“GOOD” NAMES THAT MAKE FOR “Bad” Trademarks

Notes

• KEEP IT SHORT AND SIMILAR FORMAT.

• MINIMALISTIC

• DISTINCTIVE

• CUSTOMER KNOWING YOUR PRODUCT; SUGGESTIVE

• SEE PRESENTATION TODAY AND ARTICLE

Whether you are part of a startup or an expanding business, it’s certainly worth spending at least a few minutes to consider your strategy around one of the most valuable assets of your business. Too often people rush to stick with the first name they come up with instead of at least doing a quick Google search to see if someone is already using a similar name in the same industry. Other times, the name is simply too generic. But what about other names that would appear to be “good” but actually make for “bad” trademarks?

“Good” Names

A good name is typically one that is memorable and easy to recognize, so that people can distinguish your product or service from competitors. A name that inherently matches your product or service is also a plus, but that can also lead to the first potential pitfall.

It may be tempting, especially for a business just starting up, to pick a name that allows customers to know exactly what the business is selling. However, names that are clearly descriptive of the character, quality or geographic origin of the product or service you provide cannot be registered as a trademark. The rationale being that no one person should have the exclusive naming rights to call their candy “Sweet” for example, or to call themselves “The Real Estate Agent of Mississauga”.

AVERY LEE Associate & Trademark Agent KMB Law

Unique Last Names

It may also be tempting to put your family name on your business followed by the name of the services you provide, especially if your last name is less common. However, unless your last name happens to have another meaning in the ordinary language or you are the only one in Canada with that last name, it will generally be considered a “bad” trademark. The rationale is that someone else with that last name should also be allowed to use it as a name for their business even if you used it first.

There are exceptions to this, of course, as there are many famous brands to point to (e.g., many fashion brands, McDonald’s). But the Trademarks Office has become more strict over the years, and now you would have to provide evidence that you have used a last name extensively in Canada such that it has become distinctive of your business before you can register it as a trademark.

Minimalistic Logos

Similarly, “good” or minimalistic logos that only include one letter, colour or a simple shape can make for “bad” trademarks unless your company is already famous. This has been a noticeable trend over the past decade where big companies have rebranded to make their logo designs simpler. That’s the power of a trademark when you can strip away many elements of a logo and your customers are still able to recognize that it is associated with a particular company, product or service.

Please contact us by email at trademarks@kmblaw.com to learn more or to begin the process of making money with your trademarks.

This article is provided for general information purposes and should not be considered a legal opinion. Clients are advised to obtain legal advice on their specific situations. 