How to Trademark Your Brand | An Introduction
We’ve put together this introductory guide to Trademarking that covers everything you need to know about trademarking your brand, including what happens when there’s a conflict.
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The Basics of Trademarking Your Business Name
Trademarking isn’t a mandatory requirement for businesses. Common law protects the logos and names that have been used by businesses for an extended period of time. However, trademarking provides additional coverage and helps you protect your brand identity. It can also prevent costly, drawn out disputes down the road. This prevents others from tarnishing your company image or mimicking your products and services. Businesses that trademark their names and logos are also given preference when mark ownership comes into question. Your name and your mark are core elements of your brand, ones that can be essential to building brand awareness, equity, and loyalty. Trademarking can give you peace of mind for these critical brand elements.
There are many agents that can help you with filing the paperwork and conducting the due diligence you need to register your name and mark. You should, however, understand the process overall, especially at the earlier stages of brand workshopping. If you’re just starting your business or considering a name change and rebrand, having a grasp on trademarking guidelines can inform your creative decisions and prevent future heartbreak. The earlier you know, the better prepared you can be, and the higher chance you’ll find a name that gives you both that Lion King feeling and complies with trademarking processes and guidelines!
Trademarking Definitions + Clarifications
Before we go in depth about trademarking, we need to make sure we’re all speaking the same language. Trademarking has legal implications as well, so you’ll want to be sure that you know which parts of your brand you are working with at any given moment. Generally, there are two parts that most people want to trademark. (Beyond this, you can also trademark sounds, tastes, and even textures depending on your business and its offerings.)
It may seem like your name is simply what you call your business, but there’s a little bit more to it. Generally speaking, businesses have a business name, which is the name under which they have legally incorporated or registered their business. They can also have a trade name, also known as a doing-business-as (DBA) or operating-as name. In this case, a business may be called one thing, but publicly present itself as another.
Businesses and trade names do not ensure proprietary rights. This means that these names aren’t necessarily 100% unique, although they do abide by certain rules and regulations. For example, in Canada, a name that implies a connection to the crown or the royal family is not allowed. Additionally, in some provinces, like British Columbia, name approval may be required. In these provinces, names that are too similar to well known brands or could be confused for another business in the same sector may be rejected.
This is where trademarking can come in handy. When a name is trademarked, it is registered in a federal database. The process is exhaustive and checks to make sure that a name isn’t too similar or infringes upon one already trademarked. Trademarks can also be applied to product and service names (think McDonalds and McFlurry) which allows you even greater control and protection around the core elements of your business. It is important to remember, however, you can only trademark things that identify goods and services.
The other half of a brand name is the logo. Also referred to as a mark, this is the visual element of your brand representation. This can include fonts, styles, colours, and shapes, and prevents others from using a replication of these designs. When undergoing the trademarking process, it’s best to trademark both a logo and a name at the same time.
What About Copyright?
Although people often use trademark and copyright interchangeably, they actually refer to two different types of work. As we’ve seen above, a trademark protects a name and/or mark used by a business. Copyright protects the creative work of an individual or a business. This includes artwork, music, performances, and even software! So while a trademark is how you refer to your business, a copyright is the work you produce as a result.
With trademarking, there are very specific rules with what you can and cannot register. Knowing these can make sure you avoid any missteps or surprises through the branding and trademarking processes.
Did you know?
The “™” mark (MC in French) is used for identifiers that are either in the application process for trademark registration, or have unregistered trademarks. The “®️” symbol (MD in French) is used for identifiers that have been officially registered with an intellectual property office. Although there aren’t any official rules nor are companies penalized for using one or the other, companies CANNOT use these marks if they don’t have a trademark, registered or unregistered. Some businesses may opt to use the “™” symbol for all their products and services if they are registered in one jurisdiction (e.g. Canada) and not another (e.g. United States).
Trademark Rules: A General Overview
Trademark rules and guidelines govern what is and isn’t acceptable when registering for a trademark. The specific rules vary by jurisdiction, but in general, guidelines aim to prevent consumer confusion and protect the corporate image of a trademarked brand. Let’s review some of the most important rules below.=
- You cannot trademark just a name or a surname. For example, a business couldn’t trademark John. Or even John Doe. There are some exceptions made when a brand becomes so well known that the name itself takes on a different meaning. Take for example Jameson Whiskey in which the name “Jameson” is the surname of the man who distilled the whiskey. In this case, Jameson has become so well known and separate from John Jameson that it is allowed to have a trademark.
- You cannot register marks that are descriptive or part of the common domain. This rule might be described differently in different regions, however, this is one of the key factors that trademark offices look at when deciding whether or not to approach an application. This rule prevents commonly used words and phrases from being trademarked. For example, an obvious descriptor for your product or service may be rejected as a trademarked name. “Sweet ice cream” wouldn’t be accepted because sweetness is a standard quality of ice cream, regardless of brand or company. Additionally, generic names like “Word” for a “Word Processor” are too ubiquitous to be trademarked. This does depend on context though, which is why “Apple” can be trademarked for a computer company. It’s an arbitrary name in an industry where apples aren’t really relevant. (In case you think there’s a loophole, this applies to other languages too. You can’t trademark translations of generic words either.)
- You cannot register false or deceptive marks. For example, a “Genuine Leather Wallets” mark would be rejected if they’re made from synthetic materials. This also applies to locations. If your shoes don’t come from Italy, you can’t trademark them as Italian.
- You cannot trademark anything profane or obscene. I think this one is pretty self-explanatory.
- You cannot register anything that could be confused with existing places or institutions. Many rules prevent you from using names that could be misconstrued as having an association with an existing institution, particularly government institutions, as well as places. For example, I cannot trademark “Vancouver” nor can I trademark “The Crown”. I also can’t use the word “Engineers” or “University.” This also goes for flags, coats of arms, and several other prohibited marks. You can visit the Canadian Intellectual Property Office website or the United States Patent and Trademark Office for a comprehensive list.
- You cannot trademark anything similar to pending or existing trademarks. One of the advantages of trademarking a brand is that others cannot use it. Therefore, already trademarked logos and names or ones that are in the application process cannot be registered. Furthermore, any marks or names that are exceptionally similar may be rejected as well. In general, when examining brand confusion, authorities will look at:
- distinctive character of each name and each of their elements
- visual and phonetic similarity
- similarity in the ideas they evoke manner in which the names are used
- notoriety of each name
- actual or potential competition between the corporations
- nature and quantity of goods and services offered
- territory and number of persons served by both corporations
For example, a shoe company in Ontario and a food company in BC with similar sounding names may be allowed because there is a low chance that customers will be confused.
So what can you do if the name you want is too similar or has already been trademarked?
What’s In a Name?
As we discussed earlier, there are many different parts to a brand name. There’s a legal name, a trade name, and a trademark. In general, business names have three parts:
- A distinctive element
- A descriptive element
- A corporate element
A distinctive element is usually the one that you choose during your naming brainstorms. A descriptive element, like its name suggests, is an additional word or phrase that helps to describe your business. Finally, the corporate element is a legal element and identifies the type of registered business (e.g. INC, LLC, etc…)
For example, when Apple was first started, it was called Apple Computers Inc. You can see the three elements here:
- Apple – Distinctive Element
- Computers – Descriptive Element
- Inc. – Corporate Element
In essence, this gives you two “levers” to play with, allowing you to retain your favourite distinctive element while still allowing you to apply for trademarks and register a business name. Additionally, you can often use a trade name or DBA to drop off elements of a full name to make it more appealing from a brand perspective. Trade names do still follow certain rules, but there’s more flexibility allowing you to represent your brand how you want to.
This means that even if the name you want is trademarked, as long as it isn’t breaking any of the above rules, you can find creative ways to use it for your business. This is especially true if your desired name is trademarked for a business that doesn’t directly compete with your and operates in a different industry.
Putting it All Together
Given all that’s involved in the trademarking process, there are a few things that you should keep in mind as you go through the naming and logo design process to make your life easier down the road.
- Keep options. While it’s important to be as creative and open when brainstorming names, you should also keep a few options in your back pocket as you work through exercises. This way, you can evaluate the trademark-ability of each option and use that as a factor in your decision.
- Do your due diligence. Both Canada and the US have federal trademark libraries where you can search for existing trademarks. This is always a good starting point, although it is imperative to seek the assistance of a trademark lawyer or agent who can conduct a more in depth search. As experts in their field, they might even provide suggestions on how you can modify your name.
- Start early. With so many variables at play, the naming process can be a long one. Additionally, trademarking applications can take a long time to process, even several years.
- Consider the rest of your brand. There’s two ways of looking at this. First, remember that a name and a logo are essential parts of your brand, so be sure to take the time to pick the right one and ensure that it’s one that can last even as your business grows and changes.
At the same time, names and logos are just parts of your brand. So even if you don’t get your first choice, there are many solutions and other touchpoints through which you can communicate how awesome your business is.
Good luck and happy trademarking!
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