WHAT IS A TRADEMARK?

A trademark is a word, a symbol, a design or any combination used in association with products (wares in trademark lingo) or services. It is a useful tool for distinguishing the products or services of one entity from its competitors. A trademark may come to represent not only products and services, but also the reputation of the provider of such products or services. As such, a trademark may constitute valuable intellectual property.

Registration of a trademark is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. Registration is not obligatory but is recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific products or services. It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage. Furthermore, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be considered.

SELECTING A “GOOD” TRADEMARK

In evaluating a trademark, there are four general categories of terms:

(i)         Distinctive terms;

(ii)         Suggestive terms;

(iii)        Descriptive terms; and

(iv)        Generic terms.

Generally, the terms that are easiest to register and to protect as trademarks are "distinctive" terms.  Distinctive terms are often arbitrary or fanciful terms.  They are unmistakably capable of identifying an owner's wares or services without any likelihood of confusion, for the average consumer, with the wares or services of another party.

At the other end of the spectrum, "generic" terms will never be capable of registration.  The meaning of a generic term is synonymous with the wares or services themselves (e.g., zipper, escalator, etc...).  Generic terms are incapable of distinguishing the wares or services of one party from those of another.

Between these two extremes lie "suggestive" and "descriptive" terms.

A "suggestive" term is one that merely suggests the nature, quality or characteristic of the wares or services in relation to which it is used as a trademark.  It is possible for suggestive terms to be registered as trademarks but they make for “weak” trademarks because they often do not provide their owner with the ability to prevent others from using marks which are very similar and used in relation to similar wares or services, or that are identical marks used in relation to different wares or services.

A "descriptive" term describes the nature, quality or characteristic, the intended purpose or function, or the end effect upon the user of the wares or services in relation to which it is used as a trademark.  Descriptive terms are not registrable unless, over a period of years, the terms have acquired, in the minds of the public, a special, identifiable meaning (a "secondary meaning") which links the wares or services to the owner of the trademark.

When choosing a trademark, you should make every effort to use arbitrary and fanciful terms.  Suggestive terms make for very weak trademarks and should be avoided whenever possible. Descriptive and generic terms should never be used as trademarks.  Furthermore, terms which have a specific meaning within a particular industry should be avoided in relation to wares or services pertaining to that industry as they tend to make the mark suggestive or descriptive and therefore more difficult to register and to protect.

Generally, unless the trademark of a party has become clearly distinctive of a given party's wares or services, a trademark will not be registrable in Canada if it is:

·         the name or surname of a person (e.g., "Jane Smith");

·         clearly descriptive of the wares or services in relation to which it is used (e.g., "Perfectly Clean" in relation to dry-cleaning services);

·         a word in another language which describes the wares or services (e.g., "Gelato" - the Italian term for "ice cream" - in relation to ice cream products);

·         deceptively misdescriptive (e.g., "Air Courier" in relation to ground transportation services); or

·         an official symbol, coat of arms, badge, crest, emblem or name (e.g., the Canadian flag, the letters "R.C.M.P.", the name "United Nations", the symbol of the Red Cross).

To maximize the likelihood of registration, a trademark should therefore be either an invented mark or one that makes only oblique reference to the nature of the wares or services in relation to which it is to be used.