Goods and Services

As a brief introduction, goods and services are defined under the Nice Classification formulated by the World Intellectual Property Organization. These classifications are widely accepted; however, in Canada we are still subject to the Trademarks Act and Trademarks Regulations. There are 34 classifications of Goods and 11 classes of Services each defined individually. Descriptions of each class can be found on the Canada Intellectual Property Office website here, but a few highlights are: Class 25 covering clothing, footwear, and headwear, and Class 41 covering educational services, providing training, and entertainment.

Weak Trademarks to Avoid

One of the weakest forms of trademarks is a Descriptive Mark as it directly identifies the characteristics of the goods or services offered. This type of mark generally does not even have the option to be trademarked unless it has acquired a considerable amount of distinctiveness of exclusive use over a period of time. The mark is merely descriptive when the name is a clear description of the product – think American Airlines (providing airline services in, you guessed it, America!). American Airlines has a very challenging time getting their name trademarked because it is so descriptive. Not only are Descriptive marks hard to register in the first place, but they are also difficult to protect as other brands and companies may need to use similar wording to describe their goods or services. A Descriptive Mark is one that you want to avoid trying to file at all costs and oftentimes those that are successful in the registration process are highly identifiable in a specific marketplace without any other brand confusion.

Unable to function as a trademark at all are Generic Terms. These are words or phrases that are, or have become common terms associated with the particular goods or service – think Zipper or Escalator (two names that are now in the public domain but were once trademarked). Another example of a Generic Term is ‘Frappe’. Starbucks coined and trademarked the word Frappuccino back in the 1990’s, and when other brands started creating similar drinks they turned to Frappe, a word that has now become a generic term to describe a blended coffee beverage.

Other Things to Keep in Mind!

In selecting a great trademark name, the registerability is directly reflective of these mark categories. It’s important to keep in mind that within Canada the surname of someone is not registerable, and there are considerable limitations on marks that identify the geographical location of a product. It’s always recommended to compile a list of a few potential trademark names you’re interested in, as one may be merely descriptive and another may already be trademarked. This list can then be passed through a Comprehensive Trademark Name Search by a Trademark Agent to identify the strength of each of the possible marks!

If you’re reading this and thinking that you might have a mark that’s outright descriptive, for example, ‘Business Fundamentals’ for a Business Coaching Course, it’s time to put on your thinking cap! How can you rework the name that you have to transfer it from a category of Descriptive Mark to Fanciful Mark? Not only will this help you through the registration process but will increase your brand distinctiveness. You want your trademark to reflect the uniqueness of you and your brand while still providing you with protection.