Choosing a Mark

When choosing a trademark, you must determine whether it is (a) available, e.g., whether it would infringe on an existing trademark, and (b) registrable, e.g., compliant with the requirements of the Trade-marks Act and Regulations.  You should also determine whether your trademark is protectable e.g., whether you can prevent others from using the same or a confusingly similar trademark.  In general, the more a trademark describes a product, service or characteristics of the product or service, the less legally protectable it will be.  The strength of a trademark – the extent to which you will be able to prevent others from using the same of similar trademark – is determined by the following (listed from strongest to weakest):

Coined (fanciful) or Arbitrary Trademarks:  These are the strongest trademarks and they are immediately registrable.  Coined trademarks have no dictionary meaning, e.g., EXXON® or KODAK®; they are made-up terms and as such have strong or ‘inherent’ distinctiveness.  Non-word marks, such as letters and numbers, may also be classified as fanciful, but acronyms for descriptive terms may still be deemed descriptive (see below).  Arbitrary trademarks are words in existence that are used out of context in a non-suggestive and non-descriptive sense, e.g., ARM & HAMMER® baking soda and APPLE® computers.

Suggestive Trademarks:  These are the next strongest category of trademarks and may also be immediately registrable.  Suggestive marks hint the positive qualities of a product or service, but do not describe them.  Examples include WHIRLPOOL® for washing machines, COPPERTONE® for suntan oil, and SEVENTEEN® for teenage girl’s magazine.

Descriptive Trademarks:  Generally, these are weak marks, and are not immediately registrable.  These marks describe a quality or characteristic of the relevant wares or services.  They are not immediately registrable and hence are much less protectable than coined, arbitrary or suggestive marks.  Descriptive marks may become registrable through continuous, extensive use over a period of time if consumers come to exclusively associate the mark with only one source. 

Generic Trademarks:  These are the weakest marks and are never registrable.  A generic mark is the common descriptor for a product, e.g. KLEENEX® for facial tissue.  Such a mark cannot function as a trademark. 

Unfortunately, the lines drawn between suggestive, descriptive and generic marks are not definitive and clear.  Consequently, we can analyze the strength and registrability of a prospective mark.

Consideration also should be given to the literal, slang or transliteration meaning of a mark in other languages.  Sometimes a coined word in English has an offensive or undesirable meaning or connotation in another country.  In the Canadian Trademarks Office, foreign words are translated into English to determine registrability, so a foreign word that, when translated, is descriptive or confusingly similar to another mark will suffer the same obstacles as its English equivalent.