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How to Devise a Good Trademark

By: Christopher Heer, Toba Cooper, Daryna Kutsyna | Last updated: August 15, 2018
When brainstorming a name or slogan for your business, it is important to remember that not all trademarks are made equal. While a mark may play well with your consumers or describe the products that you are selling to the perfect degree, that may not make it eligible for federal protection.

When determining if you mark is strong or weak, you'll want to consider where it falls on the spectrum of distinctiveness. To act as a trademark at all your mark must distinguish the goods or services to which it is attached from the goods and services of other traders, especially those that are associated with a confusingly similar mark.

As a general principle, the more distinguishing a mark is, the more it will differentiate from other traders around you, the stronger and more protectable it is. In short, trademarks that are made up words, do not in any way resemble existing trademarks and are highly distinguishing are going to be strong and highly protectable assets for your business.

The protectability spectrum

When assessing the strength of a trademark, one might look to 5 commonly referred to categories of protectability which conveniently fall on a strength related spectrum. On one end of the spectrum are generic marks, marks which are never protectable under Canadian law. On the other end are fanciful marks, which are the most distinctive and distinguishing.

Categories of Protectability of Trademarks

While no trademark is guaranteed to be registrable, marks on the right end of the spectrum generally have a higher chance at registrability. In the United States, trademarks are explicitly classified into these categories by the Registrar. While the Canadian Intellectual Property Office (CIPO) does not employ a similarly rigid system, familiarizing yourself with what the categories are and the degree of distinctiveness necessary for each category can aid you significantly in registering a trademark in Canada.

Generic marks

Generic trademarks are words or phrases that are common names for the good or service that the business is selling. For example, if you are running a restaurant, calling your business "restaurant" or "diner" would constitute a generic mark. Other examples of generic trademarks would be referring to alcohol brand as "wine", "beer" or "booze".

Trademarks that have at one point been protectable can also fall into the generic end of the spectrum if the distinctive name of a brand becomes the ubiquitous way to refer to a specific product. Band-aid, Frisbee and Escalator have all at one point been registrable trademarks that have now become generic ways to refer to the products these companies sell. Accordingly, if a trademark becomes so well known that it no longer points to a particular source of goods or services it can no longer operate as a trademark at all.

Descriptive marks

Descriptive trademarks are marks that do more than merely name the good or service that they are selling, but do not go beyond describing one or some of the good's or service's attributes. Descriptive trademarks cannot be clearly descriptive of the goods or services and also cannot clearly misdescribe the goods or services but can describe some feature or characteristic of the goods or services. For a trademark to be clearly descriptive of goods and services it must plainly, obviously or self evidently describe the goods and services. Anything short of this may be registrable but is not likely to be a particularly strong trademark.

For example, KOOL ONE was allowed to be registered in Canada in association with beer since a Canadian Court found that it only referred to the state in which beer may or may be sold and consumed and not to any intrinsic quality or character of the product itself.

The line between clearly descriptive marks and marks that are not considered clearly descriptive is very thin. If you are thinking about adopting a trademark that contains descriptive elements you would be strongly advised to seek the professional opinion of a trademark agent or lawyer before filing an application to register the mark.

Although clearly descriptive marks are not inherently protectable (or registrable), they may obtain protection if they acquire a secondary meaning and evidence can show that the mark has acquired distinctiveness (i.e., the ability to point to a particular source of goods and services).

Suggestive marks

Suggestive trademarks are afforded slightly more protection in Canadian trademark law. Such marks may describe some aspect of the good or service they are associated with but do so indirectly. Instead of a direct description, a suggestive trademark will prompt a customer to think about the association the mark is making – think "strength-boosting dog food" vs. "GRO-PUP". Suggestive trademarks will be evaluated based on whether the associations they evoke are immediate or require an average, English or French speaking consumer of an education level commensurate with the users of the product the mark is associated with, to infer the connection.

Another class of suggestive trademarks are surnames combined with a description of the good or service. While marks that are "merely surnames" cannot be registered under the Trademarks Act, and a simple listing of the services would be considered a generic mark, a combination of the two (e.g., "Heer Law") would likely be viewed by the Trademarks Office as a suggestive mark if an application to register the mark was filed.

Arbitrary marks

Arbitrary trademarks are words that are in common usage in the language in which the registration is being filed (English or French) but are not being used in a way that is connected to their primary meaning. Because the goods and services with which the mark is associated are so far removed from the word's primary meaning, there is an inherent distinctiveness associated with the mark in its field of use. "Dove", "Apple" and "Amazon" are all well-known arbitrary marks.

Because arbitrary trademarks usually have a primary meaning that is entrenched in consumers' minds, their spelling and pronunciation are easily remembered by consumers. However, this can also be a disadvantage: since consumers already attach a meaning to the trademark, your business is likely to incur marketing costs in prompting them to develop a secondary association to your wares.

Fanciful marks

Fanciful trademarks possess the highest degree of inherent distinctiveness as they are essentially made-up words or words that used to be common but fell out of frequent usage. Words like "Google", "Exxon" and "Kodak" did not exist in our lexicon before we internalized them as a trademark associated with a specific class of goods or services. In this way, fanciful trademarks can be extremely powerful business assets.

That said, there are several significant disadvantages to using a fanciful mark. The first is that, because consumers have no associations with your mark, they may have trouble remembering it and connecting it to your goods or services. Businesses using fanciful trademarks will likely incur higher marketing costs than any other type of mark. Fanciful marks may also risk becoming so popular that they risk becoming the generic term for the entire class of goods or services that the mark was originally associated with – a process referred to as "genericide". If that happens, the trademark's distinctiveness will be lost, and it will become an unprotectable generic mark.

Other factors to consider

How distinctive your mark is cannot be the only factor you consider in devising a trademark for your business. Even if your proposed mark adequately distinguishes your goods and services from others in the category, the mark must still meet the registrability requirements of the Trademarks Act.

The protectability spectrum is a good starting point in devising a trademark. For further advice on whether your proposed mark is a strong and registrable trademark, as well as help with searching currently registered marks, please contact our trademark lawyers for a complimentary and confidential initial telephone appointment.

Related resources:

Trademark FAQ