Developing a Trademark Strategy for Your Business

When you are developing your business, it is important to have a distinct and unique brand that is recognizable by consumers as a symbol of quality and satisfaction. This type of brand, however, is vulnerable to being infringed by competitors in an effort to reap the positive associations it evokes with consumers. A good trademark strategy should thus not only involve creating a brand that resonates with consumers and is easy to market and disseminate, but also ensuring that the trademark is protected against infringement. Further, it is important to ensure your trademark remains a symbol of your goods and services, rather than becoming descriptive of particular goods and services originating from anyone.

Creating Your Trademark

In the brainstorming stages of creating your brand, it is helpful to conduct a search of existing trademarks within your jurisdiction to determine whether any confusingly similar or identical trademarks already exist that may prevent use and registration of your trademark. A trademark professional, familiar with the relevant legal test for confusion and having experience with this common objection from the Trademarks Office, can conduct this search and provide an opinion on the likely registrability and availability of your proposed trademark. Ultimately, however, it is up to the trademarks examiner tasked with reviewing your application to determine whether your trademark is confusingly similar and therefore unregistrable. If your application does receive a confusion objection, it may be possible to overcome with argument or by revising the goods and services included within your application.

Further, when devising a mark, consider a trademark using letters, words or slogans that are not entirely descriptive or laudatory of your brand, but are unique in the meaning they evoke within your industry or class of goods and services. To accomplish this, it is helpful to avoid letters, words or slogans that could be applied to a similar good or service. What may be considered a clever trademark by a business, for example, FROZENDAIRY CO for ice cream, may be considered clearly descriptive by the trademark examiner. Trademarks are given different levels of protection based on their strength, with generic and descriptive trademarks being the weakest and arbitrary and inherently distinctive trademarks that have little or no meaning in association with the goods or services sold being the strongest (i.e., “The Tastiest Candy in America” as compared to “Skittles®”). Consider adopting a fanciful or coined word trademark (EXXON® is a good example), or a trademark not remotely suggestive of the relevant goods or services (as was done by Apple® in respect of computers) to fall on the stronger end of the spectrum. In addition, you will want to avoid words that are primarily merely names or surnames of individuals (e.g., Muller, Noel, Cote), words that are deceptively misdescriptive (e.g., SHAMMI in association with transparent polyethylene gloves was misdescriptive because the gloves did not contain any shammy or chamois material) or words that are clearly descriptive of the origin of the associated goods or services (e.g., CASABLANCA in association with wines).

These are just a few of several obstacles which may be encountered during the prosecution of a trademark application. To be in the best position for prompt and painless registration of your trademark, consider consulting a trademark professional.

The Registration Process

Once you have settled on a brand, you may register your trademark in the jurisdiction in which you use or propose to use your trademark. Although having a common law trademark (an unregistered trademark that has a recognizable identity among consumers in the region in which it is used) in Canada may entitle you to certain exclusion and enforcement rights, registering a trademark gives you exclusive rights to use the trademark across the country for 10 years, with the opportunity to renew indefinitely, and legal grounds to seek damages against any party who uses the same or a confusingly similar trademark for commercial gain. See here for a detailed explanation of the differences between registered and unregistered marks.

When applying for a trademark registration, attempt to be as broad as possible in your description of goods and services. Keep in mind that your brand may grow, and once filed, your trademark application cannot be amended to add additional goods and services. As Canada no longer has a “use” requirement for the registration of trademarks, there is no longer an obstacle to including future goods and services (not yet offered in association with your mark) in your application. Note, however, that fees for trademark applications depend on the number of classes of goods and services listed in the application, and as such, it may not be advisable to include every imaginable good and/or service with which you brand may one day be associated. After the first class of goods and services, each additional class will add $105.26 (as of 2023) to the cost of your application. Further, there is a risk that, if you do not end up using the mark in respect of all the goods and services in association with which it was registered, your registration may be expunged or amended. It may therefore be best to strike a balance between listing all of your future plans and listing only those products or services rolled out as of the date of filing.

Finally, keep in mind that, if you are trademarking a logo it may be advisable to file that logo without a colour claim, as that can protect it from being copied in any color combination, rather than with a color claim, which protects a particular color scheme.

Marketing Your Trademark

The next step in the trademark strategy process is marketing your trademark to consumers in order to develop an association in the minds of consumers between the mark and the quality and satisfaction they derive from your goods and services.

If you rely or will rely on websites and social media to advertise your goods and services, you should consider registering domain names and securing social media accounts with names that are identical and similar to your trademark. Even if you do not immediately plan on advertising on social media, or putting up a website, registration could prevent competitors from grabbing those domain names or accounts before you. Proactively staking a claim to these domains and accounts will obviate the need for future disputes related to the same and give your business room to grow.

When marketing your goods and services, it is important to identify your target demographic. Concentrating your marketing efforts on a narrower group of highly interested people (i.e. a particular niche within the market) may yield better results than attempting to sell your goods and services to everyone. You may consider getting in touch with your consumers to gather information about the perception of your trademark, such as through speaking to consumers and administering surveys and questionnaires. This research can help you evaluate your marketing efforts and identify areas for improvement. Further, make yourself aware of how key influencers and reviewers are positioning your goods and services, as that could account for much of the way your trademark is perceived. This may help you conceptualize the kind of narrative, or story, your trademark is currently telling to consumers, which you may then choose to adjust through changes in the goods and services or presentation until it falls in line with your goals.

Ensuring Proper Usage

One counter-intuitive pitfall of trademark ownership is condoning improper trademark usage by consumers and influencers in the industry, resulting in the spread of that usage into wider vernacular. Examples of this would be “Google®”, originally trademarked in association with a search engine but now used as a common verb to indicate searching for something online, or “Kleenex®”, a soft facial tissue brand that has now become emblematic of all facial tissues. Although this is only sometimes problematic for larger brands – for example, the generic usage of “Google®” is of little consequence to its owner due to the search engine’s strong market position, it can negatively affect small brands. When your trademark becomes evocative not only of your specific goods and services, but of those particular goods and services originating from anyone, it loses distinctiveness.

So how do you avoid devaluing your trademark in this sense? First and foremost, ensure that your trademark is used in association with the more generic good or service that you are selling. Using the example of Kleenex®, create marketing strategies with this in mind; for example: “Kleenex® facial tissues are the softest” versus “Kleenex® is the softest”.

Another pitfall to avoid is using your trademark in the plural, rather than the singular form, if the trademark was registered as a singular word. Further, you should also avoid using your trademark as a verb – i.e. “I’m going to Google that” versus “I’ll look this up in Google® search”.

Protection from Competitors

Part of developing an effective trademark strategy is ensuring that your business is the only one that capitalizes on the goodwill you’ve created. To pre-empt trademark infringement by others, you should provide notice of your trademark rights in most if not all instances of use of the trademark. For example, you may mark your trademark with a circled “R”, i.e. ®, if the trademark is registered in that jurisdiction. If it is not yet registered, you may mark it with “TM”, usually done in superscript, i.e. ™, to indicate to others that you are using the word, words, design or slogan as a trademark.

Conclusion

The right trademark strategy can take your brand from good to great by creating consumer recognition and goodwill. Careful consideration and execution of one’s trademark strategy is essential to shape consumer perception of your business and brands.

If you would like our help with developing your trademark strategy, contact us for a complimentary and confidential telephone appointment.