Applying for a trademark can be a minefield for SME owners unfamiliar with the process. That is why it is essential to instruct a trademark solicitor to assist you. One element of the trademark application process that can be exceptionally tricky is managing distinctiveness vs descriptiveness.
Distinctiveness vs Descriptiveness
A trademark must be distinctive rather than merely descriptive. Therefore, it is essential to run a clearance search to check what you want to trademark, be it a logo, sound, saying, or colour is actually distinctive.
What is a descriptive mark?
A mark is descriptive if it merely illustrates the nature or a particular characteristic of a product or service. For example, if you are selling cake, you cannot trademark words such as gâteau or sponge as these terms describe aspects of cake. However, Apple was able to trademark its apple shape because apples are completely different to the product it was selling, namely computers and software.
What is a distinctive mark?
A distinctive trademark is one that:
- is unique when compared with other marks used to describe similar products
- able to be easily recognisable by a consumer as relating to a particular good or service
How can I protect against genericide?
The following were once all registered trademarks - Aspirin, Elevator, Pilates, Hoover, Jacuzzi, and Frisbee. Unfortunately for the trademark owners, they became victims of genericide, a situation where the trademark identifies the product as opposed to the company that produces it.
To prevent your trademark from becoming a victim of its own success, try to use unique fonts or colours when registering your mark, for example, WhatsApp and Mobil. Also, place your trademark on all your product lines so it cannot be identified with one particular creation. And finally, take immediate legal action against any trademark infringements.
How to ensure your proposed mark is distinctive
Nothing is more frustrating than having your trademark application rejected for not being distinctive. Applying for a trademark is a significant investment in time and money; therefore it is vital to instruct a Trademark Solicitor to undertake the required clearance searches. A simple Google search will not be enough - your Solicitor will have access to specialist tools that can search UK and international trademarks in seconds.
You can get legal assistance from LawBite
Distinctiveness and descriptiveness can be confusing terms if your are not familiar with the trademark registration process. Our expert Intellectual Property lawyers can give you advice and guidance through the Trademark registration process.
If you have any questions or want to discuss your legal issues with an expert lawyer, you can book a free 15-minute consultation by visiting our Intellectual Property page or calling us on 020 38088314.
