One of the benefits of being a franchise and trademark lawyer is that I seem to act for a lot of hotels and restaurants. And despite my sage advice that they should see “branding experts” to develop branding strategies when they start up, they sometimes rely on me to name their businesses when they can't come up with anything catchy enough.
This might be because I speak English good. I have named at least four restaurants in Vancouver during my long and uninsured career as a “wannabe branding guru,” and I have prevented at least one restaurant from being given the name of a very rude word in Tagalog. Many Vancouver residents have eaten in “my” restaurants, but since there is no plaque celebrating my achievements, my life's part-time work goes largely unnoticed.
When it comes to your business, your lawyer shouldn't be naming it. What your lawyer should be doing is “clearing” your corporation's proposed name with the appropriate corporate registry in your province, and if you are selling goods or services with a unique or catchy name or logo that you want to exclusively use (and prevent others from using), your lawyer should be suggesting a formal trademark registration for it.
Although helpful to a point, a “business name” or “assumed name” and even your corporate name will not give you the protection you need to sell your goods or provide your services under that name to the exclusion of others in Canada. So potentially, if you don't have a registered trademark, someone who has one can demand that you stop using that name or logo, even if you've used it for some time and built up some brand awareness and goodwill (not to mention sales).
For this kind of protection, you'll need a trademark registered under the federal Trade-marks Act.
A trademark can be a word (“Apple” for computers, phones and virtually everything else with an off switch), a number (“Lotto 649”), a slogan (“we do it all for you”), or a wordless logo (the “Nike” swoosh). It can even be a shape (the ubiquitous “Coke” bottle is a trademark known as a “distinguishing guise”). A trademark distinguishes your goods and services from those of others in the market.
A trademark can be a number, like Lotto 6/49.
You'll want a trademark that's not barred from registration under the Trade-marks Act for technical reasons. You'll want one that's distinctive of you and your goods or services, and not one that is too generic or that is registered for so many different products and services by so many other vendors that it isn't distinctive. And you'll especially want one that isn't confusing with a trademark someone else owns. This could either be someone with a registered trademark for the same goods or services you plan to register for, or it could be the user of a mark who hasn't registered but who has used it for longer than you have.
Trademark rights in Canada are generally determined by the first to use, not the first to register. You can apply for a trademark based on actual use (that is, you can prove you've used it in respect of the sale of goods or the advertising or performance of services), or on the basis of proposed use (that is, you intend to use it within the next three years or so). You can use your application or registration in Canada to apply for the same mark in the United States and other countries with certain priority benefits, which helps if you want to expand internationally.
