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

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  • #995489
    MedalDisplays.com.au
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    Hi Soloists!

    Thought I’d pose the question on here before I spend $250 on a possibly fruitless trademark application.

    Our business name is definitely “descriptive” but at what point is a name considered to be “generic” and therefore would be rejected?

    I’ve searched and there are no similar trademarks registered.

    Any help would be hugely appreciated as I’m still bootstrapping so am unable to hire an agent.

    Thanks in advance! :)

    Andy

    #1202168
    JacquiPryor
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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.

    #1202169
    MedalDisplays.com.au
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    Hi Jacqui,

    Thank you so much for such a thoughtful and comprehensive reply, it’s really appreciated and may have just saved me some cash! :)

    What you’ve said makes perfect sense. At the moment I’m just exploring options to protect ourselves from new competitiors cashing in on people searching for us. On the plus side, the more generic the name becomes, the stronger the domain becomes.

    Further down the line we might look at rebranding in order to gain a strong trademark and at that point I’ll definitely get in touch!

    Thanks again for your help, I’ve saved your details!

    Have a great day,

    Andy

    #1202170
    JacquiPryor
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    Glad I could help Andy :)

    Also – a quick note if you do choose to file for the logo per your website, which includes the .com.au – be aware you will receive a report about this, asking you to demonstrate that the person applying for the trademark that includes the domain name is either the domain name owner as well, or is authorised by the domain holder to be using their domain in a trademark.

    All the best and don’t hesitate to get in touch if I can be of assistance in the future :)

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