Back to Office actions

What if my trademark application is dismissed due to descriptiveness?

Senior Trademark Attorney

A descriptiveness refusal means the examiner considers the mark merely descriptive of the goods or services rather than capable of identifying a single commercial source. The options are to argue against the finding, demonstrate acquired distinctiveness, amend the application, or re-file with a different mark.

Arguing against the finding works where the mark requires some imagination to connect it to the goods; making it suggestive rather than descriptive. Acquired distinctiveness works where the mark has been in long exclusive use and consumers already associate it specifically with your brand. Amending to the Supplemental Register is available where the mark is descriptive but has some commercial recognition. Re-filing with a more distinctive mark is the most reliable path where the current mark is genuinely descriptive and neither of the first two options is viable.

Start with a free assessment of your office action with Trama.

Related questions

Brands and environmentalism: EUIPO study reveals surge in 'green' trademarks

Increasing environmental concerns lead to shifting consumer behavior, and many brands address these concerns by registering ‘green’ trademarks. The results of the study conducted by EUIPO in 2021 found a 900% increase in green trademarks being filed, demonstrating that “growing interest in sustainability is indeed reflected in the EUTMs filed at the EUIPO [1]. Read about the current green trademark trend in the EU in this article.

From Kimono, through #KimOhNo, to Skims: A branding nightmare for Kim Kardashian

#KimOhNo became a symbol of the backlash to Kim Kardashian’s attempt to register a trademark for her new line of shape wear, Kimono.

christopher-burns-Wiu3w-99tNg-unsplash 1

Stories of our clients: Omniwave

One of the best things about life in trama™ is that we come into a first-hand contact with inspiring entrepreneurs, their breathtaking inventions and that we can make our small contribution to making their business aspirations come to life! Omniwave is certainly one of these cases and together with Jorn Mineur, project manager at Bloomline which launched its Omniwave technology, we explore the entrepreneurial path that led to this novel product.