Create Time 2019-05-30 11:05 Views：695
Choosing a trademark name is a risky commitment. You spend so much time at the drawing table, coffee house, or in the shower, thinking of all of the great trademark names that will define your business. You can mull for months only to have an examiner tell you that your trademark name — to which you’ve probably become attached at this point — is not inherently distinctive. Bam, rejected, nata.
With the new trademark laws coming into effect, the Canadian Intellectual Property Office (CIPO) is going to start cracking down on non-distinctive marks. So, what are the standards exactly? And how can you ensure that your trademark meets them?
Well, when your trademark application reaches the examiner, there are a couple of hypothetical questions they are going to ask themselves:
Does this trademark point consumers to the original source?
Does this trademark impede standard operations for other businesses?
Let’s break these down a bit further.
Does the trademark point consumers to the original source?
This question is of first importance when it comes to distinguishing your goods and services from those of other, similar businesses. The examiner needs to look at your trademark and think: “could this mark be associated with anyone else? What else could it make the consumer think of?”
This will be important even if your trademark has been in use for a while. The examiner needs to view your mark from the perspective of a person who has not yet been educated on your brand. Does this trademark make them think of anyone else, regardless of your own brand’s reputation?
You must be thinking: “can’t a trademark acquire distinctiveness overtime?” We’ll get to acquired distinctiveness later.
Let’s give an example. Gucci is a brand with a very distinctive trademark. Try to forget Gucci’s fame and cultural significance for a minute and think, does “Gucci” make me think of anything else? No? That is what it means to be distinctive.
What if the word “Gucci” was a cultural term that consumers used to say, “leather bag” or it was a non-trademarked word that other brands were using? Then the Gucci trademark would be meaningless, and the branding on the bag would not direct consumers to the source of the goods.
Does the trademark impede standard operations for other businesses?
Imagine you work in real estate and someone trademarked the term “real estate.” That would be a serious issue that would make running your business very difficult. It’s not as nice to be known as a “property seller.”
Words, terms, designs, colours, numbers and letter combinations that are commonplace in various industries cannot be considered distinctive and will, therefore, be rejected upon examination. Otherwise, the market couldn’t function because every company would be prevented from, for example:
Words and terms: take the “real estate” example — that term cannot belong to one company.
Designs: a vineyard could not get away with trademarking a bunch of grapes for their logo; it is far too generic and indistinctive.
Colour: a company designing fire hydrants could not trademark the red colour as it is generally associated with fire hydrants.
One to two letter/number combinations: GT could not be trademarked as it is widely used to refer to high-performance vehicles.
You don’t get to claim a monopoly on something that everyone is using. Not only would it not help consumers associate those terms and features with your brand, but it would also pull the rug out from under the market. Imagine if you could trademark a grapes logo for your vineyard — no other company could use a bunch of grapes in their advertising or as a part of their design.
How to avoid using choosing an indistinctive trademark
For advice on how to create a strong trademark name, check out our previous blog, which explains in detail what can separate your trademark from the pack. Here we’re going to get into the “do nots” according to the upcoming changes to Canadian trademark law, in addition to those we have brought up already.
Even if the location is known for those particular goods and services, geographic locations are not distinctive. (i.e. California Wine)
English and French Descriptive terms
As Canada is a bilingual country, the French for a descriptive English word would also be considered descriptive and therefore indistinctive. (i.e. Tasty Gateaux for cakes)
Foreign language descriptive terms
The trademark you choose has to take into account your consumer demographic. If your trademark is descriptive in Russian and your clientele has a large Russian base, your mark will not be distinctive, even though it uses non-Latin characters.
Names and honorifics
A single surname on its own could not be considered distinctive as that name could refer to a multitude of people. However, a trademark consisting of two or more surnames is distinctive as the odds of finding the same combination are relatively low.
Titles such as Dr., Mrs., and Sir filed in addition to a single surname will not make the trademark distinctive.
Possessives and laudatory words/phrases
Words like “me” “my” and “our” slapped onto an indistinctive trademark will not make it distinctive. The same is true for words and terms like “the best” “wonderful” and “finest.”
Phone numbers, URLs/TDLs, and forms of business association
A phone number does not identify the source of the goods and services
Sandwiching a descriptive trademark between "www.” and “.com” does not a distinctive trademark make. Neither does a portion of a web address identify the source of the goods and services.
The legal standing of a business such as “Inc.” and “LTD” does not make a descriptive mark distinctive.
It must be noted that combining indistinctive terms does not create a distinctive trademark. You will not be able to register “Smith’s Ultimate Beer.”
Descriptive and indistinctive trademarks can become inherently distinctive over time through use and growing association with your goods and services. However, your trademark will be judged by its status at the time of filing.
There’s a lot of detail here and a lot to take in! Some of it may seem like common sense, other parts may be new and will take some getting used to. Either way, our trademark team will back you up with any resources you need to process these changes.
Want help navigating the upcoming trademark law amendments? Visit tm.witmart.com or give our friendly trademark consultants a call at 1-855-497-7273 to discuss your options.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case-by-case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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