Trademark selection and registrability analysis

Yates IP can assist with narrowing down a short list of potential trademarks to help you select a trademark that will be registrable and protectable in Canada and in other markets where you wish to do business.

Once a proposed trademark has been selected, it is advisable to conduct clearance searches prior to filing an application for registration.

Please contact us to get started with trademark selection and registrability analysis.

Further guidelines for selecting a trademark:

There are no hard-and-fast rules of what may be a successful trademark, but there are some concepts that you should keep in mind to guide you when selecting a proposed trademark so that it will meet the legal requirements for registration.

For ease of registration and to facilitate enforcement of rights, the trademark must be able to distinguish your products and services from the products and services of others.

A trademark that is inherently distinctive will also be memorable and easily recognized by consumers.  With this in mind, a trademark consisting of word elements should follow these basic criteria:

  • it should be easy to read, spell, pronounce and remember;
  • it should have no adverse meaning in slang or undesirable connotations;
  • it should be suitable for export markets with no adverse meaning in foreign languages,especially if you intend to export products and services to other countries;
  • it should not clearly describe any feature, character or quality of the products or services;
  • it should not create confusion as to the nature of the products or service;
  • it should be adaptable to all advertising media;

Ideally the proposed trademark will fall under one of the following categories:

Coined terms: These are invented words without any real meaning in any language (e.g. Kodak or Exxon). Coined terms have the advantage of being easy to protect as they are more likely to be considered inherently distinctive. However, they may be more difficult to for consumers to remember, which may require greater efforts in advertising the products and services.

Arbitrary terms: These are trademarks that consist of words that have a real meaning in a given language but not in relation to the product itself or to any of its qualities (e.g. Apple for a Computer). As is the case with coined words, while the level and ease of protection is generally high, there is no direct association between the trademark and the product and it may require greater marketing power to create such an association in the mind of the consumer.

Suggestive terms: trademarks consisting of suggestive terms will hint at one or some of the attributes of the product. The appeal of suggestive marks is that they act as a form of advertising and may create a direct association in the mind of consumers between the trademark, certain desired qualities and the product. However, there is a risk, that some jurisdictions may consider a suggestive mark too descriptive or not sufficiently distinctive to meet the criteria for trademark protection.