If my wordmark was deemed too descriptive, and for this reason I had to register a logo instead, can I expect the same result in other countries where I wish to file?

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Written by Tomas Orsula

Senior Trademark Attorney

Since every IP office is different, the final assessment of the examining attorney might differ in each jurisdiction where you apply for a trademark. Some jurisdictions are known to be very strict when assessing trademark applications, whilst others are more liberal.

If your wordmark is deemed too descriptive in one country, the chances are you would receive the same result in other countries as well; however, this is not a given. In some cases, you may be permitted to submit evidence proving that your wordmark has acquired distinctiveness through use (think "Best Buy"). In such cases, owners of generic trademarks are able to register them due to the extensive use of the brand in association with the goods/services sold under the brand. To be able to do so, the brand has to be active for at least five years in a given market.

In case your application is refused due to the lack of uniqueness (i.e. being too generic) and you cannot claim acquired distinctiveness, the only way to protect it is to submit it as a figurative mark with a unique logo that would incorporate the text. However, such registration would only offer limited protection since the text would be protected merely in combination with the logo.

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