How do I Select
a "Good" Trade-Mark?
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 trademark 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
mis-descriptive (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.
It should be noted that, even where a chosen trademark is not
registrable for being clearly descriptive or deceptively mis-descriptive, it is
possible to continue using that trademark but its owner must understand that it
will not be able to enforce the exclusivity that would result from registration
of the trademark.