Home – New Forums Other discussions Trademark Question – Descriptive Name Vs. Generic Name Reply To: Trademark Question – Descriptive Name Vs. Generic Name

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Hi Andy,

A trademark – by definition- is a sign (e.g. name, logo and other things) you use or will use to distinguish your goods/services from others. Therefore if it is not capable of distinguishing (because it is too descriptive/generic etc) it will be more challenging – sometimes not possible.

Basically the question to be asked is:

“Is it likely another trader will genuinely want/need to use the trademark to describe similar goods/services, or characteristics of those goods/services”?

You say the name is definitely descriptive, so, if it is truly a description of your products/services chances are you’ll receive an objection.

That said – if you have used your business name for a while you might be able to overcome this problem (depending on the actual name/phrase and extent of use) through providing evidence that shows that because of the use either it has or will become capable of distinguishing your product/service from others.

Or, if you use a logo to promote your products/services sometimes filing for the logo will avoid the issue because it is seen as capable of distinguishing your goods/services, as other traders are not likely to genuinely (without improper motive) use that same logo (even if it does include a descriptive name).

So – if this is for your business of “Medal Displays” then yes, for your type of business it will probably fall into “likely to be genuinely needed by others” – however your website promotes a logo, which in my view would avoid this kind of objection.(Note: I have not conducted searches so cannot comment whether there are conflicting trademarks already on the database when compared to your name or logo).

Above I mentioned that if you have used the name for a while you may be able to overcome this objection by providing evidence of use. Note in that case you would need to show the NAME as capable of distinguishing your business type. Filing evidence of your logo being used/promoted will not convince the examiners that the simple text words “Medal Displays” for example are also capable of this distinction.

I hope this assists. Feel free to PM or email me ([email protected]) if you have further queries.