Understand the Fundamentals

A trademark is any word, phrase, symbol, design, or any combination thereof, used to distinguish the products or services of one person or organization from those of another. The key word here is "distinguish". Trademarks come to represent not only actual products and services, but also the reputation of the producer. Trademark registration is the granting of an exclusive right to words, symbols and designs, or combinations of these, that distinguish your wares and/or services from those of all others. This right is not granted haphazardly. Applicants must pass some rigorous tests that can take up to two years to be completed.

Criteria - In order to quality for registration, your trademark must satisfy two criteria. First, it must be USED to distinguish your wares or services from those of others. Second, it must not be too similar to any mark that is already registered or pending. Difficulties may also arise if it is too similar to a trade name.

Correct Use of Mark

A critical and often misunderstood element that an owner of a trademark must possess in order to secure and maintain registration is his ability to clearly demonstrate that the mark, which is the subject of an application, is in fact used to distinguish his wares or services from all others. In order for a mark to be used to distinguish, the mark must be so prominently displayed on the products themselves that the ordinary consumer knows the product by its name and not the name of the manufacturer. The best way to demonstrate this principle is by way of example. Go to your fridge and take out any Kraft product. Now look at the label. Notice the word Kraft is prominently displayed in red. In smaller print near the bottom you should find the phrase "® Trademark of Kraft Foods Inc.". The consumer has just received public notice of the claim to ownership of this mark.

Trademarks and Business Goodwill is an excellent discussion of what trademarks are; what trademarks are not; why marks are important, and how to choose a "good" mark. Written by Thomas G. Field, Jr., a Professor at the Franklin Pierce Law Centre, it is an article that is updated regularly and well worth your time to read.

Bad trademarks

In general, a trademark will not be registered if the trademark is primarily your full name or surname, or that of another individual (e.g. John Doe or Jane Smith, Wong, Cohen, etc.). An exception to this is if you can prove that your wares or services have become known under the name such that the name now has a new meaning (secondary meaning). Exceptions include Campbell for soup, Kraft for cheese, Kellogg for cereal etc.

You may not register a word that clearly describes a feature or trait of the wares or services. For example, " sweet" for ice cream, "juicy" for apples, and "perfectly clean" for dry cleaner services could not become registered trademarks. All good apples could be described as "juicy" and all ice cream as " sweet". These are inherent characteristics of the wares. If you were allowed to register these words, no other apple sellers or ice cream vendors could use them to promote their goods. Again, if you can establish that "Sweet Ice Cream" has become so well known that people think of your product (and no one else's) when they hear the words, then you might be able to register the trademark. This would be a good time to pause and do another search.

A further restriction applies when the mark, although not clearly descriptive, is thought to be clearly misleading. For example, you could not register "sugar sweet" for candy sweetened with artificial sweetener, and "air express" for courier service that uses ground transportation. Ironically you could potentially register "sugar sweet" or "air express" as the name of a clothing line.

You may not register a word that clearly designates the place of origin of the wares or services, or that misleads the public into thinking that the wares come from a certain place if they do not. Examples such as Paris Fashions, Atlantic Cod, Toronto Courier Service, California Wines, or Danish Furniture could not be registered for those particular wares or services. Allowing you to use place names as part of a trademark would be to give you a monopoly on a geographical term and be unfair to others. However, you conceivably could register the words "North Pole" for bananas, since no one would expect bananas to come from there.

Words that constitute the name of the wares or service in another language such as "Gelato", Italian for ice cream; "Anorak," Inuktitut for parka; or "Wurst," German for sausage could not be registered. If you think your proposed mark has its origin in another language then you should do some searches to find out the meaning of the word in the foreign language.

Words in common every day use or phrases specific to an industry are the property of everyone within that industry. No one person has the right to monopolize them. Almost every restaurant sells "hamburgers" and every computer programmer writes "software". No one can own these words as a trademark for these wares. In addition, laudatory terms such as "miracle", "best" and "ultimate" either clearly describe, (it is the best motor oil) or mis-describe (it is not the best motor oil) the product. Therefore these words can not be owned by you.

Remember! A trademark is always used as an adjective to describe a product or service. It is never noun.

Good Trademarks

The best trademark is one that is coined or invented. The second best is one that has multiple meanings. When you consider that your reputation is attached to the products you offer, ask yourself "Do I want to be known by this name"? If you answer yes then others might also. Here is a small sample of the articles we have written. We trust they will resolve some of the remaining issues. If not then we invite you to Email Us.

Preliminary Trademark Searching

A "Common Law" search is a review of the "use" of a term by existing businesses to determine if the term has any special meaning or use within any industry and how others use the term. If a word or term has such a special meaning then every member of the industry has the right to use the term. Start your searching by eliminating obvious conflicts.

Trademarks databases

• Exact hit searches of Canadian Trade Marks database.
• Exact hit searches of American Trademarks database. (click on "Search Trademarks")

Now start your "Common Law" search

• The first thing to search is current meanings. Start with a visit to Webster's Revised dictionary and Roget's Thesaurus to see if your proposed trademark has a listed or secondary meaning. While at these locations select one of the translation services to see if your term has a meaning in a foreign language. Save these searches, you will need them later. If you find an exact hit, its time to consider a new word trademark or the addition of a design component.
• Knowing a trademark has a dictionary meaning or secondary meaning should cause you to search Encyclopedia's to see how these meanings have been used. If the trademark has been used in association with your products or services then once again you need to re-think the proposed trademark.
• News groups offer extensive use of ordinary commercial terms. Google provides a searchable database of newsgroups. Visit the link and search your word or term to read how it is used by others. If the trademark has been used in association with your products or services then once again you need to re-think the proposed trademark.

If you pass these tests then see if anyone is using your name in business. Yahoo is our choice for these searches. Here are five excellent lists to start your searches. As you click on each of these links remember that you can narrow the search by selecting your specific fields of interest.

• Product and Services directories; Find out just how many others have listed the products and services you want to associate with your new trademark.
• Company Directories; Search to see if any businesses are already using your trademark as part of their business name. If they are then do some further searching of the business to determine exactly what products or services they offer.
• Business type directories; If your proposed trademark is already a "heading" within one of these listings then it is not a term you can own.
• The next to last step on your initial set of free searches is the one that takes the longest. Here is an extensive list of Phone Directories. You would be wise to search a number of the Phone Company directories, as well as your industry specific directories, to see if someone has already secured a listing for a business name similar to yours. Even if they have not, this is still a worthwhile search as you can secure a free listing for your business with most of these directories. This is an excellent way to introduce yourself to the Internet.
• You are now ready to search to see if your trademark is a candidate for registration, or a conflict, as a Domain Name. Use the search tool provided to see if any conflicts exist. Remember to search alternative spellings, plurals, and add dashes.

This is by no means the full extent of the searching that needs to be completed. As you review the fundamentals that follow you may have questions that can be resolved by additional searching. We have tried to make suggestions. However, the Internet is changing so rapidly we are having difficulty keeping abreast of the best places to send you.

Once you have completed the above searches without finding a conflict, you are ready for a trademark search. In the interim, take the time to read the following;

• Good Business Names
  The starting point for any business is the selecting of a good name. This article should assist you in this regard.
• Goodwill - Your most important business asset.
  Here is an explanation of how you can protect your most valuable intellectual property asset without incurring the cost of registration.
• Good Candidates for trademark protection
  We are often asked, "Should I trademark this?" While in response to this question we present occasions when you should register trademarks.
• Applying for A Trade Mark
  If you plan on applying for a trademark then you need to understand the application process and the reasons why it might take up to one year for your mark to be registered.
• Nine advantages to Trademark Registration
  Here are nine excellent reasons why you should consider registration of your trademarks.
• Questions about trademarks
  Typical questions about trademarks collected from three years of operating this web site.
• Proper use of a trademark in Business
  Once you start your business it is critical to your success that you protect your unregistered trademarks. Here is how you achieve protection without the expense associated with registration.
• The Do's and Don'ts of Trademark use.
  Knowing how to correctly use your trademarks is the key in insuring they remain registered.
• Proper Use of your Domain Name
  If you operate your own web site then you should take the time to read how to use your domain name as if it were a trademark.
• Your options in a trademark dispute
  If you find that you have infringed on the rights of others or that some one has infringed on your rights then you might find this article of interest.
• The Astute Practitioner
  Most practitioners think of intellectual property as being comprised of four main areas being trade-marks, patents, copyrights and industrial design. These properties can all be protected through registration. There is a fifth area that must now be considered, that being "Goodwill". Goodwill can only be protected by the astute practitioner.