Derivative Products and Services: Anticipating the Possibilities for Your Trademarks

As you prepare to launch a new product or offer a service under a trademark, it is sometimes difficult to imagine all the spin-off product and service possibilities that could prove relevant in the medium or long term. However, it can be very rewarding to take a moment and consider future opportunities in this area.

Some trademarks are literally associated with empires under which a multitude of products and services are offered. However, these trademarks were all at first associated with a particular type of product or service. Many couture houses have considerably diversified their products over the years. The famous fashion house Saint Laurent nowadays offers tableware, glassware and even speakers bearing its mark. Burberry has recently launched face masks made from its iconic checkered fabric. There are also restaurants and cafes that are offering clothing bearing their marks, offering customers a way to support their businesses during the pandemic.

It is also possible for a trademark to be extended to derivative services, mainly for the purpose promoting other products or services. The best example is certainly the Disney film company which now uses its trademark in connection with, among other things, amusement park and video games.

In addition to allowing a company to stand out from its competitors, spin-off products and services can be an interesting source of additional income and could even enhance the reputation of the mark.

How to Foresee Diversification Possibilities of Spin-Off Products and Services?

When carrying out the availability search for the intended trademark, it is best to cover all the possibilities straight away. Otherwise, there is a risk that it will no longer be possible to use the trademark with certain goods or services. Indeed, the trademark owner will have the exclusive right to use it in association with all the goods and services covered by its registration. However, spin-off products or services may sometimes extend well beyond this natural extension zone of the original goods and services. For example, some derivative goods or services have nothing to do with the goods or services initially covered by the mark.

If, after a few years, a mark will be used in connection with products or services unrelated to the original products and services, it is strongly recommended to first conduct an availability search to ensure that the mark is indeed available for use and registration with the new products or services. Indeed, a trademark may very well be available for certain products and services, but not for others.

It is important to remember that even famous trademarks do not have full protection for all spin-off products and services, as stated by the Supreme Court of Canada in BARBIE and VEUVE CLICQUOT trademarks cases.

It is also worth noting, however, that the applicable law and case law considers that products distributed free of charge for promotional purposes do not consist use of the mark.

Partnerships: A Tool to Increase Trademark Visibility

It can also be interesting to team up with another well-known company to offer spin-off products and services, each trademark benefiting from the other's visibility in a field that is not its own. For example, the New York Museum of Modern Art sells, via its website, numerous household products, electronic products and clothing, including sweaters bearing the CHAMPION sportswear trademark as well.

However, such a partnership will have to be governed by a license agreement including mutual obligations to preserve each party’s rights in its trademark and minimize the risks to its reputation. It is also important to ensure that each trademark remains distinct in the public’s eyes.

In conclusion, it can be worthwhile to spend some time planning for all future possibilities before filing an application for a new trademark registration. For more information, contact our trademark team, which can help you think ahead for the future of your trademarks and guide you in protecting and registering them.