Is your trademark vulnerable to infringement?

Dave MacDonell

Dave MacDonell

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Trademark Infringement – Is Your Trademark Vulnerable

A trademark is one of your most important business assets, and the selection of your trademark needs to be done with care. At the outset of a trademark application, your trademark agent or lawyer can and should explain to the you the strengths and weaknesses of your proposed trademark.

The selection of trademarks can be broken down into five broad categories: inherently strong trademarks, inherently weak trademarks, suggestive trademarks, compound word trademarks and trademarks that have acquired a second meaning, each of which are discussed in this blog post.

Inherently strong trademarks
Coined or fanciful words (those that have no inherent dictionary meaning) are the strongest trade-marks; they are entirely invented and do not describe the goods or services they represent.
LULULEMON, IMAX and KOODO are examples of coined or fanciful trade-marks. These trademarks convey no information other than a specific brand.

Marks that use dictionary words that do not describe the goods or services in association with which they are used are also inherently strong marks. BLACKBERRY, INDIGO and WINNERS are examples of inherently strong trademarks because the use of dictionary words is arbitrary.

Inherently weak marks
Inherently weak trademarks are those that use dictionary words that describe the underlying goods or services.

COFFEE SHOP used for a coffee shop is in an inherently weak mark. Inherently weak trademarks are usually not entitled to trademark protection unless it can be demonstrated that it has acquired a secondary meaning over time.

Suggestive marks
Suggestive trademarks are not as obviously or “clearly descriptive” and require some imagination to associate the trademark with the underlying goods or services.
FUTURE SHOP for technology products is an example of a suggestive mark. Although these “suggestive” trademarks are somewhat weak, unlike inherently weak trademarks they can still be registered with the trade-marks office.

Compound word marks
Compound word trademarks are trademarks that contain two or more distinct words or syllables that are made into one word. A compound word trademark may also be represented by a combination of a distinctive word with a descriptive word. Examples of compound word trademarks are iPHONE. “i” is the distinctive syllable, and “phone” is the descriptive word.

Marks that have acquired a secondary meaning
A weak trademark can become distinctive through time by virtue of acquiring a secondary meaning. In other words, once the public begins to associate the trade-mark with the company that makes it rather than with the underlying product, the trade-mark has risen above its status as an inherently weak trademark and becomes a trademark that has acquired a secondary meaning.

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