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5 common mistakes that will cause the denial of your trademark application

5 common mistakes in choosing your sign or mark are: 1) using generic signs, 2) using descriptive signs, 3) using descriptive words, 4) using laudatory expressions, and 5) using descriptive promotional phrases. The easiest way to fix this is to combine your mark with a distinctive element.

Do you need professional help with your trademark design and registration or other intellectual property? Schedule a free meeting with our consultant.

Distinctiveness is a requirement for trademark registration. Distinctiveness is the ability of your logo to distinguish goods and services.

Distinctiveness is a need because the main function of a trademark is to identify the commercial origin of a product or service. Without distinctiveness, a logo can’t identify where goods or services came.

Before you start advertising your logo, make sure you avoid these 5 costly mistakes.

The fees for trademark registration is minimal. But the cost of rebranding is expensive. Consider the time and money invested in advertising and the cost to make your logo.

1 | Using generic, customary or necessary signs, symbols or words.

No one can exclusively own the types of logos or signs:

  1. generic names or symbols
  2. customary names or symbols
  3. common names or symbols
  4. scientific or technical names or symbols.

Consumers or the public understand that they identify goods and services generically. In practice, they allow business to address an offer to consumers.

For example, “COTTON” is generic when used together with clothing. “VASELINE” is generic when used for skin care.

Also, certain signs have by convention a specific meaning in relevant business circles. For example:

The symbol is used to identify genuine leather products.

 

2 | Using descriptive signs.

If a mark consists of a descriptive sign, it cannot function as trademark. It doesn’t have a distinct element indicating commercial origin.

Examples:

The horse logo is considered generic or descriptive when used with horse riding equipment.

The dog logo is descriptive when used with dog food or other dog products.

This sign would be understood as “five stars” which is a standard device used to describe quality in the hotel industry.

 

3 | Using descriptive words.

Descriptive words are those that describe the nature, subject matter, quality, quantity, size, purpose, use or any other characteristic of the goods or services.

Just like descriptive signs, descriptive words lack the ability to identify the commercial origin of a product or service.

In some cases, a word may be descriptive to certain goods or services but distinctive (therefore registrable) with respect to other goods and services. Example: “Comedy” would be descriptive as a mark for television programs but the same word would be distinctive as a mark for clothes or cosmetics.

4 | Using laudatory expressions.

Laudatory terms express desirable or superior characteristics of the relevant goods or services. They apply or refer directly to the goods or services, which are qualified or described by the term. They are treated as descriptive terms.

5 | Descriptive Advertising Phrases and Slogans.

Simple promotional phrases or descriptive phrases or slogans can’t be registered. Consumers will not perceive standard sales messages as signs that show commercial origin. Thus, they lack distinctiveness.

Here are some examples of bad slogans which will be denied registration:

  1. The brand you can trust
  2. You’re in good hands with us
  3. We do things better

Examples of slogans granted in the Philippines:

  1. World’s pleasure authority (ice cream, frozen confections, chocolate)
  2. Your first line of defense (for firearms, ammunition, spare parts of firearms)
  3. Keep age as a secret (for soap, hair lotions, essential oils)

Also, if the phrase is descriptive it will be denied registration. Does your phrase convey information about the relevant goods or services? Does your phrase or slogan talk about any of the following about your goods or services?

  1. nature
  2. kind
  3. quality
  4. intended purpose
  5. commercial value
  6. other characteristics

If you answered yes to any of the questions, then your phrase or slogan is most probably descriptive. Hence, not registrable.

Examples of descriptive phrases:

  • “Number one — now and always”
  • “Buy the Number One in the market”
  • “First of the class”
  • “Melts in your mouth, not in your hands”

But descriptive slogans may be rendered distinctive if sufficiently distinctive word(s) or figurative element(s) are included.

Does your mark lack distinctiveness? Fix it!

All of the signs, logos or marks described above lack the criterion of distinctiveness. Trademark examiners will not hesitate to raise lack of distinctiveness as a ground to refuse registration.

Fortunately, there is an easy fix. This will work great especially if you don’t have the budget to make substantial changes to your mark.

Simply add a distinctive element!

For example, the phrase “Your eyes deserve the best” on its own will be denied registration.

Adding a distinctive element such as the one below can fix the problem.

Another example.

The picture of a cat by itself can’t be registered as a trademark. But if you incorporate a distinctive element, for example, “whiskas” then it becomes registrable.

If you’ve invested so much in your mark and don’t wish to change it substantially, the next best thing you can do to fix it is to add an element that is sufficiently distinctive by itself, in combination with your mark.

Next Steps

Do you need professional help with your trademark design and registration or other intellectual property? Schedule a free meeting with our consultant.

References:

  1. Intellectual Property Code of the Philippines (R.A. 8293).
  2. Common Guidelines for the Substantive Examination of Trademarks.

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