"Clearly Descriptive" Trademarks
One of the most common objections that a trademark applicant can receive is that the trademark is not registrable for the reason of it being "clearly descriptive". Most business owners don't know what it means. Discover it in this short cartoon!
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NARRATOR: Rachel has ordered a free registrability search of VANCOUVER VEGAN EXPO from Trademark Factory. Rachel plans to hold vegan tradeshows in Vancouver and wants to register her trademark.
NARRATOR: She has received a report saying that the Trademarks Office will most likely consider her mark to be clearly descriptive of the services she plans to offer.
NARRATOR: Rachel is calling Trademark Factory.
RACHEL: Hello, what does clearly descriptive mean? I want my mark to describe my services.
TRADEMARK FACTORY: Sure you do. Everyone does.
RACHEL: So what’s the problem?
TRADEMARK FACTORY: You may not register a word that describes an inherent feature of the products or services. Clearly descriptive means that your trademark is made up of dictionary words (or their phonetic equivalents) which describe some important characteristics of your product or service. The reason clearly descriptive trademarks cannot be registered is to prevent one business from monopolizing dictionary words that describe important characteristics of its products and services, which would place its competitors at a significant disadvantage.
RACHEL: How’s that?
TRADEMARK FACTORY: If they allowed you to register VANCOUVER VEGAN EXPO as a trademarks, nobody else would be allowed to refer to their vegan exhibitions held in Vancouver as Vancouver Vegan Expo, and that would be unfair. If they allowed you to do it, you would end up appropriating dictionary words that describe your products and services.
RACHEL: So I can’t use dictionary words in my trademark? How did McDonald’s get away with registering “I’m lovin’ it” as a trademark?
TRADEMARK FACTORY: It’s not that you can’t register dictionary words as a trademark, it’s that your trademark can’t consist ONLY of dictionary words that describe features or characteristics of your products or services.
RACHEL: I see. Can you give me more examples?
TRADEMARK FACTORY: Of course.
TRADEMARK FACTORY: For example, COLORED LASER is clearly descriptive of the main characteristics of printers, which means that COLORED LASER describes that these printers use laser technology to print color documents.
RACHEL: I see.
TRADEMARK FACTORY: Trademarks aren’t allowed to describe places of origin if that place is famous for specific products. For example, in a famous trademark case, the trademark CASABLANCA was found to be clearly descriptive of the place of origin of the wine. Likewise, you will not be able to register HOLLAND for tulips, RUSSIA for vodka or LAS VEGAS for casino.
RACHEL: That’s interesting. Are there more restrictions?
TRADEMARK FACTORY: Lastly, your trademark cannot clearly describe conditions of production or people who make your products or render your services. For example, a trademark FAIR-TRADE GALOSHES clearly describes conditions of production meaning that people employed in making these galoshes are being overpaid.
RACHEL: But shouldn’t we take care of those among us who are less fortunate?
TRADEMARK FACTORY: Maybe, but it does not make such clearly descriptive trademarks registrable.
RACHEL: How does the Trademarks Office determine if the mark is clearly descriptive?
TRADEMARK FACTORY: To decide if a mark is clearly descriptive, the trademark examiner needs to consider what an ordinary purchaser would think when first seeing the trademark. What does the trademark tell the purchaser about the products or services or their quality or place of origin?
RACHEL: I am beginning to understand. My trademark VANCOUVER VEGAN EXPO tells what the services are and describes them. You don’t even need to guess, it’s all there, right?
TRADEMARK FACTORY: Correct.
RACHEL: I know what to do. Let’s translate my mark into French!
TRADEMARK FACTORY: No, the mark cannot be clearly descriptive in either English or French.
RACHEL: Great. What if I change the spelling to vAnKOOV’R VEEGUN EKSPO?
TRADEMARK FACTORY: No, it won’t fly. The mark is still descriptive when you pronounce it. The question is not HOW your trademark manages to describe your products and services, the question is IF your trademark describes your products and services.
RACHEL: OK, I get it now. What if I held my expo in Vancouver but change my trademark to TORONTO VEGAN EXPO?
TRADEMARK FACTORY: Nope. You will run into another problem. When a trademark misleads customers as to characteristics of products and services, they say that the trademark is deceptively misdescriptive, and such trademarks are also not registrable.
RACHEL: What if I come up with a special font for VANCOUVER VEGAN EXPO? Will it still be clearly descriptive?
TRADEMARK FACTORY: The mark is still not registrable as it does not have any design features exclusive of the words.
RACHEL: Can I hint what my services are? What about WE LUV VEGAN?
TRADEMARK FACTORY: Great, this mark only suggests that your services have something to do with vegan style without telling anything particular about your services. This is called, “suggestive marks”. Suggestive marks are OK. Speaking of suggestive, I suggest that you watch our cartoon “How to choose a great trademark”.
RACHEL: Great, I will.
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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