Student Writer, Windsor Law LTEC Lab
J.D. Candidate, 2019
On March 29th, 2019, the University of Windsor’s on-campus business incubator, the EPICentre, in conjunction with Windsor Law, hosted the “Trademark Triage” at the Joyce Entrepreneurship Centre. The event was by invitation only and was aimed at start-ups participating in the EPICentre’s Discovery and RBC Founders programs, as well as those identified by the EPICentre as being close to having their businesses up and running. These programs exist to help University of Windsor students and alumni turn their business ideas into a reality by providing them with a number of different services, such as funding, mentorship and office space.
The day began with a round table discussion for all Discovery members from 9:30-11:00 AM, and centred around a combined law and business presentation on trademarks. A marketing and branding presentation followed at 1:00 PM. The law students from Professor Myra Tawfik’s IP Strategy course who presented were Pani Sarkis, who is also a Student Writer with Windsor Law LTEC Lab and Anmol Trehin – along with three of Professor Francine Schlosser’s Business Consulting students.
The presentation was given bearing in mind that entrepreneurs face a problem when selecting a brand name, due to the fact that there are competing requirements from both trademark law and marketing. Some things that make sense from a marketing perspective may not necessarily work from a trademark law perspective. For example, while a brand that describes the product may be desirable from a marketing perspective, it may not be advisable from a trademark law perspective. The proposed trademark may be too descriptive of the product to secure legal protection, for a lack of distinctiveness between the brand and the product. Therefore, the presentation provided a brief introduction into branding and marketing strategies from the business side of things, then considered the various trademark implications involved – not just from the perspective of protecting one’s brand, but also by using trademarks as an effective tool to build brand value. The presentation also highlighted the importance of searching for and registering trademarks. Simply put, the goal of the presentation was to not only be informative, but to provide actionable information as well. Based on the feedback from members of the start-up community in attendance, the presentation was successful in meeting these objectives.
After the presentation, Alexis Black, IP Advisor from the Canadian Intellectual Property Office (CIPO) and lawyers Jim Hinton from Own Innovation and Mike Kasprowicz from DLA Piper, spoke briefly about some areas of trademark law relevant to start-ups, as well as their own services. After this, each expert met individually with each invitee to help them with trademark searches and to provide them with preliminary trademark opinions and other trademark related advice.
In addition to the individual meetings with the three trademark experts, the attendees could take advantage of a ‘legal triage’ table that was set up by other students from Professor Tawfik’s class – Aaraf Dewan, Giorgious Triantafilliou and Jaan Shaer. These ‘legal triage’ students helped attendees with basic IP and business legal information and acted as a general reference desk to direct invitees to the right person with whom to speak.
Start-ups need to consider and discuss these trademark issues early in the process if they want to reduce wasted effort and in order to maximize their chance of developing a branding strategy that is both successful and legally protectable. With the right strategy, these competing requirements of trademarks and marketing can go hand-in-hand.