Geographic Names as Trademarks

Many businesses choose trademarks containing geographic names (e.g. city, neighbourhood, street) as it helps attract consumers by identifying the location of the business (e.g. Yorkville Bakery). However, trademark registration is extremely difficult for trademarks that contain geographic names in combination with words that are descriptive of the products and/or services sold under the mark.

Trademark Registration in Canada

The Canadian Intellectual Property Office (CIPO) generally takes the position that trademarks that are a geographic place name are clearly descriptive of the place of origin if the goods and services sold under the mark do in fact originate from that location.

As well, CIPO also may object to trademarks containing geographic names as being deceptively misdescriptive, if consumers would be misled as to the true origin of the products and/or services sold under the mark (e.g. Canadian for cheese products originating from the US).

Stronger Trademarks

The strongest trademarks are ones that do not contain a geographic place name. Accordingly, businesses should try to avoid using location related names in their trademarks. For tips on picking strong trademarks, see the post entitled "Features of a Strong Trademark".

Alternatively, if you do choose to include a geographic place name in your trademark, it is wise to also include additional word(s) or element(s) that are unique & act to distinguish your trademark from others in the marketplace. These additional words and/or elements should be unrelated to the goods and/or services sold under the trademark (e.g. Starburst Yorkville Bakery").

Contact Sander Law to assess the strength of your trademarks!

The above content is for informational purposes only and is not legal or professional advice.