Trademarks represent your business identity. It’s your badge of origin.
Whether it’s your text, your logo, a symbol, or design (or any combination of signs) used to identify your business as the source of certain goods or services, your trademark is your brand. It becomes what people remember.
A trademark doesn’t just distinguish your business from its competitors, it also prevents them using your identity. This is why choosing the name or logo for your business is so important.
Understanding what makes a strong trademark versus a weak one will make the whole process of choosing and registering a trademark a lot less challenging (and a lot less costly down the line).
Here’s how to pick a great mark and stand out from your competitors:
1. Recognize the opportunity to create brand value
A great trademark creates brand recognition. This happens when your customers begin to associate your trademark with the quality and authenticity of the products and services only you provide. They see your company as the source of these products and services (not your competitors). The strength of this trademark and how your customers begin to recognize and associate with it becomes valuable property.
But developing a brand requires careful thought and insight. Don’t stint on the legwork. Take time to brainstorm unique trademarks that your consumer will remember. Trademarks that are unique enjoy wider protection under the Canadian Trademarks Act and common law as it is different from all the others (and not likely to cause consumer confusion!).
A unique trademark will allow your business to stand out in the marketplace.
2. Choose the strongest trademark you can
Trademarks fall on a sliding scale from very strong (fanciful, arbitrary and suggestive) to very weak (descriptive or generic). By outlining the differences between these categories, we’ve made it easy for you to develop a trademark that falls on the stronger side of the scale.
Fanciful trademarks are completely made up. As they’ve never existed before, they’re considered inherently unique and distinctive. Often, there is no underlying meaning or logic behind a fanciful trademark. Sometimes, they are just combinations of words or portions of other words.
Some examples include KODAK for film, GOOGLE for online services, XEROX for copiers and CLOROX for bleach. You would never have known these names before they were created and used by their respective brand owners (and marketed so effectively that they now achieve instant brand recognition).
Fanciful trademarks usually get the strongest form of protection and are often the easiest to register.
The downside is that they are more difficult to come up with and may require extensive marketing before they catch on. For example, a consumer might not immediately understand what the associated product or service is or whether they need it.
So, a fanciful trademark will usually take more time, energy, and resources to market before you get brand and product recognition. The upside is that when you eventually do build up brand recognition in the market for your product or service, you’ve acquired goodwill and reputation in a strong trademark that could stand the test of time.
The arbitrary trademark is the second strongest type of trademark. Arbitrary trademarks are composed of words that have a commonly understood meaning. The twist to these trademarks is that these words are used in a way not logically connected to the product or service being offered.
A powerful example of an arbitrary trademark is APPLE computers. The word “apple” exists to describe the fruit, but it has no logical connection to computers. However, it is widely recognized in the market and has a loyal following of consumers who love and identify with the brand. Other examples include CAMEL for cigarettes and AMAZON for retail services.
Because arbitrary trademarks are composed of words that consumers associate with other things (due to their dictionary meaning), some level of consumer education and marketing may be needed to build the link between the brand and the products or services offered. But, like fanciful trademarks, they usually receive extensive trademark protection and allow strong source identification.
Of the three types of strong trademarks, suggestive marks cruise at third. These trademarks usually hint at the products or services offered, but don’t describe them. They suggest characteristics or traits of the goods or services without specifying them outright.
Examples of suggestive trademarks include AIRBUS for airplanes, TIDE for laundry detergent and NETFLIX for online streaming. Some brand owners are drawn to suggestive trademarks because this type of trademark requires less consumer education than fanciful or arbitrary trademarks. They usually possess inherent sales appeal and, when marketed well, tend to stick.
One disadvantage to a suggestive trademark is that they get less extensive trademark protection than fanciful or arbitrary trademarks. This is because another trader might be using the same or a similar trademark in a manner that suggests the same or similar goods. This can be very confusing for consumers (and costly litigation may be required to establish trademark rights).
3. Avoid the weaker trademarks
On the weaker end of the scale are generic marks and descriptive trademarks.
Descriptive trademarks are usually composed of a word or words that describe the product or services they represent. These trademarks immediately convey something about a quality, feature, function or characteristic of the goods or services offered by a business (and are not distinctive). Examples of descriptive trademarks include COLD AND CREAMY for ice-cream, FISH-FRI (when the mark was first introduced) for batter mix, TRIM for fingernail clippers and PARK N’ FLY (when the mark was first introduced) for airport parking services.
Descriptive trademarks are very difficult (if not virtually impossible) to register. They receive very little protection at all under trademark law and don’t do much as an identifier of source in the marketplace. It’s worth noting that although a trademark may be inherently descriptive, it may (over time, and through extensive use) acquire some distinctiveness and start functioning as a distinctive trademark. This happens when the original or primary meaning of the descriptive words used to describe the product or service become exclusively associated with a particular business.
Examples of trademarks that have acquired distinctiveness include SHARP for televisions and WINDOWS for windowing software. In many cases, the courts have ruled that for trademarks made up entirely of non-distinctive words, small tweaks and differences (such as unique suffixes) may be considered enough to distinguish them from other trademarks. It can, however, be extremely difficult to stop competitors from using similar and potentially confusing trademarks for competing goods and services.
Rather avoid legal pitfalls and choose a stronger trademark from the outset.
A term or word is generic if the public uses that term to generally refer to a product or service. They are often common names (or nouns) of the product or service. Generic terms are, by nature, incapable of indicating a product’s source or origin.
Examples of generic terms would include SHREDDED WHEAT for breakfast cereal, LIGHT or LITE for beer, CLOCK for timepieces or LIGHT for lighting fixtures. These terms are never granted registration or protection under trademark law.
4. Think about the impact of your trademarks, long-term.
When developing a brand, it’s crucial to keep the stronger and weaker trademarks classifications in mind. The general rule of thumb to remember is that a trademark’s purpose is to identify the source or origin of a product or service; it’s not to identify the products or services themselves.
Your goal is to choose a fanciful, arbitrary, or even a suggestive trademark that is unique to you in the marketplace. For the strongest trademark rights, aim for a mark that is fanciful or arbitrary. If you are more concerned with the trademark’s ability to communicate information about your goods or services to the consumer, then a suggestive trademark can be a reasonable compromise. Steer clear from marks that are descriptive or generic.
From a cost perspective, there is often a bias towards descriptive trademarks. These describe a product or service, so consumers don’t need to be educated on what it is you’re selling (reducing the size of your marketing budget). However, it’s important to be aware that although you may save money and energy on the front-end, you may find even more significant costs on the back-end due to costly litigation or cease and desist letters.
Ultimately, you should consider this spectrum carefully before choosing your mark. The strength of a trademark is related to its identification in the market. The stronger it is, the easier it is to register and protect (and the more memorable and lasting it becomes).
If you’d like to ensure the trademark you select is legally enforceable, send me an email. I’m here to help.