The most common mistake when registering a trademark

One of the most common mistakes in the registration of a trademark is the lack of distinctive character of the registered mark, which usually leads to the rejection of the application by the Trademark Office.

By

Igor Demcak

What does it mean? In order for your trademark to be registered, it must be unique, interesting, imaginative, whether in terms of meaning or individual verbal and/or graphic elements. The trademark must clearly distinguish your products from the goods or services of other people.

Example of a suitable trademark:

For a digital trademark registration service, the name "trama" is more appropriate than "trademark experts". The trama description is short, easy to remember, but most of all unique. On the contrary, the term "trademark experts" provides only simple information that registration is carried out by trademark experts. Such a mark is descriptive and does not provide distinction from the competition, which also registers marks using experts. In addition, due to the aforementioned descriptiveness, similar designations can freely be used by anyone and cannot become the property of a single entity.

Remember that by registering a trademark, you acquire the exclusive right to use the registered mark, for which strict criteria must be met. Common and descriptive names must be excluded from the selection, otherwise, they will be rejected. From the point of view of mark registration, such a strict assessment can be a complication, on the other hand, it is a good test of whether your name will be sufficiently unique and memorable for customers.

Other suitable examples

  • Sparring for business and legal consultancy services.

  • Vacuumlabs for IT services.

Marks which lack any distinctive character are, in particular: 

  • those which, from the public's point of view, are commonly used in trade to label the goods or services in question or their characteristics - e.g. Barber shop for a barber, Trademark experts for trademark registration service

  • such, in relation to which there are specific indications that the selected goods or services will be used in the manner indicated - e.g. Webshield for cybersecurity services.

In practice, the language of the mark is no longer decisive today. A practical test to quickly verify the distinctive character of a trademark is to determine whether the name you wish to register naturally and without further thought creates an association with the goods or services in question or their properties or method of use. If that us true, such a mark will, most likely, not be suitable for registration.

Further Examples:

  • Naples for a pizzeria. The name indicates that it is a pizza or its ingredients from Naples or from Italy. It doesn't matter if the pizza really comes from Naples. It is sufficient that the name can evoke such an association with the customer.

  • Star Clothes for clothes. It is a so-called laudatory mark. The label indicates that it will be clothing that is of high quality, stellar.

  • Healthy Beauty for cosmetics. The label describes that it is cosmetics that will enahnce your health and beauty.

  • Chocolate Power for nutritional supplements. The name is descriptive and provides information that it is a chocolate product that will give you strength or energy.

Furthermore, your trademark cannot be:

  • descriptive, determining the type, quality, quantity, purpose, or other characteristics of goods or services, i.e. provides simple information about the goods and services in question, for example, it cannot be made up exclusively of the words "Super Apple" for goods such as juices, compotes, jams,

  • vulgar or offensive, for example, cannot contain swearwords or indecent images,

  • misleading, for example, to include the word "organic" for non-organic goods,

  • consisting exclusively of the shape of the product to which it relates, such as the shape of a  key for locksmithing services.

There is an exepcion to every rule

In exceptional cases, it is also possible to register a trademark which, although descriptive, is not commonly used in the context of commercial practice. The condition is to prove that the label has become characteristic for its owner due to long-term and intensive use in the given territory. A very good example is the term "Websupport", which is descriptive, but most of the relevant public know to whom this term belongs. Through long-term use, that mark has acquired distinctive character and has become characteristic of a particular entity.

Another condition that a mark must meet is that the same or a similar designation has not yet been registered for the same or similar goods and services in the same territory.

Igor Demcak

Igor Demcak

Trademark Attorney

Filed over 150 trademarks as a trademark attorney

UPJS Kosice