When can a descriptive mark be registered as trademark?

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

There are some cases when descriptive trademarks can be registered. If you can prove that your brand acquired a secondary meaning, also called "distinctiveness earned through use", your trademark might be eligible for registration.

What this means in practice is that even though the mark is considered descriptive, the consumers of your brand might associate certain products and services exclusively with your brand and no other.

A secondary meaning has to be proven to the IP office by submitting extensive evidence. The brand has to be active in a specific market for at least five years. The applicant must gather evidence, ranging from invoices, promotional materials, social media posts, etc.

In some jurisdictions, such as the EU, it might be tricky to prove that you have earned distinctiveness through extensive use of your mark. It is because you have to gather supporting materials for each of the countries of the EU. If you have as little as one country missing, you are not eligible.

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