Alice-Anne Morlock is a lawyer at the Toronto law firm of McMillan Binch and a member of the firm's KNOWlaw Group.

A trademark can be an enormously valuable asset. A smart business will choose a strong trademark, think long-term when protecting it and protect it early.

Some business people neglect to put in the required effort when choosing a trademark and cause themselves a lot of unnecessary grief.

You may think that only new businesses are choosing trademarks which have never been used before and therefore have the advantage of a clean start. However, with more and more mergers occurring in the business world, many businesses with long-standing names are choosing to start off their new merged life with a brand new trademark and update their image at the same time.

Is your trademark

strong or weak?

Trademarks are not created equal. There are strong trademarks and there are weak trademarks. And in many ways in the world of trademarks it is a case of pay now or pay later.

The strongest trademarks consist of truly "invented" words (which have no meaning whatsoever), words which have no meaning that relates to the product, highly original designs or a combination of these.

The weakest trademarks consist of ordinary dictionary words which are suggestive of the type of product or service in association with which they are used.

In trademark lingo, strong trademarks are "inherently distinctive" while weak trademarks lack that magical quality.

A simple test to use in order to determine whether a trademark is strong is to ask the following question. Would a person who is unfamiliar with your company or product and who sees your trademark for the first time be able to guess what business or product the trademark will be used with just from looking at the trademark? Using this test, a name like Lexus for automobiles is a strong trademark while a phrase like Trendy Clothes Salon for a clothing store comes out as a weak trademark.

The company that chooses a suggestive name as a trademark may find that its trademark can be remembered more easily by its customers initially. However, the company that chooses a strong trademark catches up quickly if it puts effort into educating its customers and potential customers about the link between its fanciful trademark and its products or services.

The company that chooses a strong mark ends up in a much better position because (1) a strong trademark can be protected more easily than a weak trademark, and (2) there is much less risk of confusion in the marketplace when a strong trademark is chosen.

When you choose an invented word as your trademark you avoid any negative connotations that a dictionary word may have in a language with which you are not familiar. You also can control the image associated with the brand. Very recently the large accounting firm, PricewaterhouseCoopers, announced a new name for its global network of associated legal firms. The name it chose - Landwell - was chosen, in part, for "its lack of connotations or offensiveness" in any of 43 languages.

There are two reasons for wanting a strong trademark:

1. It's easier to register a strong trademark.

2. A strong trademark is more effective in stopping third parties from using a trademark you think is too similar to yours.

Why is it easier to register a strong trademark?

The Trademarks Act contains some rules about types of trademarks that may not be registered.

Two of these rules are very difficult hurdles for weak trademarks. A trademark may not be registered if it is "either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used." A trademark may also not be registered if it can be confused with a registered trademark.

If a trademark consists of an ordinary dictionary word that has a connection to the wares or services in association with which it is used or proposed to be used (e.g. our example of Trendy Clothes Salon for a clothing store, Fast for a courier service, Crispy for a breakfast cereal or Soft for toilet paper) then the Trademarks Office may say it does not pass the first hurdle. You may have to spend a great deal of effort trying to persuade the office that the trademark is suggestive only - and not clearly descriptive. There is no such problem for a strong trademark.

Also, the office is more likely to say that a weak trademark cannot be registered because it can be confused with an existing mark. A weak trademark lacks the unique elements that will enable the public to distinguish it easily from other marks. The risk of this happening with a strong trademark is much less.

Why is a strong

trademark more useful?

Owning a registration for your trademark makes it easier to stop third parties from using your trademark (or one too close to it). However, even if you manage to get a weak trademark registered, it may not be a very effective or useful weapon against these third parties. A strong registered trademark is a far more effective weapon.

This is how it works. The law says that the owner of a trademark can prevent a competitor or other third party from using a trademark which is "confusing" with the owner's mark. One of the key factors in determining whether the third party's mark is "confusing" with your mark is the "ambit of protection" to which your mark is entitled.

A trademark with a very "narrow" ambit of protection is likely only effective at stopping the use of other trademarks that are identical or virtually identical to it and that are used in connection with identical or overlapping wares and services. A trademark with a "wide" ambit of protection will be able to stop the use of less similar trademarks or even trademarks that are used in connection with quite different wares and services.