Adding Elements to My Trademark to Overcome Confusion or Descriptiveness

If you can't register your trademark as is, would adding something to it make it more trademarkable? Is it a good strategy?

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TRANSCRIPT

Sometimes, you ideally want to file for a very short trademark, maybe a word or two. And during the search, we realize that it’s a problem. There is something problematic out there. There’s either a previously filed trademark application or the mark is just simply descriptive. So the question then we hear often is, maybe we should add something to it to make it trademarkable?

There are two sides to this answer. First of all, yes, usually the more elements you add to the trademark, the more registrable it becomes—unless of course, those elements don’t add anything specific to that name. So for example, let’s say you are a software company, you make software, and you have this crazy idea why don’t I try to trademark the word Microsoft for my services. You would do the search and of course, it would tell you, you know what, it’s taken, you can’t do it. And then you ask, well, what if we add something to it? Like Microsoft Software Solutions? And the answer to that would be still, it’s unregistrable because what you’re adding are descriptive words. They really don’t add anything of substance, anything that your consumers or your customers would be able to remember on top of the name, the dominant word is still Microsoft—and it’s still not registrable.

But sometimes you can actually come up with really interesting and creative things to add to your application that would make it trademarkable.

The other side of the coin, as I mentioned, is sometimes when you add too many things to your trademark application, yes, your application becomes trademarkable, it becomes registrable, but what you’re going to get is going to be such a weak trademark that there’s going to be very little you can do with it.

If your point is that you want to stop your competition from stealing your brand, you need to realize that if you trademark a name that has seven words in it just to make sure that it goes through the trademarking process, that you’d only be able to stop those who copy either those seven words or something very close to those seven words. You wouldn’t be able to say, you know what, out of those seven words, you’re using two, so you should stop doing that because that’s our trademark. The more things you add, the more registrable it becomes, but also the weaker it becomes as to your ability to police partial use of your brand.


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

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