Alice-Anne Morlock is a lawyer at the Toronto law firm of McMillan Binch and a member of the firm’s KNOWlaw Group.

A trademark can be an enormously valuable asset. A smart business will choose a strong trademark, think long-term when protecting it and protect it early.

Some business people neglect to put in the required effort when choosing a trademark and cause themselves a lot of unnecessary grief.

You may think that only new businesses are choosing trademarks which have never been used before and therefore have the advantage of a clean start. However, with more and more mergers occurring in the business world, many businesses with long-standing names are choosing to start off their new merged life with a brand new trademark and update their image at the same time.

Is your trademark

strong or weak?

Trademarks are not created equal. There are strong trademarks and there are weak trademarks. And in many ways in the world of trademarks it is a case of pay now or pay later.

The strongest trademarks consist of truly ‘invented’ words (which have no meaning whatsoever), words which have no meaning that relates to the product, highly original designs or a combination of these.

The weakest trademarks consist of ordinary dictionary words which are suggestive of the type of product or service in association with which they are used.

In trademark lingo, strong trademarks are ‘inherently distinctive’ while weak trademarks lack that magical quality.

A simple test to use in order to determine whether a trademark is strong is to ask the following question. Would a person who is unfamiliar with your company or product and who sees your trademark for the first time be able to guess what business or product the trademark will be used with just from looking at the trademark? Using this test, a name like Lexus for automobiles is a strong trademark while a phrase like Trendy Clothes Salon for a clothing store comes out as a weak trademark.

The company that chooses a suggestive name as a trademark may find that its trademark can be remembered more easily by its customers initially. However, the company that chooses a strong trademark catches up quickly if it puts effort into educating its customers and potential customers about the link between its fanciful trademark and its products or services.

The company that chooses a strong mark ends up in a much better position because (1) a strong trademark can be protected more easily than a weak trademark, and (2) there is much less risk of confusion in the marketplace when a strong trademark is chosen.

When you choose an invented word as your trademark you avoid any negative connotations that a dictionary word may have in a language with which you are not familiar. You also can control the image associated with the brand. Very recently the large accounting firm, PricewaterhouseCoopers, announced a new name for its global network of associated legal firms. The name it chose – Landwell – was chosen, in part, for ‘its lack of connotations or offensiveness’ in any of 43 languages.

There are two reasons for wanting a strong trademark:

1. It’s easier to register a strong trademark.

2. A strong trademark is more effective in stopping third parties from using a trademark you think is too similar to yours.

Why is it easier to register a strong trademark?

The Trademarks Act contains some rules about types of trademarks that may not be registered.

Two of these rules are very difficult hurdles for weak trademarks. A trademark may not be registered if it is ‘either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used.’ A trademark may also not be registered if it can be confused with a registered trademark.

If a trademark consists of an ordinary dictionary word that has a connection to the wares or services in association with which it is used or proposed to be used (e.g. our example of Trendy Clothes Salon for a clothing store, Fast for a courier service, Crispy for a breakfast cereal or Soft for toilet paper) then the Trademarks Office may say it does not pass the first hurdle. You may have to spend a great deal of effort trying to persuade the office that the trademark is suggestive only – and not clearly descriptive. There is no such problem for a strong trademark.

Also, the office is more likely to say that a weak trademark cannot be registered because it can be confused with an existing mark. A weak trademark lacks the unique elements that will enable the public to distinguish it easily from other marks. The risk of this happening with a strong trademark is much less.

Why is a strong

trademark more useful?

Owning a registration for your trademark makes it easier to stop third parties from using your trademark (or one too close to it). However, even if you manage to get a weak trademark registered, it may not be a very effective or useful weapon against these third parties. A strong registered trademark is a far more effective weapon.

This is how it works. The law says that the owner of a trademark can prevent a competitor or other third party from using a trademark which is ‘confusing’ with the owner’s mark. One of the key factors in determining whether the third party’s mark is ‘confusing’ with your mark is the ‘ambit of protection’ to which your mark is entitled.

A trademark with a very ‘narrow’ ambit of protection is likely only effective at stopping the use of other trademarks that are identical or virtually identical to it and that are used in connection with identical or overlapping wares and services. A trademark with a ‘wide’ ambit of protection will be able to stop the use of less similar trademarks or even trademarks that are used in connection with quite different wares and services.

The law gives a weak trademark only a narrow ambit of protection. So, while several factors are relevant in trademark cases, if you have a weak trademark you may not be able to prevent the use and registration of a new mark which you might consider to be ‘confusing’ with yours.

For example, the owner of the trademark Funny Bubbles for wines wasn’t able to prevent the registration of the trademark Tiny Bubbles for wines, in large part because the trademark Funny Bubbles was considered to be a weak trademark when used in association with wines and therefore was considered to have a very narrow ambit of protection.

On the other hand, a strong trademark gets a very wide ambit of protection.

Think big – or at

least ahead

Often a company that is choosing a new trademark will come up with several possible alternatives. Once you have culled the weak trademarks from the list, you may still have three or four strong trademarks left to consider. It’s at that point that you need to consider carefully the territory in which your company wishes to use the trademark and the products and services with which you want to use the trademark.

You don’t want to find yourself in a position where you face headaches just when your business is going well and expanding. This happens more often than you may think. Say you’re a start-up company. You may choose a trademark for your business but limit your trademark searches and your trademark registration to Canada because you aren’t going to be selling into other countries right away and want to save some money.

Later on, though, you may find that the mark that you’ve chosen for Canada and are using in Canada can’t be used in the u.s. because someone else has registered the same or a similar trademark in the States. You’re then faced with an unpalatable choice. You must either change the trademark and lose the benefit of your efforts in Canada or use a separate trademark in Canada and the u.s. This can be a real headache. Moreover, if you choose the latter option, it can be very difficult to ensure that materials using your Canadian trademark do not reach other countries – for example, through the Internet.

Thinking ahead in terms of where you wish to use the trademark is very important. Thinking ahead in terms of the types of products and services you may wish to sell in association with the trademark is equally important. Therefore, you’ll want to make sure that the trademark is available for new products that you intend to market in the future so that you don’t face a closed door when it comes time to introduce them.

Act fast

Once you’ve chosen a strong trademark and have had searches conducted to make sure that it’s available in all the countries for which you have plans and in association with all the products and services for which you have plans, you should file a trademark application promptly. In many countries (notably Canada and the u.s.) you can file an application to register a trademark based on your ‘intent to use’ the trademark and your filing date will give you an important priority date over others.

Sometimes a company will allow a period of several weeks or even months to pass between the date of its searches and the date on which it applies to register the trademark. In that interval someone else could have acquired some rights.

Marketing efforts can be very expensive both in terms of money and executive time. It makes sense to spend those efforts on selecting and registering a strong trademark.

(this article contains general comments only. It is not intended to be exhaustive and should not be considered as advice in any particular situation.)