Picking the Right Trademark – Two Guiding Principles

There are many considerations and legal requirements that you have to take into account before you choose what trademark your business will use.  That said, there are two considerations that you must always consider when picking a trademark; one, is the trademark confusing with any other trademark; and two, does the trademark have inherent strength.

No Confusing Trademarks

Before we talk about how to choose your trademark, it is useful to know what kinds of trademarks the law does not want you to adopt and use.  Trademark law can be used to stop you from adopting and using trademarks where there is a likelihood of confusion between the trademark you propose to adopt and use and other trademarks.

The law considers the likelihood of confusion from the perspective of a hurried consumer in a rush with imperfect recollection.  The law evaluates whether there may be a likelihood of confusion between trademarks by assessing all the surrounding circumstances.  In particular the law will always consider five factors, namely, how distinctive the trademarks are and the extent to which they have become known, the length of time the trademarks have been in use, the nature of the products, services, or business, the nature of the trade, and the resemblance between the trademarks in appearance, sound, or the ideas suggested by them.     

1. Pick a Trademark not confusing with any other Trademark

If you choose to adopt a trademark that is already in use in the marketplace, then you are potentially at risk of committing trademark infringement.  That determination will depend on whether the use of the two trademarks at the same time will likely result in confusion in the marketplace, that is, will likely result in consumers becoming confused between the two products or services because of the similarity between the trademarks.  

The law does not prohibit you from using a trademark that is identical to the trademark of someone else.  Instead the law prohibits you from using a trademark that is likely to cause confusion in the marketplace with another trademark.  For example, someone may be using the trademark BEVAF to brand plastic freezer bags and someone else could use BEVAF at the same time to brand a power generator.  However, in light of the plastic freezer bags, if someone wanted to use BEVAF to brand brown paper lunch bags that use would likely cause confusion.  

If you were to adopt and use a trademark that was confusing with an earlier adopted trademark, then the other party would have the power to force you to change your trademark and even to pay them damages caused as a result of your use.

You can increase dramatically the chances that you will not adopt and use a confusing trademark if you perform a search of the trademarks currently in use.  Such search should encompass both registered trademarks and unregistered trademarks as they both have the potential power to force you to change your later adopted and used confusing trademark.

2. Pick a Trademark With Inherent Strength

Not all trademarks are protected under the law in the same way.  Some trademarks are stronger than others.  In fact you can consider trademarks on a hierarchy where the ability to enforce the trademark differs depending on the type of the trademark.

Type of TrademarkExampleAmbit of Protection
CoinedKODAK, KIJIJIVery Broad
Descriptive QUICK STOCK NEWSVery Limited

It is very tempting to choose a Suggestive or Descriptive trademark.  Introductions are easier.  Your potential customers know immediately what you do without the need for explanation which would not be the case if you had never heard of the trademarks Blackberry or Kijiji before.  

The cost of that immediate understanding of what your business does is that your trademark enters a crowded marketplace of other trademarks which are likely similar to yours and could even be confusing.  If your trademark is Suggestive or Descriptive your trademark will have a smaller ambit of protection, you may be accused of trademark infringement by other people with similar trademarks, and you will be required to spend a lot of time and money trying to stop any other parties who use or adopt trademarks that could be potentially confusing with yours.

Conversely when you adopt a Coined or Arbitrary type trademark, you will need to spend more money on marketing so that people are aware of what your trademark brands and so that goodwill accrues in your trademark.  However once that goodwill starts to accrue your trademark will enjoy a greater ambit of protection, less policing costs, and strong distinctiveness making enforcing your trademark rights easier and less costly.

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Ryan K. Smith is a Lawyer and Trademark Agent at Nakano Smith Law Group.  He is a corporate and commercial lawyer with expertise in all manner of intellectual property matters including trade-marks, copyrights, domain names, and confidential information.  Ryan is the author of Intellectual Property in Commercial Transactions (Thomson Reuters).  You can reach Mr. Smith at (647) 806-6133 and [email protected]. This article is provided for information purposes only and is not legal advice and may not be relied upon.