Have you wondered about the rules of trademarking?
The trademark symbol (™) is generally used for unregistered trademarks. The registered trademark symbol(®) is reserved for registered trademarks.
Here’s the deal. Using the ™ symbol means that you’re making an assertion that the image or word that you’re putting the symbol beside is trademarked and belongs to you.
The trademark represents goods or services and also the reputation of the producer, so trademarks really carry the weight of valuable intellectual property.
The rules of the unregistered ™ symbol are pretty much first come, first serve. Whoever can show that they started using the ™ first has the right to the trademark… until or unless someone actually registers that trademark. The ™ trademark symbol does not mean that it’s actually been legally registered; the ™ is usually used for an unregistered trademark and ® is used for a registered trademark.
Registration of your trademark gives you the exclusive right to use the trademark across Canada for 15 years and registration is renewable every 15 years after that. Using the registered trademark symbol ® is actually unlawful or illegal without proper registration. However, you are not required to register your trademark — using a ™ mark for a certain length of time can establish your ownership under common law. But if your trademark isn’t registered officially ®, you could get in legal disputes and someone else could obtain the rights to use what you had considered to be yours.
An unregistered trademark owner can add the mark with the letters “TM” to serve as notice to the public that the words or symbols are owned and it can hold up in court. However, you don’t receive as much protection as the owner of a registered trademark.
So what can and cannot be trademarked?
Names and Surnames
You could trademark “Zeus” Doughnuts (mythical, not actual, name) but you couldn’t trademark “Harper” Doughnuts because it’s a real name.
You could trademark something like “Doughnutlicious” because it’s not a real word, it’s a word that’s been coined.
Clearly Descriptive Marks
You can’t register a word that describes a feature of the goods or service. For example, “Sweet” Doughnuts could not be trademarked because it’s a descriptive word unless you could prove that the trademark is distinctive of your application. You could trademark something like “Real Deal” Doughnuts because those words are not normally associated with doughnuts. However,
Words that denote a geographical location commonly known to be the place of origin of such goods or services
You couldn’t trademark “Naples” Pizza unless you could prove that the trademark is distinctive of your application, but Naples is generally recognized as the birthplace of pizza so you’d have a problem with that. On the other hand, you might be able to apply to trademark “Tokyo” Pizza if you were doing something uniquely Japanese and distinctive with your business, but it would still have to be examined.
Words or designs that are considered confusing with a previously registered trademark or pending trademark
For example, “Uptown” Doughnuts might be ok if it’s not confusing with a registered trademark or an entitled pending trademark with an earlier filing date, but if there were already a trademark on a “Downtown” Doughnuts set at an earlier date, it would be considered confusing and in conflict because both businesses are creating similar types of dough, baked or dessert items.
Words or designs that nearly resemble a prohibited mark
You also couldn’t trademark “OPP’s Favourite” Doughnuts, even though it’s funny. Because OPP stands for the Ontario Provincial Police – get it? Yeah. Prohibited.
Deceptively Misdescriptive Marks
In addition to prohibited marks, you can’t trademark “deceptively misdescriptive” marks. You can’t trademark “Air Express” for a courier service that uses ground transportation. That would be cheating.
Words from other languages
Nice try. You can’t register “Gelato” for example because it’s a word that constitutes goods or services in another language.
Trademarking Tag Lines
In addition to trademarking words, it can be a very handy and prudent idea to trademark a tag line. For example, at Ballyhoo we’ve trademarked the tag line, Your message matters.™ Coming up with a really good tag line that embodies the message and spirit of your business can be a very important and strong part of your business branding. In addition to our business name – Ballyhoo Graphic Design – our tag line is a very important part of our identifying our brand’s values and it’s something we’ve been proud to trademark. If you’ve generated a catchy and concise tag line message that you feel proud of, consider trademarking it to make it proprietary.
If you’re really concerned about your intellectual property, it’s worth pursuing the registered trademark course of action, but for many small businesses starting with an unregistered trademark can be enough to get started.
For more information about trademarks in Canada, visit: