To be eligible for trademark registration, the trademark must be genuinely distinctive. The official authorities that register trademarks carry out an evaluation of trademark distinctiveness and lack of similarities with already existing trademarks. If trademark office identifies any potential risk of opposition to the name you have chosen to trademark your application will most likely be dismissed. Sometimes it can be hard to pinpoint what trademark can be considered distinct enough, so we prepared a list of words you might want to avoid using in your trademarks to guarantee smooth trademark application without any future opposition.
Generic and descriptive words
By definition, a trademark needs to display sufficient distinctiveness to identify the origin and ownership of the products and services. That means generic and descriptive words should be avoided at all cost. A word is considered generic when it is likely to be used in the course of daily business for a multitude of businesses in the same industry. Descriptive words usually convey information regarding an ingredient, quality, characteristic, function, feature, purpose, or use of the product or service. That means you might want to abandon the idea of naming your barber shop “Best Haircuts” or your clothes store “Black Jeans”.
One of the most common mistakes that new businesses make is trying to register a trademark that is the same or very similar to an already existing one. Two different companies can indeed have the same trademark, but only so long as consumers are not likely to be confused about the origin of the goods/services. For example, if your brand is associated with clothing and the brand that has previously registered your trademark is connected with computer software, the likelihood of confusion is not as high as if you were offering goods and services under the same class. Therefore, it is essential to conduct a thorough search to make sure that your trademark has been already taken by another company in your industry. An important thing to keep in mind: you will not get a refund of your trademark registration fee if your application is denied because you did not ensure the mark was available for registration, so avoiding this mistake will save you both time and money.
Another common mistake is trying to register a trademark that might be considered deceptive by the IP Office. Deceptive trademarks suggest a component, ingredient, or objective that would mislead consumers. For example, a company uses the word ‘organic’ in its name but does not sell organic goods. The USPTO uses the following test to determine whether a trademark consists of or comprises deceptive matter:
Does the trademark misdescribe something about the product/service?
If so, is a purchaser likely to believe that the misdescription actually describes the product/service
If so, is the misdescription likely to affect a purchaser’s decision to buy the product/service?
If your answer to any of these questions is yes, there is a high chance of your trademark application being rejected.
IP Office is also more likely to reject a trademark application if it comprises scandalous material. There is no strict definition of what falls within the meaning ‘scandalous material’. However, it generally includes: innuendos, words that are profane, racist, or blasphemous; and words inciting violence or criminal activity. Offensive trademarks, for example, ones that contain swear words, are evaluated more strictly.
Choosing a brand name is an obvious but crucial step that will have a major effect on the success of trademark registration. Asking yourself questions such as “How distinct is my name?” or “Does it not sound too similar to this other brand?” in the early stages of the process will help you to make sure that your brand will stand out from others and deter any potential opposition.