When you’re launching a new brand or expanding with a sub-brand, one of the most important steps is selecting a trademark that is both effective and legally protectable. A strong trademark not only helps your business stand out in the marketplace but also plays a crucial role in securing trademark registration and enforcing your rights against imitators.
What Makes a Strong Trademark?
A strong trademark is one that is inherently distinctive, meaning it allows consumers to easily identify your goods and services from those of your competitors. The more distinctive a mark is, the easier it is to register and defend.
Generally, strong trademarks do not include the following:
1. Generic Terms:
common names for the goods or services, in any language, associated with your trademark (e.g., using “Milk” for dairy products).
2. Clearly Descriptive Words,
including:
- features, traits, or characteristics of your goods and services, or laudatory terms that describe their quality (e.g., BEST, SUPER, ULTRA);
- production methods, conditions, or the environment in which your goods and services are produced (e.g., KILNCRAFT for goods produced in a kiln);
- occupational references that describe the type of person who makes or offers the goods or services, including professional designations; and
- geographic origin of the goods and services, meaning the geographic name of the country, region, province, city, or neighbourhood in which the goods or services are manufactured, produced, grown, assembled, designed, or sold (e.g. EDMONTON PRODUCE).
3. Misdescriptive Descriptions:
words that DECEPTIVE MISDESCRIBE the character or quality, conditions of production, persons employed, or place of origin of the goods and services, such that the trademark is likely to mislead consumers into believing that the goods and services have some feature, characteristic or trait that they do not (or originate from a place they do not).
Avoiding Confusion
Beyond distinctiveness, it’s important to avoid trademarks that could be mistaken for existing ones. A trademark is considered confusing if it cannot distinguish your goods and services from those associated with another trademark. A confusingly similar mark can lead to rejection of your application or potential infringement or opposition claims.
Factors considered in a confusion analysis include, among other things:
- Visual and phonetic similarities (e.g., spelling variations that sound the same);
- Ideas or meanings suggested by the trademarks; and
- Nature of the goods or services and the channels through which they’re sold.
Even if two trademarks differ in spelling or design, they can still be confusing if they target similar markets with related goods or services.
Selecting Strong Trademarks
While it’s helpful to know what to avoid when choosing a trademark, it’s even more important to understand what to aim for. Trademarks with high inherent distinctiveness typically fall into one of the following categories:
- Coined or invented terms (e.g., KODAK, XEROX, PEPSI).
- Arbitrary words used in an unrelated context (e.g., APPLE for electronics, DOVE for soap).
- Suggestive words that hint at qualities without directly describing them (e.g., NETFLIX for streaming or COPPERTONE for sunscreen).
- Unique logos or design elements, whether or not paired with words (e.g., Nike’s
swoosh or the Toblerone mountain).
Trademarks consisting of weak elements, such as generic or clearly descriptive words, surnames, or common acronyms, generally lack distinctiveness. Simply combining weak elements (e.g., SMITH’S QUALITY SERVICE or BAKERS INC.) typically doesn’t make a trademark inherently distinctive. Adding corporate designators (.COM, INC., LTD.) or domain suffixes to otherwise weak terms does not make a mark distinctive either.
Acquiring Distinctiveness
If your trademark lacks inherent distinctiveness, it may still become eligible for registration if you can demonstrate that it has acquired distinctiveness through extensive use. This means showing that, over time, consumers have come to recognize your trademark as being associated with your goods or services.
To prove acquired distinctiveness in Canada, you generally need to submit evidence such as:
- Sales figures;
- Advertising expenditures; and
- Length and geographical extent of use.
However, even with such evidence, registration might only be granted in the specific regions where distinctiveness has been established. It’s important to note that generic marks (i.e., names of the actual goods or services) cannot acquire distinctiveness and are not registrable under Canadian law.
Conclusions
Choosing the right trademark is one of the most important branding decisions your business will make. A weak trademark can limit your ability to register or protect your rights, while a strong one lays a solid foundation for brand recognition and legal enforcement.
Before committing to a trademark, it’s always a smart move to conduct a thorough clearance search to ensure it’s not confusing with any existing trademarks. The IP team at Lift Legal is here to help you perform a trademark clearance search and register your trademark in Canada and abroad.