademark the name’s distinctive element and not the full name, in this case, “Green Thumb Horticultural Services”.
If you protect “Green Thumb” with the trademark registration, that will help you protect your brand as a whole—whether you’re using that term in logos, business names, or other formats.
2. What do I want protection for?
The second question that you have to ask yourself is: What goods and services do I want my brand name to be protected for? When you are filing a trademark application, you are actually building a fence—and you are building that fence around all of the goods and services that you want to have exclusive use of that trademark. So, in the trademark application, you specifically list the goods and services related to the wordmark you are protecting.
Here is an example with “Green Thumb”: you will want to trademark that term for horticultural services and anything related to horticulture. Maybe, you also have a product line where you sell gardening tools. You will also want to include gardening tools within the fence of what’s included in your trademark application. Each of those goods and services would be specifically listed on the trademark application.
Once your trademark application is approved, you will have the exclusive right to use the term “Green Thumb” in relation to the goods and services that are listed in your trademark registration.
Keep in mind that somebody else can still trademark the term “Green Thumb,” but for different goods and services. For example, musical instruments or nail polish will be allowed to do that because you are just building a fence around the goods and services you need protection for and that are included in your trademark registration.
The other thing to consider is the time and cost of trademark applications. Usually, a trademark application will run in the $2,000–$4,000 range if you are getting professional services, including government and professional service provider fees. It is less if you do it yourself as a DIY solution.
