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Trademarks

What is a trademark?

A trademark can consist of a word or words, a design, slogan, or even a product's shape or the shape of its container. Examples are everywhere you look: the Nike "swoosh," Panasonic's slogan "just slightly ahead of our time," Prudential Insurance's name combined with the picture of the Rock of Gibraltar, and the shape of a Coke bottle are all trademarks. The function of a trademark is to indicate the source of the goods or services associated with it. Regardless of where the goods are actually manufactured, the owner of the trademark is understood to be responsible for their quality. Trademarks which create favourable impressions in the mind of the consumer help to sell the goods or services.

Choosing a New Trademark
Strong Trademarks

The strongest trademarks, from a legal point of view, are those which do not describe or suggest any aspect of the product or service with which they are associated. Such trademarks are very distinctive and therefore easy to register and to enforce against infringement by third parties. Examples of such trademarks are OSHKOSH for children's clothing, KODAK cameras and TEVA for sports sandals.

Almost as strong is a trademark which is an actual word, but one with no meaning in relationship to the product or service; examples are CLOVERLEAF for tuna, SKIPPY for peanut butter, JAGUAR for cars.

A trademark should be easy to read, remember, and pronounce. Often the words of the trademark are paired with a design, which makes the combination very distinctive and memorable.

It is also a good idea to check that your trademark has no undesirable meaning in another language!

Weak Trademarks

From a marketing point of view, it is tempting to choose a trademark which describes the product or service, or some aspect of it, but this presents legal difficulties. When a trademark is registered, restrictions are placed on the use of the word or words in it by anyone other than the trademark owner. If it would be unfair to prevent others from using a word or words in association with a product or service, the trademark will not be allowed by the Trademarks Office. An example would be SHOE for footwear; anyone should be able to use the word shoe for shoes. Even if the trademark were allowed, it would be difficult to legally prevent others from using similar trademarks. The more distinctive a trademark is, the more easily it can be registered and enforced.

A word which is primarily a surname cannot be used as a trademark; neither can a place name, if it describes the place where the product or service originates except in special circumstances.

Searching Your New Mark

Before beginning to use a new trademark it is prudent to search the availability of that trademark. Unlike patent rights, which are not acquired until a patent issues, trademark rights can be acquired merely through using a trademark. Therefore, trademark searching tends to focus on both prior registered trademarks, and, on prior common law uses of trademarks which are unregistered.

There is distinction between a trademark search and a corporate name search. A corporate name search is typically a search of a provincial corporate data base to see if any other company in that jurisdiction has adopted the same name. A trademark registrability search, is a search of the Canadian Federal Trademark Register, to see if anyone has previously registered this same trademark. Clearing a corporate name does not necessarily mean that you are free to use the name.

The best way to minimize the risk associated with adopting a new trademark is to conduct a comprehensive trademark register and full common law search. The common law search would typically involve searching all of the corporate name data bases, as well as telephone directories and trade directories and journals. Unfortunately, trademark searching is inexact and imprecise. There is simply no guarantee that someone else another has not previously used the mark and the search has simply failed to locate this prior use. However, trademark searching will identify the obvious potential problems allowing you to develop risk reducing strategies to deal with them.

The trademark search can be ordered through a trademark lawyer or agent, who will then also be able to interpret the search results for you. The cost of the search varies, depending upon the extent of the search, but your trademark agent or lawyer can provide you with a quote prior to proceeding.

If you are thinking of choosing a new name and adopting it for use on a new product or service, you should consult a professional advisor prior to beginning to use the mark.

How Do I Register My Trademark and How Much Will It Costs?

A trademark agent or lawyer will provide advice as to whether a trademark is suitable for registration. Upon examining the search report, he or she can then advise whether or not the trademark is registrable based on the criteria that is set out in the Trademarks Act. In addition, they can provide advice on the different grounds upon which an application may be based. Then, an application can be completed and filed. It typically takes between six months and one year before a registration issues, and may even be longer in some cases.

Maintaining a Trademark

Once your trademark is registered, it should be used properly so that the public always associates the trademark with your particular product, and not all products in the same category. Examples of trademarks which have come to be used generically are Kleenex, for facial tissue, and escalator for moving staircases.

To avoid this, try to use the trademark in conjunction with the generic name of the product, whenever possible in any marketing material. For example, you would refer to "a cup of NESCAFÉ instant coffee," rather than "a cup of NESCAFÉ," a "NORDICTRAK exerciser," rather than "a NORDICTRAK."

In print, the trademark should appear in a different type of print, or distinguished in some other way. The trademark should never be used possessively, as in "KOOL-AID's great taste;" but rather, "the great taste of KOOL-AID." The trademark should always appear in the same type of printing, without changing the spelling or punctuation in any way. Although it is not mandatory to indicate in advertising that the trademark is registered, or is being used as a trademark, it is a good idea to do this, by using the ® symbol for a registered trademark or the ™ symbol for an unregistered one.

Your trademark agent or lawyer can provide advice on proper use of trademarks, and preventing improper use by third parties.

James Nenniger is a founding partner of the firm of Piasetzki Nenniger Kvas LLP, Barristers & Solicitors, Patent and Trademark Agents, a firm that restricts its practice to patents, copyrights, trademarks, industrial designs and related causes. Piasetzki Nenniger Kvas LLP is located in Toronto, Canada.