What kinds of trademarks aren’t registrable?

In Canada, some trademarks are not registrable under the Trademarks Act.

Let’s go through them:

  • clearly descriptive marks, those that describe the character or quality of the goods or services being offered or of their place of origin

Example: SUPER GROW for fertilizers

Exception: Clearly descriptive trademarks may be registered after a period of extensive use. A good example is MCDONALDS.

In the US, descriptive marks can be registered on the Supplemental Register if a trademark is already in use in the US.

 

  • deceptively misdescriptive marks, those that would mislead consumers as to the character or quality of the goods or services being offered or of their place of origin. To be deceptively misdescriptive a mark must first be clearly descriptive and then deceptively describe the products.

Example: ALL BRAN for cereal that does not contain any bran.

 

  • full names and last names of living or recently deceased people and names of famous people.

Examples: BRAD PITT for entertainment services, JONES for accounting services.

Exceptions:

CHARLIE CHAPLIN for shoes would be registrable as he died more than 30 years ago.

ELDERS for wine may be registered as it has another meaning.

In the US, a name can be trademarked with the consent from the owner. If a name is invented, you simply have to state that it’s a coined name.

 

  • the name in any language of any of the goods or services in connection with which the trademark is used

Example: VINO ROSSO means RED WINE in Italian. Since it’s a name of the product in Italian, the trademark is not registrable.

 

  • various governmental symbols and phrases (like national flags, the arms, crests, emblems)

 

  • Scandalous and immoral marks

Example: DICK HEAD for restaurant services; JACK-OFF for adult entertainment

 

  • Marks that suggest government approval

Example: Josie’s Government approved – for car emission testing services

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By |2017-12-11T21:42:04+00:00July 19th, 2017||Comments Off on What kinds of trademarks aren’t registrable?

About the Author:

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Anita Mar
CEO and Registered Trademark Agent at Trademark Angel Inc.

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