Many entrepreneurs face the exciting and important task of creating a name for their new business. It is important to get a business’s name right because it may be integral to the brand's identity and the overall recognition of the brand.
Many entrepreneurs wish to use their name or surname as a trademark. In fact, there are many successful businesses across various industries that bear their founder's name.
For example, both Dell Technologies and Tim Hortons bear the names of their founders, Michael S. Dell and Tim Horton, respectively. Yet, protecting a mark that contains a name or surname/last name can be challenging for Canadian businesses.
The Basics - What Does a Trademark Protect?
The marketplace is filled with competitors and imitators. Registering a trademark builds a protective barrier around a brand, preventing others from using the same or confusingly similar trademark.
The Restrictions - What Can’t I Register as a Trademark?
When considering registering a trademark, it is important to note that the law prevents several types of trademarks from being registered, including but not limited to:
a name or surname;
a descriptive or deceptively misdescriptive word; and
a proposed trademark that is the same as or confusingly similar with a registered trademark.
For this article, we are concerned with a mark that is "primarily merely" the name or surname of a living person or a person who has died in the last 30 years. In general, it is not possible to register a name or surname as a trademark.
The Solution - Trademarking A Name or Surname
There are limited exceptions to the general restriction against registering a name or surname as a trademark.
Determining the registerability of a trademark consisting of the name or surname of an individual who is living or has died in the preceding thirty years is set out by a two-part test:
whether the proposed trademark is the name or surname of a living individual or an individual who has died in the preceding thirty years;
if the answer to the first question is yes, then the Registrar of Trademarks must determine if, in the mind of the average Canadian consumer, the proposed trademark is "primarily merely" a name or surname, rather than something else.
If the proposed trademark has broad exposure to the marketplace and the Canadian public understands the trademark is associated with particular goods and/or services, then the proposed trademark may have 'acquired distinctiveness'.
This is generally enough to satisfy the second part of the test mentioned above. The Canadian Trademarks Office will require supporting evidence to show that the public recognizes a name or surname as a company or brand, such as media/social media references, sales and marketing. The example below further illustrates the points mentioned above.
For example, Sam Edwards wants to name his new truck tire business "EDWARDS."
Unless Sam can convince the Canadian Trademarks Office that the Canadian public associates the word mark "EDWARDS" with truck tires, and that the word mark “EDWARDS” has, indeed, “acquired distinctiveness”, it will be difficult to register "EDWARDS" as a trademark.
The Action - Consult with a Trademark Lawyer First
The preceding content is for informational purposes only and does not constitute legal or professional advice. To obtain such advice, please contact our offices directly.
Last updated on April 6th, 2022 at 04:30 pm