Before you begin the trademark registration process, there are several important steps to be taken. First of all, you must determine whether it is a registered trademark you actually need. If that is the case, then you should use pre-screens to eliminate weak candidates and identify strong trademarks to pursue.

Do You Need A Registered Trademark?

You do not need to register a trademark in order to acquire trademark rights, although registration does provide you with much stronger rights. If you are not clear about ‘common law’ trademarks and the advantages of registration, you may wish to review the section on registration basics.

Choose a Strong Trademark

A trademark is considered “weak” if it is likely to have only narrow legal protection, in terms of such factors as its geographical scope, its inherent distinctiveness and the line of business. The strongest kind of mark is often a word with no inherent connection to the product and/or service being offered (such as Xerox or Kodak). These ‘strong’ marks will get wider legal protection.

Design marks are usually inherently more distinctive and hence often make ‘stronger’ trademarks. However, they must be used exactly as registered to gain the benefit of the registration. Also, the words per se are not really protected.

There is no fool-proof method for choosing a strong trademark. One of the methods our clients recommend is to to have a brainstorming session. Brainstorming involves simply recording all suggestions, no matter how wild. It tends to work best in a group, so find a group of friends or colleagues and set aside an hour for a brainstorming session. Return to the list in a few days, and try to identify some strong candidates to research further.

Pre-Screen Searches

In the preliminary screening stage, the purpose is to identify a ‘strong’ trademark and search for any ‘knock-out’ trademarks. Quick and inexpensive searches should be conducted that will eliminate proposed trademarks that obviously wouldn’t be available. This is often done by searching the trademark registry. You can access many databases at no charge on the Internet, including the Canadian and U.S. Registered Trademark Databases. Click here for these useful links. If you do the searches yourself, make sure to read the instructions very carefully.

We also offer several time-saving services. We provide preliminary screening, professionally done under the supervision of a Registered Trademark Agent for a reasonable charge. For more details, see our services.

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