Ask A Lawyer – How Do I Select A Good TRADE-MARK?

By Vanessa DeDominicis

Trade-marks serve as an indication of a source and a badge of quality for their products and services. Trade-marks perform a key function in the marketplace and are of enormous value to businesses as they act as a sort of shortcut to get consumers to where they want to go.

So, what should you look for when selecting a good trade-mark? Keeping in mind that a trade-mark is designed to ‘distinguish’ your products and services from the products and services of others, it goes without saying that your trade-mark should be distinctive. That being said, there is much more to selecting a good trade-mark than simply selecting one that distinguishes your brand from the brands of others.

The best trade-marks 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 trade-marks are therefore the following:

  • 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;
  • 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; and
  • 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.

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

  • Suggestive trade-marks – 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;
  • Common words – an example of a trade-mark composed of common words is the trade-mark MASTERPIECE for use in association with cakes and chocolate;
  • 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;
  • 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 trade-marks provided that there is nothing similar in the marketplace already or on the Trade-marks Register.

When selecting a trade-mark, it is also extremely important for a trade-mark owner to assess the legal landscape into which the trade-mark will be registered. The Trade-marks 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 trade-marks, 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 trade-mark. These can be found in the Canadian Trade-marks Act.

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

This is provided as information ONLY; it should not be construed as legal advice. For more information on TRADE-MARKS and INTELLECTUAL PROPERTY ISSUES, please contact Vanessa DeDominicis on 250-869-1140 or dedominicis@pushormitchell.com. Vanessa is a Registered Canadian and US Trade-mark Agent and Lawyer at Pushor Mitchell LLP in Kelowna and would be more than happy to assist you.