Is your brand too descriptive to be registered as a Trademark in Canada?

Registering a trademark can be an important part of protecting your business brand online.  

If you want to read more about how copyright protects your content online, you can refer to this article.

So if you are in the early days of creating your brand, there are a couple of things to be thinking about before you spend a ton of money and energy on marketing. 

The most obvious first step is to do a Canadian trademark search so that you know that there are no similar words or logos that are already registered for your category of goods or services.

But an often overlooked NEXT STEP is to think about whether the brand - being a product name, for instance, is too DESCRIPTIVE, to be registered (and therefore protected as a Trademark.

From the Trademark Guide of Canadian Intellectual Property Office (CIPO), these are some trademarks that can not be registered:

Trademarks that are generally unregistrable include the following:

1. Names and surnames;
2. Clearly descriptive marks;
3. Deceptively misdescriptive marks;
4. Place of origin;
5. Words in other languages;
6. Confusing with a registered or pending trademark; and 
7. Trademarks that are identical to, or likely to be mistaken for, prohibited marks.

For the purposes of this article, I am going to focus on #2 - clearly descriptive marks because this is a common error that many business owners, include me, have come up against.

In order to be clear in my marketing, I have given my products simple and descriptive names like "Website Legal Essentials" and "Canadian Online Legal Template Library".  See a problem?  These are definitely descriptive and therefore can NOT be registered as trademarks.

Good trademarks are UNIQUE.  The more creative your name is, the better your chances will be of avoiding conflict with other trademarks and the stronger your trademark will be.

But even the most creative among us, can have trouble coming up with unique names.  Here are some suggestions from Trademarkcanada.org:

1. An invented, made-up word (e.g. XEROX, KLEENEX, etc.) is the best type of trademark.
2. A word used fancifully is the next best. (For example, PHOENIX in association with automobile repair.) It is not completely made up, but nobody else is using it in the same way that you are.

I hope that this information will be helpful to you as you build your online brand and will keep you from making some common mistakes regarding trademark registration.

In the meantime, it's back to the drawing board for me in my hunt for a less descriptive brand.  I'll keep you up to date on that.