A striking and unique trademark can be an important tool for a business because it helps consumers easily identify its goods and services. However, not all words, designs, or signs are created equal. In this edition of our Trademarks for Businesses series, we will discuss top-of-mind considerations when selecting a trademark and ensuring it is available for use and registration.
Selecting a trademark
When selecting a new trademark, it is important to consider the “strength” of the mark at face value. Unique trademarks are generally considered to be “strong” trademarks, because they are “distinctive”, such that they will distinguish the goods and services of a business upon adoption, while trademarks that are commonly used in a particular field and/or describe a characteristic or quality of the associated goods or services are generally considered “weak” trademarks, because they are not distinctive.
In general, the “stronger” a trademark is, the easier it should be to register and enforce.
Word marks
There are five main categories of word marks:
- Coined words are invented words with no known meaning. For example, ROLEX® for watches or PEPSI® for soft drinks. This category contains marks that are the strongest from the start. They are generally the easiest to register and enforce.
- Arbitrary words are existing words applied to unrelated goods or services, such as APPLE® for computers. These are relatively strong marks upon adoption.
- Suggestive words are existing words that suggest a characteristic or quality of the associated goods or services, but do not describe the goods or services themselves. These marks are generally more difficult to register and enforce, as other businesses may already be using similar marks.
- Descriptive words or phrases describe the associated goods or services. An example of a descriptive mark would be COLD AND CREAMY for ice cream or APPLE PIE for potpourri. This category includes laudatory words. Descriptive marks are generally considered to be very weak from the start and, as a result, are very difficult to register. It can also be difficult for consumers to understand that a descriptive word is being used to identify the goods and services of a particular business. As a result, such words or phrases can only become trademarks if they have been properly used, promoted and advertised long and extensively enough for consumers to associate the mark with a particular business.
- Generic words are the common names of the associated goods or services, such as “clock” for timepieces or “construction” for building services. Generic words are not registrable or protectable on their own in relation to the goods or services associated therewith. They are words that should be free for all businesses to use.
Design marks
As with word marks, design marks can similarly be considered inherently strong or weak.
Original designs that are unique and unrelated to the associated goods or services are the strongest upon adoption. Simple designs, such as geometric shapes, can be difficult to register and enforce if they are not sufficiently unique to create an impression on consumers.
Designs that are descriptive of the goods or services are generally considered weak and difficult to register and enforce unless such marks have been properly used, promoted and advertised long and extensively enough for consumers to associate the mark with a particular business for the goods or services in question.
For designs or other trademarks that may be protectable by copyright, it is important to determine if the copyright belongs to the business. Considering whether the trademark was created in-house or by an outside service provider will affect that determination.
This determination also applies to non-traditional marks (see below), which may be protectable by copyright, such as shapes, sounds, moving images, holograms and textures.
Non-traditional trademarks
Non-traditional trademarks, which, in addition to those mentioned above, also include colours, positions, and tastes, are often considered weak initially, as consumers may not immediately perceive such marks as designating a particular business. However, these marks can become very strong and valuable marketing and advertising tools once they have been properly used, promoted and advertised by a business to such an extent that consumers are educated to associate them with the business.
The clearance process: ensuring a mark is available for use and registration
Once a trademark has been selected, it needs to be assessed to determine whether it is available for use and registration. A clearance assessment should be performed before a business begins using the new trademark. Failing to do so may result in litigation, including having to abandon or modify a trademark after use has commenced by recalling existing products, changing all product packaging and printed materials, as well as modifying or removing advertising and promotional materials.
Developing a trademark clearance strategy is therefore required.
For most businesses, expected revenue and budgetary considerations are the main drivers of a clearance strategy as they will dictate the scale and scope of the searches. Other considerations include the type of trademark, how it will be used, the length of time the trademark is expected to be in use, the risk tolerance of the business and the jurisdictions in which the trademark is expected to generate revenue and their legal systems.
For example, because Canada recognizes use-based trademark and trade name rights as opposed to registered rights only, a trademark search needs to assess both registered and unregistered rights:
- Register searches are performed to determine whether there are any trademark applications or registrations filed by other businesses or prohibited marks that could pose an obstacle to the use and registration of the proposed mark; and
- Common law searches are aimed at identifying the use of unregistered trademarks or trade names by other businesses that have not applied for the benefits of a trademark registration.
If a clearance search discloses another business using a similar trademark or trade name in association with similar goods or services, it may indicate that the proposed mark is not available for use or registration.
In conclusion, developing a trademark selection and clearance strategy can help ensure that a business is strategically investing in unique trademarks that are safe to use, capable of registration, and that may be enforced to prevent competitors from adopting confusingly similar marks in the marketplace.
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