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Intellectual Property

Choosing a Trade-Mark (Part 1)

By October 5, 2011No Comments

Let’s talk about what makes a good trade-mark.

An instantly descriptive trade-mark like GREENLAWNZ (for a lawn care business) might sound appealing at first.  It will catch the consumer’s attention and they should easily be able to identify the wares or services that you are offering.  A van driving down the street with a GREENLAWNZ sign on it will attract attention and potentially stir up business in the neighbourhood due to the recognizable advertising.  One wouldn’t have to include below the trade-mark “Lawn Care Services” for someone to understand what your business was doing.  Contrast this with say, a logo of a white apple with a single leaf and a round bite out of one side.  No one would instantly recognize that as being associated with computers.  Therefore there would be additional marketing required to promote that brand and build consumer awareness.  However, with a readily identifiable trade-mark, consider two aspects of trade-mark law:

First, purely descriptive trade-marks will not be allowed to be registered by the Trade-Marks Office.  The Examiner will not allow a single business to have a monopoly on words commonly used in a trade or business.  The marks above will be rejected on the basis that they are descriptive of what is being offered.  While you may still be able to operate your business without a registered trade-mark, you open yourself up to the possibility that another business can force you to stop using that trade-mark, and this risk expands as your business expands.

Second, it is possible to maintain a descriptive element, but get around this objection by coming up with terms which are “slightly” descriptive but “slightly” suggestive…such as GREENVIEW for lawn care (suggesting that you will have a green view out your window if your lawn is cared for by this business).  However, suggestive trade-marks which pass through the Trade-Marks Office, will often not afford the business a high scope of protection.  Imagine how many lawn care businesses use the word “green” in their names.  Despite registration of your trade-mark, you may not be able to effectively defend against other businesses which operate with similar trade-marks, as elements of that trade-mark are already widely used, like the word green.  This is called market dilution and can severely limit the value of your trade-mark.

No one is saying you can’t use a descriptive trade-mark, and in fact most businesses will use some sort of descriptive element and some suggestive element.  However be aware of the risk of your trade-mark not being registrable, and the risk that you may not be able to defend it well.

Next post I’ll discuss some other options for choosing a trade-mark.  In the meantime, if you have questions contact me or look at my information page.

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