When you apply for trademark registration, an examiner will assess whether your trademark is fit for registration. If the examiner does not accept your application for trademark registration, an adverse report will be sent to you detailing the reasons for rejecting the trademark and the grounds for rejection they have relied upon. The following are the primary grounds for rejection:

  • Lack of distinctiveness;
  • Contain generic terms; or
  • Substantially identical or confusingly similar to another registered trademark.

Another basis for rejecting your trademark application is that the mark is considered scandalous, immoral or deceptive. This article will discuss the reasons for rejecting a trademark application, and what you should do to rectify the problems identified in the adverse report.

Lack of distinctiveness

The eligibility of your trademark application for registration is partially based on the uniqueness of the trademark, or its ‘strength’. The more unique it is, the easier it will be to defend against infringement. If the trademark lacks distinctiveness, it will be not be registrable unless it can be shown, through extensive evidence of prior, current and future use, that the mark has become recognised by the relevant consumers of the good/service.

A strong mark might feature invented words, or words that bare no connection to the goods/services for which the user is seeking trademark registration. For instance, Polaroid is an invented word and Apple is an unrelated word. Both marks are easy to remember and are considered to be ‘inherently distinctive’.

The weaker marks usually feature descriptive or generic terms. This is because the traders of these goods or services see value in communicating the purpose of the good or service to its consumers, however, the more unique and memorable a brand name, the more its consumers will be able to distinguish it from its competitors. While some traders have been successful in registering their weak trademarks, this is largely due to the ‘secondary meaning’ that the goods have adopted through the extensive use of the trademark, usually demonstrable from the marketing activities used to promote the mark. Provided you can prove that consumers associate the mark with your product or service, despite its non-distinctiveness, it may be still be possible to achieve registration.

Generic Terms

If you try to register a generic term in your application, the examiner will reject your application and issue you with an adverse report. Generic terms are not dissimilar to descriptive terms. Generic terms describe what product is being registered, i.e. ‘computer’ for computers. These terms are not descriptive and consumers are unlikely to associate a generic term with a trader but rather with the goods themselves. Imagine if you were a plumber and you successfully trademarked the word ‘Plumber’. It would be an unfair marketplace dominated by one trader. It would prevent any competitors from using the word to describe their services and would decrease competition dramatically. In your trademark application, you may include a generic term, however, it cannot consist solely of that term. When you apply to register a trademark that features a generic term, if you are successful in registering the mark, you will not be able to exclude others from using that part of your trademark.

Substantially identical or confusingly similar

If you attempt to register a mark that is similar or identical to another registered trademark, it will not achieve trademark registration. If examiners were to grant trademark registration indiscriminately and in spite of obvious similarities between two trademarks, consumers would be unable to distinguish between the goods of two different traders, which would make consumer choice a thing of the past. Your trademark must only be different to the marks that relate to, or fall in the same category of, the goods in which you trade. This means that someone registering your trademark for staplers when you only trade in cakes will probably not be infringing your registered trademark. The question to be asked is: What is the likelihood of confusion to consumers if this mark were to be registered? Many different considerations must be taken into account when an examiner is determining the likelihood of confusion. The examiner will look at the two marks side by side and decide, based on the degree of similarity between the marks themselves and the goods/service to which they pertain, and make an assessment on this basis. The intention of the applicant will also be a consideration in the mind of the examiner.

How to respond

Just because you have received an adverse report does not mean that your application will be rejected. Adverse reports are indicators of the reasons for which your application, in its current state, cannot proceed to registration. It is an opportunity to address these issues and remedy/dispute them. You have fifteen months to respond after the day on which the adverse report is issued or your application will be abandoned. Upon responding, either of the following will occur:

  • You will not have overcome the issues and will be issued with a final refusal, to which you may appeal in a court; or
  • No other objections are raised and you overcome all objections. Once it has been approved, your application will, for three months, be open to opposition by other traders. After this period has lapsed, you will achieve trademark registration. 

Conclusion

For legal assistance in making an application for trademark registration, or for advice on how to respond to an adverse report, contact LegalVision on 1300 544 755 and discuss your matter with one of our trademark lawyers.

Lachlan McKnight

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