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 particualr case, we offer a free initial consultation.

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...

Protect Your Logo as a Trademark

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...

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...

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...

Protect your trade mark in the United States

There is no single worldwide trade mark registration.  You will need to apply to each country in which you would like to have a registered trade mark.  Even for large companies, this task can prove too cumbersome and expensive.  Therefore, the pragmatic route is to...

Trademark attorneys and trademark lawyers in Australia

I often get asked about the difference in Australia between a trade mark attorney and a trade mark lawyer.  In Australia, a trade mark attorney is a separate profession to that of a lawyer or a ‘trade mark lawyer’. While both professions are legal entitled to work in...

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...

Can I Trademark My Instagram or Facebook Account?

Is it possible to trademark an Instagram or Facebook account? The short answer is, yes, you can. Like any other name or logo, Instagram and Facebook accounts accrue good will and reputation that businesses wish to protect. And they can be legally protected by a...

Protect Your Logo as a Trademark

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...

What Happens If I Don’t Get a Trademark?

Do I Need a Registered Trademark?   Having an officially registered trademark for your business is not actually a legal requirement.  As long as you are otherwise obeying the legal obligations of running your business, such as having the correct licences, paying...