Choosing a Trademark That Doesn't Just Sound Cute, But Actually Protects Your Brand (Part I)

The Trademark Selection Process

The strongest brands start thinking about trademark protection early. Ideally, before you’ve invested large sums of money in branding, packaging, marketing, etc.

If you’re waiting until launch day to think about your trademark… we need to talk.

Here’s what a smart trademark selection process looks like in Canada:

1. Brainstorm strategically (not just creatively). Build a list of potential names. But don’t just focus on what sounds good. Think about what will be protectable from a legal perspective.

2. Get legal eyes on it early. Before you fall in love with a name, have a trademark professional review your shortlist. This step can save you thousands in rebrands later.

3. Run a preliminary (“knockout”) search. A quick search helps eliminate names that are clearly unavailable due to identical or confusingly similar trademarks or names that are already in use or registered in Canada.

4. Hire me to conduct a comprehensive clearance search of the main contenders. This goes beyond a search of the Google®search engine.

A proper search looks at:

• Canadian Trademarks Database (the official trademark registry of the Canadian Intellectual Property Office)

• Business names and domain names

• Common law use (unregistered rights)

• Phonetic equivalents

• Visual similarities

• Prefixes, suffixes, and word variations

• Language equivalents (French translations and others), because a mark can be confusing in other languages

Unlike the U.S., you do NOT need to be using the trademark yet to file in Canada, as we no longer have “in use” or “proposed use” categories. We just file without having to declare whether the mark will be used in the future or whether there has been actual use in Canada. You should note that to maintain registration, you must demonstrate consistent and continuous use of the trademark in Canada; otherwise, you risk losing the protection you have secured.