Trademark Distinctiveness

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In June of 2019, The Canadian Intellectual Property Office (CIPO) has implemented some changes to its examination procedure for trademark registration. One of these changes is the addition of an examination for distinctiveness.

Previously, applications for trademark registration were not subject to any examination for distinctiveness. Issues regarding a mark’s distinctiveness were only entertained with regard to someone opposing its registration.

It is currently unclear exactly what standard the CIPO will use to evaluate a mark’s distinctiveness, however, evidence of distinctiveness may certainly be required for any mark that is not inherently distinctive.

Furthermore, this new requirement will apply to all trademark applications, including those pending at the time the changes are implemented.

It is, therefore, important that you understand what makes a mark distinctive and that you choose a sufficiently distinctive trademark for your brand.

What is Distinctiveness?

Distinctiveness refers to a mark’s ability to distinguish one source of goods and services from others in the mind of the consumer. The following are some of the most distinctive marks in the world:

  • Apple
  • Microsoft
  • Google
  • Coca Cola
  • IBM
  • McDonald’s
  • Samsung
  • Toyota
  • General Electric
  • Facebook

Generic Marks, like the word “Vegetarian”, that might hang over a food stall in a food court, are at the opposite end of the spectrum. This may be the term used to describe the type of food on offer, but it has no distinctive character and cannot be used to distinguish anyone vegetarian food stall from another. And therefore, cannot be protected as a trademark.

Descriptive Marks merely describe a quality, feature, function, or characteristic of the goods and services offered. Examples of descriptive marks include:

  • Best Restaurant
  • Sixth Avenue Restaurant
  • Best Buy (for retail store)
  • Bank of America

Trademark registrars view descriptive marks sceptically and it may be impossible to register such marks in many countries.

Suggestive Marks usually suggest the quality or nature of the products or services, but don’t quite describe them. Some imagination is required to understand what the product is. Examples are:

  • Airbus (for aeroplanes)
  • KitchenAid (for kitchen appliances)
  • Greyhound (for bus transportation services)
  • Quick Stop (for convenience shop)
  • Coppertone (for tanning lotions)

Arbitrary Marks have a common meaning but it’s unrelated to the goods or services offered for sale under the mark. Examples of arbitrary marks are:

  • Apple (for computers and cell phones)
  • Comet (for cleaning preparations)
  • Subway (for fast food restaurants)
  • Google (for search engines)

Fanciful (or also called invented or coined) Marks are the most distinctive of all. These are terms, such as Exxon or Xerox, that were invented to be used as trademarks, but had no prior meaning. These marks are inherently distinctive and have the ability to distinguish their owners as soon as they are created. Some other examples of fanciful trademarks:

  • Keurig (for coffee brewers)
  • Zappos (for shoes)
  • Nikon (for electronic equipment)
  • Target (for retail shopping centre)

How to Choose a Distinctive Trademark

If you own a business and want to stand out from your competitors and protect your distinctiveness, you will want to register a trademark for your goods and services. However, your trademark registration will be rejected if the mark you wish to register is not sufficiently distinctive.

So, how can you choose a trademark that is distinctive enough to be registrable?

There are essentially 3 ways:

1.   Your Mark Must Be Inherently Distinctive

For your trademark to be considered inherently distinctive, it will be tested against the likelihood that other businesses would want to use the same or a similar trademark in relation to their goods and services.

Consequently, the more fanciful and out-of-the-box your trademark is in relation to the industry in which it will be used, the more distinctive it is. For example, if you operate a flower shop and want to use the words “floral” or “flowers” as a trademark, you will not meet the test, as other flower traders would also want to use these words to describe their own flower services.

However, if you were to use a made-up or fanciful mark like “Florixio”, “Floralia” or “Daffotulip” for your trademark, they would be more likely to be accepted, as they don’t have a meaning and it is unlikely that other floral business would choose the same word.

2.   Your Mark Must be Distinctive Within the Context That it is Used

There is some leniency if your trademark is not inherently distinctive. The registrar will also consider the extent to which your trademark is distinctive within the context of its intended use and any other relevant circumstances.

As an example, the word “Fineform” has been used to describe lingerie. While this mark is descriptive in nature, it is not commonly used in the world of lingerie. It was therefore held to be distinctive within the context that it was being used. Furthermore, when shown with evidence of sales and promotion using the mark, the company was able to register it as a trademark.

Similarly, if your floral shop was able to create a signature bouquet and wanted to use the trademark “Curvy & Blurry” to name it, you may be able to trademark this, as it is not a phrase typically used to describe a bouquet of flowers. But remember, you may have to show evidence of other relevant factors such as sales and promotions.

3.   Your Mark May Have Acquired Distinctiveness

Sometimes, a generic mark that would normally be rejected for not being distinctive can become factually distinctive due to extensive use by consumers, so much so that, in the minds of consumers, it is strongly associated with a particular set of goods or services. This is called acquired distinctiveness or secondary meaning.

To show acquired distinctiveness, you may be required to present evidence that consumer