Branding Basics: Choosing A Strong Trademark Written By: Dr. Angela Keuling, Patent Agent A trademark helps customers identify the source of products and services. Customers connect the quality of the products and services they purchase with the associated brand name or logo. Therefore, it is important to choose a strong trademark and to protect it properly to prevent others from exploiting the value you build in your brand. A strong trademark is one that is “distinctive”, that is, that serves to distinguish your goods and services from those of your competitors. Distinctive trademarks are more likely to be registrable in Canada and are easier to enforce against potential infringers. Avoiding Weak Trademarks Strong trademarks are generally NOT: The name of the goods and services themselves, i.e. generic words for the goods and services (in any language). For example, SOFTWARE, CONSULTING SERVICES, CAFÉ. Clearly descriptive of: a) The character or quality of the goods and services, i.e. words that describe a feature, trait or characteristic of your goods and services or laudatory terms that describe their quality (e.g. BEST, ULTRA, QUALITY, VALUE). For example, “BEST CANADIAN MOTOR INNS” for providing motel services in Canada. b) The conditions of production of the goods and services, i.e. words that describe the techniques or processes used to produce the goods and services or the environment in which they were produced. For example, KILNCRAFT for tableware produced by a kiln process. c) The persons employed in production of the goods and services, i.e. words that describe the type of person who makes the goods or offers the services, including professional designations. For example, BAKER for baked goods, ENGINEER for engineering services. d) The place of origin of the goods and services, i.e. the geographic name of the country, region, province, city, or neighbourhood in which the goods or services are manufactured, produced, grown, assembled, designed, or sold. For example, CANADA, AMERICAN, PARIS, OLD STRATHCONA, etc. Deceptively misdescriptive of the character or quality, conditions of production, persons employed, or place of origin of the goods and services, i.e. words that are likely to mislead consumers into believing that the goods and services have some feature that they do not (or originate from a place they do not). For example, FRENCH WINE for wine produced in Canada, GENUINE LEATHER for faux leather products. “Primarily merely” a name or surname, i.e. the full name or last name of someone living or who has died in the last 30 years. For example, JONES, JOHN SMITH, etc. In general, a trademark consisting of a name or surname is not considered distinctive; however, there are some exceptions: – Names that have another meaning with equal or greater significance to the name or surname meaning e.g. ELDER’S, BLACK, LEGEND. – Combinations of surnames (unless that exact combination can be found in a Canadian registry) e.g. SMITH JOHNSON. – Trademarks with only a first name e.g. SAM, LUCY’s, etc. Avoiding Confusion It is also important that you select a trademark that is not confusingly similar to another trademark. A trademark that is confusing with another trademark cannot distinguish your goods and services from those associated with the other mark. In addition, using a confusing mark can result in infringement of the other party’s trademark rights. There are a number of factors to consider in determining if two marks are confusingly similar, including the resemblance between the marks in appearance, sound, and ideas suggested. For example, choosing a trademark that is similar to an established brand but that uses a different spelling may still be considered confusing if the marks would be pronounced the same way. Another important factor for confusion is the nature of the goods and services and the channels of trade of the two marks. Similar marks may be able to coexist if they are associated with very different goods and services and/or different channels of trade. Selecting Strong Trademarks The list above provides examples of what to avoid when developing a trademark but how do you select a strong one? In general, the strongest marks are ones with a high level of inherent distinctiveness. An inherently distinctive mark is one that can automatically be recognized by consumers as a trademark for your goods and services, even before it has established a reputation through commercial use. Trademarks with high inherent distinctiveness include: Invented or coined words e.g. EXXON, KODAK, PEPSI. Arbitrary words e.g. APPLE, GOOGLE, DOVE. Words that are suggestive of the goods and services but not clearly descriptive e.g. MICROSOFT, NETFLIX, COPPERTONE. Trademarks that include unique design elements (with or without words) e.g. the Nike “swoosh”, the Starbucks mermaid, the Toblerone mountain logo. The weak trademarks in the list above (e.g. generic marks, clearly descriptive marks, names and surnames) have little to no inherent distinctiveness. In addition, combinations of non-distinctive marks are typically still non-distinctive. For example, combining a surname with a clearly descriptive mark still lacks inherent distinctiveness (e.g. JOHNSON’S BEST COOKIES). Similarly, adding INC., LTD, .COM, and the like to a mark will not add to its inherent distinctiveness. Acquiring Distinctiveness A trademark with little or no inherent distinctiveness may still be able to acquire distinctiveness through commercial use over time such that consumers come to recognize it as a trademark. Marks that are clearly descriptive, or consist of names or surnames, can be used, but cannot be registered in Canada without sufficient evidence of acquired distinctiveness being provided during the application process, typically in the form of sales and advertising data. However, if evidence is not provided for all provinces, the trademark registration may be restricted to only the territorial areas where acquired distinctiveness can be proven. In addition, generic marks (i.e. the name of the goods and services themselves) can never acquire distinctiveness and thus cannot be registered in Canada. Therefore, if you are set on using a trademark that is lacking in inherent distinctiveness, wait to apply for registration of the trademark until you have been using the trademark for some time. Conclusions Choosing the right trademark for your goods and services is a critical part of the branding of your business. You should think carefully about what trademark to choose to avoid a weak trademark that could be difficult to register and enforce. In addition, it is always a good idea to do a trademark search before committing to a trademark to ensure your mark is not potentially confusing with another trademark. The IP team at Parlee McLaws is happy to help you perform trademark searches and register your trademark in Canada and abroad. Contact us to explore the trademark process further. Disclaimer: This article is to be used for educational and non-commercial purposes only. Parlee McLaws LLP does not intend for this article to be a source of legal advice. Please seek the advice of a lawyer before choosing to act on any of the information contained in this article.