© 2019 by JZC Intellectual Property Law

Before registering a trademark: What you should know

The advantages of registering a trademark are outlined in another article. However, before registering a trademark, there are a number of things to keep in mind.

  • You cannot register a trademark that is confusing with someone else’s.

Before filing a trademark application (and preferably before adopting a trademark), it is always recommended to conduct a comprehensive search for not only trademarks that are identical, but are also similar to or confusing with the trademark that you are seeking to register. By similar, this means trademarks that look or sound alike, and or suggest similar ideas. There are several factors in deciding whether two marks are confusing with each other, and if you want to be certain, it would be best to consult a trademark professional to conduct this initial clearance search.

If a clearance search is not conducted, a competitor may oppose your trademark application or worse yet, file a lawsuit against you for trademark infringement. You will also have difficulty obtaining a trademark due to objections from the trademark office as a result of the potential confusion.

  • You cannot register a trademark that is primarily a name.

This limitation exists to prevent a company from monopolizing the use of a name for business. Note that you can still operate a business under your own name, but you simply cannot monopolize it through a trademark registration to prevent others (who may also have the same name) from using it.

For similar reasons, you may also not trademark someone else’s name (particularly the name of prominent individuals), or the name of someone who has died within the last 30 years.

However, if you can show that the trademark that you are seeking to register has acquired a secondary meaning, beyond being merely primarily a name, then the trademark may be registrable. Also, adding elements like “& Sons” or “Brothers”, “Inc” and “Co” to a name will often be sufficient to overcome this limitation as it becomes no longer primarily merely a name.

  • You cannot adopt a trademark that is clearly descriptive or deceptively misdescriptive of your goods or services.

To prevent a monopoly on general descriptions, trademarks cannot be clearly descriptive of the goods or services. For example, the words “Quality Cleaning” by themselves cannot be registered as a trademark for cleaning services, since consumers, upon seeing the trademark, would not be able to determine who the services are offered by, and would prevent other businesses from using the words quality cleaning to describe their services. For similar reasons, you may also not register a trademark for the name of a place where the goods are made (e.g., FLORIDA for oranges), since it would also have the effect of monopolizing a description.

To prevent consumer confusion, trademarks that are “deceptively misdescriptive” also cannot be registered. This means words which suggest something that the goods or services are actually not. For example, using a hypothetical trademark “Made in China” for goods that are actually made in Canada may be considered to be deceptively misdescriptive. On the other hand, a trademark such as “PURE GOLD” would not be considered deceptively misdescriptive for use with, for example, fruits since no one would be led to believe that they were buying pure gold when seeing the fruits.

  • You cannot register a trademark that is the name of the goods or services in any language.

Similar to clearly descriptive trademarks, if the trademark is the name of the goods or services in another language, it may not be registrable for the same reason that someone cannot be given a monopoly over words that are common to the trade or would not allow consumers to identify the source of the goods or services.

These are some of the key limitations when registering trademarks, and should be considered when adopting a new brand, even if a registration is currently not being pursued – you want a mark that can eventually be protected as you build reputation with it.

There are a number of other limitations when it comes to registering trademarks, and it is recommended to consult a trademark professional to assist you through the process, to avoid common issues in filing trademark applications and help preserve your rights.

 

If you need more information, please contact Jerry.

Disclaimer: The resources published on this website are available for informational purposes only and should not considered legal advice on any subject matter. By viewing these resources, the reader understands there is no solicitor client relationship between the reader and JZC Intellectual Property Law. This website should not be used as a substitute for legal advice, and readers are urged to consult legal counsel on any specific legal questions concerning a specific situation.