Many trademarks have a descriptive element to them, most commonly being the words of the trademark itself.

However, during the examination by the government your trademark will be examined as to whether it is too descriptive in relation to your goods or services, and it will face an objection if it is found to be too descriptive because other traders may need to use those words (or similar) to legitimately describe their own goods or services. For example, a trademark for the plain words “TRADEMARK LAWYER” in relation to trademark legal services would be rejected as too descriptive because no one trader should have a legal monopoly on that term. However, even less obviously descriptive trademarks an receive a descriptiveness objection.

One option for overcoming such a descriptiveness objection is to consider developing a logo. That is, a logo which features the otherwise descriptive words of the trademark. The effect of a logo is often that the significance of the words within are reduced and so are less objectionable on a descriptiveness basis. While logo marks featuring words will not provide as strong legal protection to the words as would a plain words trademark, they usually retain some good protection for the words they contain.

By way of example, the below trademarks are around the minimum complexity you will need to avoid a descriptiveness objection. Both have an element, the chef’s hat or pyramid, that is in itself capable of being a trademark (because it is more than a mere geometric shape), and therefore distinguishes the overall trademark.

The below trademarks were not sufficiently “fancy” to overcome the objections to the descriptive words within them.

Logo trademarks can also have the advantage of further distinguishing your mark from prior trade marks. The more complex the logo, the less prominence the words it contains will be given in any trademark comparison.

As part of our service, we will work with you to develop a logo that has the best prospects of avoiding a descriptiveness objection.

Need some advice on this?

If you need some more advice in your particular case, we offer a free initial consultation.

Difference Between Trademarks, Copyright and Patents

There is often confusion about the differences between trademarks, patents and copyright.  This is no surprise as the law in this area is quite complex and very conceptual.  This post provides a brief overview of the differences. But firstly, let’s start with the...

Benefits of filing your US and Australian trademarks together

Clients often instruct us to file their trademark in the United States, and because the fees are relatively low and a US trademark provides coverage over a huge market, the benefit of doing so is clear. The process we usually advise is to file for the Australian...

What is the Amazon Brand Registry and Why I Need a Trademark?

Amazon has recently updated its brand registry.  The main change for sellers is that their brand must be a live registered trademark.  That is, in order to be eligible for the Amazon Brand Registry, the brand can no longer be just a name or logo, it needs to be one...

New Code for trade mark attorneys

The Professional Standards Board for Patent and Trade Marks Attorneys (the PSB), which is the government body charged with regulating our profession, has recently undertaken a major review of its Code of Conduct for attorneys.  The new Code, which is to come into...

Five Reasons Why You Need A Trademark Attorney

Some people ask before applying for a trademark whether they need a trademark attorney to assist in protecting their brand. For the relatively small costs involved, we certainly recommend you use a legal expert to handle your trademark registration.And here’s our 5...

Benefits of a trademark in the United States

Trade marks are registered on a country-by-country basis.  This means that you need to apply for trade mark protection in each country you seek to protect your trade mark.  This takes money and effort.  For this reason, it is usually better to focus on only those...

5 Steps to Get a Trademark in Australia

A registered trademark in Australia will provide you with protection for your brand, name or logo. To help you on your way to protecting your business, this article describes how to get a trademark in Australia. A properly registered trade mark will help distinguish...

Can I patent or trademark my business method?

Under Australian patent law, there is no statutory position on whether a business method ispatentable subject matter, and so it is legal precedent that provides guidance. The watershed NRDC (1) case opened the door to what can be considered patentable subject matter...

New Code for trade mark attorneys

The Professional Standards Board for Patent and Trade Marks Attorneys (the PSB), which is the government body charged with regulating our profession, has recently undertaken a major review of its Code of Conduct for attorneys.  The new Code, which is to come into...

When Do I Need to Trademark?

As a new business manager, you might ask yourself whether it is necessary to register your trademark immediately or if it is something that can wait until you are more established in the marketplace. You might wonder why, if you have already taken the steps to...