Your Trademark is the Key to Standing Out From the Crowd

OLD NAVY, VIAGRA, MENCHIE’S - when you see these trademarks you know instantly what type of products or services each business will be providing. Trademarks perform a key function in the marketplace and are of enormous value to businesses as they guide consumers to where they want to go.

So how do you create a trademark as prominent as the ones noted above? To begin, it is important to ensure that your trademark actually distinguishes your products and services from the products and services of others and therefore it should be distinctive . That being said, there is much more to selecting a good trademark than simply selecting one that distinguishes your brand from the brands of others.

The best trademarks are those with “inherent distinctiveness”. Marks are inherently distinctive when nothing about them refers the consumer to a multitude of sources, for example where the mark does not describe products, or refer to a geographical location where the products are sold, but instead the mark is a unique or invented name. The best trademarks are therefore the following:

• The alteration of a regular word for example COTTONELLE for use in association with bathroom tissue and SILKIENCE for use in association with ablution products.
• Invented words for example KODAK for use in association with cameras, EXXON for use in association with oil/gas, ZANTAC for use in association with stomach medication; and
• An unusual combination of words for example BABY-DRY for use in association with diapers. These are words that do not go together in a natural way.

Trademarks with a lower degree of inherent distinctiveness will not be afforded a wide ambit of protection. For example:

• Initials and Numerals – these are not entitled to a wide ambit of protection and may not be registrable depending on the surrounding elements of the mark;
• Suggestive trademarks – if a mark suggests, rather than clearly describes, the products and services it is used in association with, then it is registrable, for example BOSTON PIZZA for use in association with restaurant services, merely suggests a type of pizza made in Boston;
• Names, Surnames and Geographic Locations – these are inherently weak marks and may not be registrable depending on the surrounding elements of the mark; and
• Designs/Logos – graphic design elements are always good trademarks provided that there is nothing similar in the marketplace already or on the Trademarks Register; and
• Common words – an example of a trademark composed of common words is the trademark MASTERPIECE for use in association with cakes and chocolate.

When selecting a trademark, it is also extremely important for a trademark owner to assess the legal landscape into which the trademark will be registered. The Trademarks Register should be searched and the state of the marketplace in general must be taken into consideration. The state of the marketplace refers to all trademarks, whether registered or unregistered, so it is extremely important to search.

In addition to the above, there are also legislative requirements that must be complied with in order to be able to register your trademark. For example, brands that include scandelous, obscene or immoral words are not registrable. A full list of brands which are prohibited from being registered as a trademark can be found in the Canadian Trademarks Act.

For all the reasons above and many more, it is extremely important to consult with a Trademark Agent at the very beginning of the process so that they can not only assist you with registering your trademark, but can also assist you with increasing your chances of successful registration by providing advice to you on the availability and registrability of your trademark.