Intellectual property: why distinctive brands matter

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Brands are valuable intellectual property assets for a business. Strong brands set one’s products and/or services apart from those of others in the marketplace. Additionally, strong brands can cultivate customer trust, affinity, and loyalty. 

Protecting brands with registered trademark protection brings many advantages. For example, registration confers nationwide protection and provides public notice to deter competitors from adopting a similar brand. Without trademark registrations, a brand can be at risk of being used or abused by competitors or counterfeiters.

The challenge of choosing a new trademark can arise when you start a new business, rebrand your existing business, or launch a new line of goods or services. The basic rule when choosing a new trademark is that it should be distinctive and unique. In particular, a new trademark should be both (i) inherently distinctive, with respect to your business’s goods and services, and (ii) relatively distinctive, with respect to your business’s competitors. Failing to choose a distinctive trademark can result in problems from a legal perspective including not being able to register your trademark or use your trademark due to prior use by a third party. From a marketing perspective, a distinctive trademark would be expected to garner greater attention from consumers.

Inherent distinctiveness

A trademark’s inherent distinctiveness can fall along a spectrum ranging from coined marks to descriptive marks.

Coined marks have no meaning other than as trademarks. A coined mark could for example be an invented word or symbol. Quantas for airlines and Toblerone for chocolates are examples of coined marks. Coined marks are the most inherently distinctive and afforded the broadest trademark protection.

Arbitrary marks consist of dictionary words but have no relation to the business’s goods or services. Delta for airlines and 3 Musketeers for chocolates are examples of arbitrary marks. Arbitrary marks are inherently distinctive and afforded broad trademark protection as well.

Suggestive marks imply, but do not directly describe, some attribute or quality of the goods or services. WestJet for airlines and Coffee Crisp for chocolates are examples of suggestive marks. Suggestive marks are afforded somewhat narrower trademark protection compared to coined marks and arbitrary marks.

Descriptive marks are terms associated with the goods or services themselves or describe an attribute or quality of the goods or services. International Airlines for airlines or Milk Chocolate for chocolates would be examples of descriptive marks. Descriptive marks are generally granted little to no trademark protection. Descriptive marks should be avoided.

Relative distinctiveness

Once you have generated a candidate list of inherently distinctive trademarks, you should use an online search engine to conduct keyword searches of the candidate trademark, as well as keyword searches combining the candidate trademark and a description of the goods or services. If you discover a competitor using your candidate trademark or a trademark similar to your candidate trademark, then a different trademark should be selected.

If no competitor trademarks are discovered during the course of your online searches, a trademark lawyer should be hired to arrange for more in-depth trademark searches. Trademark searches typically include reviews of relevant trademark databases, corporate name registries, and other commercial directories to assess risks associated with using a particular trademark in view of prior user rights, if any.

Choosing a distinctive trademark may be challenging and can incur an initial investment of resources but it is usually well worth the effort. Your chances of running into a dispute with someone else will be lessened, and your ability to build and protect a valuable brand will be enhanced.

Although this article focuses on 2D marks, almost anything can function as a trademark. When it comes to branding and trademark strategies, do not confine your creativity to 2D marks, e.g. words marks and logos. Some non-traditional marks include a three-dimensional shape, a moving image, a scent, a taste, a texture, and the positioning of a sign in a distinguishing manner. So feel free to be creative in considering what could be a symbol representative of your brand.

For additional tips on protecting your trademark, please download a complimentary copy of the Trademark Primer from Oyen Wiggs Green and Mutala LLP.