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How to Devise a Good Trademark
When devising a trademark, you should consider where it falls on the spectrum of distinctiveness. Distinctiveness is the ability of a trademark to distinguish the goods or services with which it is associated from the goods and services of others. Distinctiveness can arise as a natural result of a mark’s appearance or linguistic construction – this is termed inherent distinctiveness. Google is an example of an inherently distinctive mark, because “Google” is a made-up term which can only be understood as referring to the popular search engine. Distinctiveness may also be built through use of a mark over time, termed acquired distinctiveness. A mark that is not inherently distinctive can acquire distinctiveness through use when consumers learn to associate the mark with a single source of goods or services.
As a general principle, the more distinctive your mark is, the more it distinguishes your goods and services from those of other traders, and the stronger and more protectable it is. Trademarks that refer consumers to only a single source – that source being you - can be especially strong assets to your business.
The protectability spectrum
When assessing the strength of a trademark, one might look to a spectrum containing five broad categories. On one end are generic terms, which do not attract protection. On the other end are fanciful marks, which are generally considered most distinctive. While no trademark is guaranteed to achieve registration, marks on the right end of the spectrum are more likely to do so.
The trademarks offices of some jurisdictions expressly consider some or all of the above categories when determining registrability. In the U.S., trademarks considered generic, no matter how well known, are not registrable. While the Canadian Intellectual Property Office (CIPO) is not one of the trademarks offices that expressly considers each of the above categories, the concept is helpful to illustrate the degree of distinctiveness associated with different types of trademarks – familiarizing yourself with these categories may nonetheless help you devise a trademark capable of achieving registration in Canada.
Generic terms
Generic terms are words or phrases that are common names for particular goods or services. For example, using the words "restaurant" or "diner" in association with restaurant services would constitute use of a generic term. Other examples of use of generic terms would be referring to an alcohol brand as "wine", "beer" or "booze". Generic terms do not indicate source; rather, they are likely to be interpreted by consumers as merely naming or describing the goods or service in question.
Trademarks that were once distinctive can become generic if they become a ubiquitous way to refer to a specific good or service. FRISBEE and ESCALATOR were both at one point registrable trademarks that are now generic terms. If a mark becomes widely used such that it can no longer point to a single source of goods or services, then it can no longer function as a trademark.
Descriptive marks
In Canada, trademarks that are clearly descriptive or deceptively misdescriptive (in English or in French) of the character or quality of their associated goods or services lack inherent distinctiveness and are not registrable. A mark can be descriptive as depicted, written, or sounded. For example, THOR-O-MIX was a mark sought to be registered in association with ready-made concrete and was refused registration because while it is not descriptive as written (THOR-O-MIX not being a proper English word), it is pronounced like “thorough mix” which was deemed to be descriptive of the goods. For a trademark to be clearly descriptive, it must plainly, obviously or self-evidently describe the goods and services with which it is associated. Marks that fall short of the standard of clearly descriptive may be registrable but are not likely to be particularly strong.
A trademark cannot be deceptively misdescriptive, in that it cannot mislead the public by associating a character or quality to goods or services that they do not have. This is true whether the trademark is in English or French, but not in other languages. One example of what makes a trademark deceptively misdescriptive is if it is likely to mislead the public as to where goods are from. For instance, “Casablanca” cannot be registered in association with an Ontario wine, because consumers could reasonably be misled into thinking that the wine really originates from Casablanca, Morocco.
Laudatory terms (e.g., SUPER or BEST), geographical terms and terms that describe the conditions of or persons employed in the production of the goods or services with which a mark is associated are all considered descriptive elements. If you are thinking about adopting a trademark that contains descriptive elements, you should seek assistance from a trademark agent or lawyer before proceeding to adopt, use or attempt to register your proposed mark.
Finally, note that descriptive marks may still achieve registration if an applicant can demonstrate sufficient evidence of acquired distinctiveness. That is, the applicant must show that its mark has come to possess a dominant secondary meaning and is therefore capable of distinguishing the applicant’s goods and services from those of others.
Suggestive marks
Trademarks that are merely suggestive of their associated goods or services are registrable in Canada. These marks may allude to some aspect of their associated goods or services but do so subtly or indirectly. As a result, they can still distinguish their owner’s goods and services from those of other traders.
Suggestive trademarks prompt consumers to exercise at least some degree of mental effort in identifying what the trademark is alluding to. For example, the meaning of HEALTHY DOG FOOD is readily apparent; if used in association with dog food, such a mark would be considered clearly descriptive and not registrable. The meaning of GRO-PUP, however, is not immediately apparent – as a result, this mark might be considered merely suggestive.
Suggestive marks may contain elements that lack distinctiveness and are not registrable on their own but possess some degree of distinctiveness as a combination. For example, when used in association with beer, YUKON GOLD might be considered merely suggestive and inherently distinctive, even if the individual elements YUKON and GOLD are not. Unconventional linguistic constructions may also render a mark suggestive and impart some degree of distinctiveness, e.g., BERRY FRESH in association with fresh fruit or PIZZA PIZZA in association with pizza and restaurant services.
Arbitrary marks
Arbitrary trademarks are common words in English or French that are used in a manner not connected to their primary meaning. Because the goods and services with which an arbitrary mark is associated are so far removed from the word’s primary meaning, arbitrary marks are considered inherently distinctive. DOVE, APPLE and AMAZON are all well-known arbitrary marks.
Words used as arbitrary trademarks are generally known to consumers; as such, their spelling and pronunciation are easily remembered. However, this can also be a disadvantage – since consumers already attach a meaning to the trademark, you may incur marketing costs in conditioning consumers to associate your mark with your goods or services (i.e., to, for example, associate APPLE with computers and not only a fruit).
Fanciful marks
Fanciful trademarks possess the highest degree of inherent distinctiveness - these marks most often comprise made-up words (called coined terms, in Canada). GOOGLE, EXXON and KODAK did not exist in our lexicon before being used as trademarks. As a result of their unique nature and high degree of distinctiveness, fanciful trademarks can be powerful business assets.
However, there are some disadvantages to using a fanciful mark. First, when consumers first encounter your mark, they may have trouble remembering it and connecting it to your goods or services. Businesses relying on fanciful trademarks may therefore incur higher marketing costs than those using more suggestive marks. Also, fanciful marks can risk becoming so popular that they become generic terms for the goods or services with which they were originally associated, a process called “genericide”. When this occurs, the trademark's distinctiveness is lost, and the mark may no longer be afforded protection. A good example is KLEENEX which was a fanciful trademark with a high degree of inherent distinctiveness and is now commonly used to refer to facial tissues generally, as opposed to KLEENEX brand facial tissues specifically.
Other factors to consider
Although distinctiveness is considered the hallmark of a registrable and protectable trademark, other considerations can, and should, factor into your decision to adopt, use or register a particular mark – even if your proposed mark distinguishes your goods and services from those of others, your mark must still meet the registrability requirements of the Trademarks Act.
For advice on whether your proposed mark is a strong and registrable trademark, as well as help with searching currently registered marks, contact us for a complimentary and confidential initial telephone appointment.
