Distinctive Trademarks: Your Brand’s Foundation
Published May 7, 2020
Associated Areas of law
When you’re building any business, but particularly when you’re building a business online, it’s important to put some serious thought into how customers are going to identify and recognize your business. The name or logo you come up with now should stay with your business as it grows and expands beyond your original geographic area and product offering.
That brand could become incredibly valuable, and it has a better chance with a name and logo that’s carefully thought out, researched and protected, right from the start. A name like “Google” isn’t only brilliant from a trademark perspective, but some estimates put its value at $44 Billion USD. That’s not only an enormous sum, but a significant chunk of the firm’s overall value. Particularly if you’re growing your brand online, yours could be incredibly valuable too, and now is the time to select and protect it properly.
The role of your business name, logo or slogans, is ultimately to distinguish yourself from the competition. At the most basic level, when you’re starting a business, you need to register the name you’re going to operate under, and it can’t be the same as, or very similar to, another registered business name. Trademarks law goes beyond just business name registration.
Your business name, or from a trademarks law perspective, any word, design, or other sign that you use to distinguish your business from that of others, can be a trademark. When you develop trademark rights through use or registration, you can then stop others operating in the same market (selling similar goods and services) from using a name, logo or other sign that’s confusingly similar with yours. You do that by suing for infringement if your trademark is registered, and for “passing off” (as in passing off their goods as yours) if you’re relying on common law rights. Hopefully a cease and desist letter will do the job though, particularly if you’re relying on the clout of a registered trademark.
Consumer confusion is considered from the perspective of the ordinary casual consumer somewhat in a hurry (yes, that’s actually the test from the case-law). The question is whether that consumer would be so confused to think the goods from different sources are actually from the same one, given how similar the marks are.
Trademark rights at Common Law and through registration:
With the foundation of trademarks law being distinctiveness (distinguishing your goods or services from others’), and the purpose of promoting efficiency and fair competition in the marketplace, it makes sense that the common law has recognized trademark rights. If consumers in a certain geographic area have come to recognize your trademark in association with the goods and services you sell, then you have the right to stop others from passing off their goods or services as yours by selling them under a confusingly similar name or logo.
However, common law rights are just local to where you can establish that consumers recognize your brand. When it comes down to it, you need to prove this in court, which can be very expensive.
It’s usually worth the extra investment upfront to register your trademark nationally with the Canadian Intellectual Property Office (and in other countries you’re selling in). This is particularly true when you’re doing business online as there aren’t such natural geographic limits. Growing online, you’ll hopefully build a customer base across the country, and even around the world. Registering in advance in each country as you grow can help avoid expensive conflicts later.
Before filing for registration of a trademark, it’s usually a good idea to conduct a search of what’s already registered and in the market operating under similar names or logos. This is to check for possible consumer confusion. We do this as part of our trademark registration process to reduce the likelihood of an application being rejected by the trademarks office, or opposed by others with pre-existing rights to a similar name or logo.
What can (and can’t) be a trademark?
You can trademark any “sign” used to distinguish your goods or services in the market from those of others. “Sign” is now the term used in the Trademarks Act, rather than “mark”, as it was until 2019. What constitutes a sign, is broadly defined to include not just words and designs but a colour, a 3-D shape (think of the classic Coca Cola bottle or the distinctively shaped Toblerone bar), a hologram, a moving image, a mode of packaging goods, a sound (think of MGM’s lion roar), a scent, a taste, a texture and the positioning of a sign.
In choosing a strong name or logo to build your valuable goodwill around, it’s often more important to consider what doesn’t make a strong or distinctive trademark, and what can’t be registered as one. The Trademarks Act prohibits from registration any trademark that’s primarily merely someone’s name, or that’s clearly descriptive or misdescriptive of the character or quality of the goods or services you’re selling, or where they’re from, or the name in any language for those goods or services. I note these prohibitions in particular because it’s common for people to name their businesses after their own names, or the goods and services they’re selling, or their geographic location. These all handicap your ability to build a distinctive trademark and register it.
This prohibition makes sense when you consider that the granting of a trademark gives you the exclusive right to use that mark. If you’re a Barbara who has named your bakery business Barb’s Bakery, then it isn’t right for you to stop another Barbara from opening a bakery under the same descriptive name.
However, all isn’t lost if you do have such a descriptive business name. You can still develop rights at common law if you can show that people have come to recognize such a descriptive or otherwise unregistrable name as distinctively yours. We can also often help register such potentially unregistrable words if they’re part of a more unique and distinctive logo design.
Regardless of the distinctiveness of your business name, you may want to consider developing some distinctive design, logo or slogan to strengthen your branding. You might also want to develop distinctive brands for each of your individual products or services. A great example is the brewery that develops and protects distinctive trademarks for each of its brews.
In trademarks law we talk about marks that are inherently distinctive. If you can come up with one of these right from the beginning, your brand is off to a strong start.
Marks that are inherently distinctive aren’t any of the things listed above as not registrable. You can have descriptive elements in your business name, but you should try to come up with a really distinctive element as well.
The strongest trademarks are often coined words like Google, or a word that brings the right associations to your brand while not describing your business in any way. “Nike” is a great example of such a brand name. Apparently, in Greek mythology Nike was the Winged Goddess of Victory. They didn’t just leave it at the name either; their entire brand is built around this symbolism. Nike traditionally hasn’t just focussed on the technical aspects of their products in their marketing, but on top athletes and high performance sport. Like the name, their messaging is all about victory.
When it comes to logos and designs used as trademarks, Nike’s swoosh is another great example. It’s important again in selecting the visual elements of your brand that you consider relevant symbolism. Think of the elegant simplicity of Apple’s logo and the elegance of their devices. Think of Starbucks’ smiling green and white mermaid, combined with the comfortable look and feel of their establishments and the associations they want customers to have with their product. The feeling consumers associate with a brand are usually subconscious, but should be top-of-mind for the logo designer.
Another thing to keep in mind when you’re designing distinctive logos is that copyright likely applies to the design upon creation. This becomes important when you’re hiring someone to do the design work for you. The designer would be the author under copyright law so you need to make sure you have appropriate agreements in place to fully assign ownership to you, and have them waive their moral rights. You also need to make sure they haven’t copied another design to the extent that they’re infringing someone else’s copyright, as this could become your problem. The line between inspiration and plagiarism isn’t always clear.
How can we help?
It’s never too early to engage us in your branding strategy. We can help right from the start, pointing you in the right direction as you develop distinctive names or logos of your own. We can also help make sure you have the rights you need if you’re engaging third parties to develop your logo. In both cases, you’ll want to make sure you aren’t infringing others’ copyright or trademarks in the process. If you have a short-list of proposed business or brand names, we can advise on which are strong trademarks, and most likely registrable with the Canadian Intellectual Property Office. For the trademark application itself, we’ll help prepare it and facilitate the filing through a Canadian or US trademark agent.
If someone else believes you’re infringing their trademark rights (you might have received a cease and desist letter), then we can assess the validity of their claim and respond to it. We can also help you enforce your trademark rights if you believe someone else is ripping off your valuable goodwill.
In short, we can help make sure your brand and its valuable goodwill have a strong foundation to grow on.
The information provided in this overview is general in nature and not intended to provide specific guidance or advice as each situation is different. Don’t hesitate to reach out to our Intellectual lawyers for help in any area of intellectual property or technology law, whether it’s trademarks, copyright, patents, trade-secrets, licensing, or consumer protection and digital privacy law.