A trademark is considered weak if it has only narrow legal protection. The strongest kind of mark is usually a distinctive made-up word with no inherent connection to the product being offered (such as Xerox or Kodak). These strong marks will get wider legal protection.
Design or logo marks can be strong but they should be distinctive. An example would be the Nike ‘swoosh’. However, a design must be used exactly as registered to gain the benefit of the registration. If you change the design, even a little bit, and stop using the old design, then you must register the new design to get protection.
If you use both both a design and word mark together, then you may have to register three marks – one for the design alone, one for the words and a third for the two together. However, if you always use the two together, you may get away with registering just one mark. This is very dependent on the circumstances in each case.
Once you have identified a potential candidate, you should do a preliminary search. The purpose at this point is to rule out any marks that have obvious problems. Note that even if another mark is exactly the same as yours, if the line of business is sufficiently different then your mark may be registrable. What is considered ‘sufficiently different’ is a legal question and each case is different.
Internet searches should be done. Note that even if a trademark is used in another country you still may be able to use it in Canada. This depends on the ‘use’ of the trademark in Canada, which is another legal question. We offer a free trademark prescreen search which you can use for exact matches in Canada.
Once your trademark has passed the preliminary stage, it’s time to do a comprehensive search which goes beyond just exact matches. You must also search for ‘sound alikes’. For example, Koke would be confusing with Coke. The best way do this is through a comprehensive search of the trademarks database using algorithms. We offer such a search, with our opinion as to the registrability of your mark including factors such as descriptiveness and confusion with other marks. Please contact us if you’re interested.