Time and again, I am confronted with slogans or brand ideas from clients that are great for marketing but not registrable as a trademark. There is usually a lack of understanding, especially if the claim was created with a lot of effort by marketing or an advertising company and I am then the “spoilsport”. But it is part of my understanding as a patent attorney to point out when trademarks are unlikely to be registrable.
Not everything is registrable?
Trademark law sets limits here, but these are sometimes not entirely clear. It is even easier when it comes to the “requirement of availability”. Terms that are in common usage or technical terms may not be monopolised. This regulation is justified in order to maintain the possibility for the general public to use terms or technical terms that have long been in common use without restriction in the future.
Distinctiveness is a more difficult issue. According to the law, signs are excluded from registration if they consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the services, or other characteristics of the goods or services.
In the vast majority of cases, this affects signs that have a reference in the brand name to the goods or services to be marketed under the sign. And this is where the conflict between marketing and IP usually arises, because the brand name should of course give the consumer a clear signal about the goods and services, but on the other hand be abstract enough not to be descriptive of them. The boundary between descriptive and therefore not registrable and modified is fluid and sometimes difficult to define.
In addition, there are signs that have been modified to such an extent that they are not formally descriptive, but which enable the consumer to have a concrete expectation with regard to the goods and services marketed under the sign by means of an echo. These are referred to as descriptive signs, although it is also difficult to define when a sign is descriptive.
In any case, it is advisable to consult a trademark law expert before applying for a trademark in order to clarify possible problems in advance.
If you have any questions about trademarks, please contact us.