In certain circumstances, a trademark will be very difficult to get registered and there can be many reason for this. Below are a few of the common reasons why a trademark might be incapable of registration:

Are you attempting to trademark a descriptive word?

Trademarks that indicate the kind of goods and services being traded, or, in other words, are descriptive in nature are unlikely to be given protection. This encompasses any aspect of the good/service that suggests its model, type, size, shape etc. A good example would be “Cruiser” for a boat company. The reason these words are not allowed is because they are merely describing the good itself. Excluding others from using this descriptive word would be unfair since it would go without saying that all competitors use this word to describe it to consumers.

Is the word indicative of quality?

It’s one thing to call your product superior in quality to all other products, but it’s an entirely different thing to trademark such an acclamatory word as your own. Perhaps your product is better. Does that then give you the right to call it so? Can you imagine if one company in the clothing industry had all the rights to the word “quality”? It would certainly not be conducive to healthy competition.

Is the word indicative of quantity?

Since many traders advertise the quantity of the contents of their products, it would be ludicrous if you were entitled to stop others from using certain units of measurement. Because the quantity is really just another form of a description of a product, it cannot be trademarked. A good example might be a cigarette company trying to trademark the number ‘25’ for their cigarette packets – a very standard-sized packet common to most cigarette companies.

Is the word suggestive of some ‘intended purpose’ of the product?

For the sake of allowing businesses to explain the functionality and intended purposes of their products – say, for example, in the ‘Instructions’ or ‘How to Use’ section of the packaging – it is not permitted that businesses trademark the outcome or purpose of the good or service. One example might be “unblock your toilets” for a plumbing service, or “quality legal advice” for a law firm. All businesses should be entitled to advertise the purposes of their services or goods. Otherwise, competition would become frustrated, as all the generic ways of describing a product or service would soon become trademarked, making it very difficult to communicate the function of the product to consumers.

Is the word indicative of value?

Another restriction on the type of words that businesses can trademark is words that indicate value. For example, “as valuable as diamonds” or “worth more than you think” would probably not be capable of trademark registration.

Is the word indicative of time?

If your attempting to trademark anything that relates to time, you may run into difficulties. Any indication of when the goods were made or when they will be available may not be capable of trademark protection. For example, “90 Seconds in the Microwave”, while a great selling point, is more instructive of how to use the product than anything else. It would be unfair to prevent other products that are ready in 90 seconds from advertising this instruction.

Is the word indicative of geographic origin?

While it is possible to have the origin of your product be registered as a trademark, such as Champagne, it is normally very difficult to get this done. This is because it would undoubtedly limit the ability of traders in a region from using the trademarked location on their own products. If a certain region has a reputation for a type of product, such as wine from the Hunter Valley, this geographical location will not be capable of trademark registration. If, however, your product or service has no connection with its location, such as “Antarctica Massage Service”, it’s more likely you’ll be able to trademark this.

Is the word merely a surname?

The ability to trademark a last name might depend on how common the name is. If your name is Smith, you might struggle to get this trademarked.

Conclusion

If you’re looking to trademark a word, phrase or something more abstract, contact LegalVision on 1300 544 755 to speak with one of our trademark attorneys or trademark lawyers. Often a trademark application will be rejected on numerous grounds and it’s important you get your head around what needs to be done to avoid this in the future.

Lachlan McKnight

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