6 Things You Must Know About Your Trade-Mark: Part 6

Have you ever wondered why certain product names are so similar, even from different sellers? You have probably seen an Excel spreadsheet, Excel gum, an Excel automobile, Excel dishwashing soap and many other Excel’s. Isn’t trade-mark law supposed to prevent this kind of duplication?

Of course it is but only up to a point. There are other interests at play and they mean that not all trade-marks get exclusive protection or are treated equally.

Trade-marks afford some exclusivity in connection with a product. That exclusivity is not 100%, however. There are some public policy reasons for this, if not commercial realities.

A key policy reason is that while exclusivity is good (at least for the owner), restraint of trade is bad. Even more so, monopolization of a word or phrase which would prevent all competition cannot stand. This is why you can’t register a trade-mark if the words would be overly descriptive. Imagine how different things would have been if Daimler or Ford had been able to trade-mark the word “car”, for example. Competitors should be able to describe their product without worrying if they are infringing a trade-mark.

This creates some interesting challenges. The goal of every seller is to make their product the most famous in a category, extending even to how people refer to it. Every day people ask for “Aspirin” instead of a “painkiller”, “Kleenex” instead of “facial tissue” or a “Thermos” instead of a “vacuum bottle”. That seems like a good thing for the trade-mark owners but it is also a problem. If their name becomes a generic substitute for the actual product name, they may lose the trade-mark. This has caused “Aspirin” and “Thermos” to fall into the public domain in certain countries. Anyone can use those names. “Escalator” and “zipper” also used to be trade-marks.

But back to the issue at hand. One of the solutions to prevent a trade-mark from becoming too restrictive was to insist on a “class” system. This means that trade-marks do not apply to everything, but only the class of products which the owner is actually trading. So while “Joy” might refer to and be registered as a type of dishwashing soap, it could also be allowed to refer to a hymn book by another owner. They are permitted to co-exist because it is assumed that nobody would think the publisher of the hymn book was also selling the soap.

This rationale stands up for common words like “Joy” but when you are talking about really distinctive, or coined, words, it is less effective. A classic example is “Exxon”, which was specifically designed to not mean anything in any language. Since it is so unusual, it stands out. More importantly, people seeing the name attached to something logically think that any other use of the word is from the same source.

So here’s the state of affairs, grossly simplified. The default rule is that a trade-mark extends only to the class registered, or ones which are very similar. If the words are ordinary dictionary terms, even more close hits might be allowed. Here in Saskatchewan there are dozens of companies using “Parkland” in their name. It’s a nice, non-offensive word that has pleasant associations so it’s popular. The disadvantage is because it is so non-distinctive, it has relatively little protection against others using it unless they are in almost exactly the same market.

Coined words like “Exxon” or “Kodak” are much stronger because of their distinctiveness. If you were starting the “Kodak Car Wash” you would undoubtedly have trouble because of the uniqueness of “Kodak”. The lesson is to use as unique a term as you can for your product from the start to get that protection. It’s no coincidence that most cars seem to be referenced by made up words that still evoke some positive feelings: “Elantra”, “Venza” and “Acura” all fit this mold. They are also different enough from “real” words to be more distinctive.

The other big exception is based on success of the product. Whether or not “Lego” was a coined word it is very, very famous. Using that word in your product name will probably attract all sorts of legal attention. It is a level of protection you can aspire to for your own (unique) name but you don’t want to copy it or others with similar recognizability.

Like many other parts of trade-mark law, uniqueness is something that must be carefully developed from the start. There are products which have rebranded themselves to take advantage of this after the fact, but it is expensive and a waste of much of the goodwill that was built under the old name. Do it right the first time and let the power of your trade-mark grow.

To find the other instalments in this series, click on Part 1, Part 2, Part 3, Part 4 and Part 5.