Trademark Protection ( A Simplified Explanation)

The two most common grounds for rejecting a Trademark is “confusion” with a Trademark of a competitor or “descriptiveness”. When a Trademark Examiner indicates the Trademark is “descriptive”, he or she is taking the position that the word or words should be available for competitors to use. The accompanying video will provide a simplified explanation to persons selecting a Trademark or considering protecting a Trademark that they have started using.

Here is a transcript of the video

Most people realize that you can’t pick a trademark that is too close to the trademark used by a competitor.  That can be easily checked because you can search them in the online trademark databases and find out what competitors have already protected.  You can also search online with respect to other businesses’ websites, etc. that are using similar trademarks.  When you search, you may find that there is a number of identical trademarks out there.  The reason you will find that is that people can have identical trademarks – the same trademarks – as long as they are not in competing businesses.  So, if somebody has a trademark for shoes, that won’t necessarily compete with a trademark for a restaurant.  What some people don’t realize is the Trade-marks Office goes beyond that and tries to prevent anybody from obtaining a trademark that they deem as being “descriptive”.  When they reject a trademark as being “descriptive”, they are trying to protect those words, so they are available for other people to use.  So, if you try to trademark “Black Shoes” and you are in the shoe business, you are going to have a problem, because Shoes are your product, and Black is simply a colour that shoes are available in.  So, when you are picking a trademark, look out for conflict with competitors and beware of descriptiveness issues that could result in rejection.  And that’s Trademark Law, simplified.