Trademark strategy and branding

When selecting a trademark as part of your branding, remember that the initial trademark you choose will be for the company brand name (trade name). You should choose the company domain name at the same time.
Search online to identify a brand that is available, if possible, as a trademark, trade name and domain name. It is worth protecting other potential marks that offer long-term utility—for example, the brand name of a flagship product or service.
The following are examples of coherently-chosen trade names, trademarks and domain names:

• trade name: Research In Motion Limited
• trademarks: RIM, Research In Motion, BlackBerry
• domain name: rim.com, rim.net

Challenges in selecting a brand name

Entrepreneurs face a practical problem when selecting a brand name, because trademark law makes it easier to protect unique names than it does general names. But marketing communicates brand meaning best by using simple, easy-to-understand names. These marketing-friendly names are more general than they are unique. So when selecting a brand name, a company faces competing requirements of intellectual property law and marketing.
Consider and discuss this problem early in the process. Doing so will reduce wasted effort, and maximize the chance of developing a branding strategy that is both successful and legally protectable.

Suggestions when choosing a trademark

• Choose a mark that can be used as a trade name, domain name and is available for protection as a registered trademark.
• Select brands and slogans for trademark protection if they are to be used for the long term.
• Choose a mark that is unique from any existing trademark or brand.

Do not choose a trademark that is:

• The name or surname of an individual.
• Clearly or deceptively descriptive of the wares or services being offered.
• The name in any language of the wares or services.
• Specifically prohibited by the Trademarks Act.

When to use ® and ™

The ® symbol indicates trademark registration, and can only be used with a registered trademark. The ™ symbol can be used with both unregistered and registered trademarks. Registration is limited by jurisdiction, so keep that in mind if the trademark is registered in Canada but may be used in another jurisdiction.

How do I lose my trademark protection?

You lose trademark protection when the mark no longer distinguishes your product or service from those of competitors (in other words, when it becomes generic).
Make sure to create a trademark name and generic name for any product. Don’t let your brand become a generic term such as escalator or nylon. Instead strive for the recognition and brand dominance of Kleenex® tissue and Xerox® printers.

Protecting your trademark

• Always use a trademark as an adjective. When referring to a product, always follow the trademark with a generic term. Example: That device is a BlackBerry smartphone.
• Make sure to use the trademark consistently and give notice that it is being used as a trademark. Example: That device is a BlackBerry Pearl™ smartphone.
• Do not use a trademark as the generic term for your product. Example: Please give me a kleenex.
• Do not use trademarks in a possessive, plural or altered form. Example: That device is blackberry’s pearl.

Enforcement and policing the usage of marks

Remember that if the mark becomes generic, you will lose trademark protection. Take steps to ensure that the trademark is used correctly.
Be mindful of striking a balance between enforcing abusive use of your marks and minor violations, as the costs and negative publicity associated with litigation or demand letters may not be justified.
Disclaimer: All company and product names may be trademarks of their respective owners.

References

Apple Inc. (2009.) Trademark, Copyright and Intellectual Property. Retrieved December 15, 2009 from http://www.apple.com/legal/trademark/
Canadian Intellectual Property Office. (2009, April 15). A Guide to Trade-marks: Table of Contents. Retrieved December 15, 2009 from http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html
Research in Motion. (2009.) Guidelines for Use of RIM Trademarks. Retrieved November 25, 2009 from http://ca.blackberry.com/content/blackberry_com/desktop/north_america/canada/en/legal/trademarks/public-guidelines.html
Trade-marks Act (R.S., 1985, c. T-13). (2009, November 11). Retrieved November 25, 2009 from http://laws.justice..gc.ca/eng/T-13/index.html
World Intellectual Property Organization. Small and Medium Sized Enterprises (SMEs). Retrieved November 25, 2009 from http://www.wipo.int/sme/en/