How do I choose a good trademark?

A good trademark is distinctive. Distinctiveness means that the trademark enables consumers to distinguish your products or services from those of others. Trademarks with greater distinctiveness benefit from a broader scope of protection. Conversely, trademarks with low distinctiveness have a narrower scope of protection.

Choosing a distinctive trademark means you should choose a unique trademark. Avoid choosing a trademark that is identical or confusingly similar to a trademark already being used by a competitor. Trademarks are confusingly similar when, having regard to factors such as the similarity of the trademarks and the similarity of the products or services associated with the trademarks, a consumer would be likely to be confused as to the source of the products or services. If your trademark is identical or confusingly similar to an existing trademark owned by another party, you may not be able to obtain a valid registration for your trademark and you can be prevented from using your trademark. Conducting a trademark search can reduce the risk of choosing a potentially confusing trademark.

Choosing a distinctive trademark also means that you should avoid choosing a trademark that is descriptive of your products and services. For example, THE BURRITO SHOP would not be a distinctive trademark for a Mexican restaurant since it would be descriptive of the services offered by the business. To ensure commonly used words in a particular field remain freely available for all marketplace participants, clearly descriptive trademarks are typically not registrable.

Examples of non-descriptive trademarks include coined words, words unrelated to the associated products or services, and words that are merely suggestive of the associated products or services. The EXXON trademark (for petroleum products) is an example of a coined word. The APPLE trademark (for computers) is an example of a word unrelated to the associated products. The GREYHOUND trademark (for bus transportation) is an example of a suggestive trademark.

Trademarks that fall within the scope of the following limitations also may not be registrable and should therefore generally be avoided:

• Names or surnames. Persons’ full names or surnames are not normally registrable as trademarks, unless there has been extensive use of the name in question as a trademark. For example, FORD, despite being a surname, is a registered trademark for motor vehicles.
• Place names. Geographic place names may not be registrable. For example, PARIS is likely not a good trademark choice for perfumes.
• Generic terms. Words which are the name, in any language, of any of the products or services associated with the trademark are not registrable. For example, BROGUE is not a good trademark choice for shoes because a brogue is a type of footwear.
• Prohibited trademarks. Certain trademarks, such as royal and government arms and crests, government flags, official and university marks, and marks of certain organizations (e.g. the RCMP and Red Cross), are specifically prohibited and not registrable as trademarks.

The foregoing list is not exhaustive but is intended to provide examples only.