Establishing Evidence Of Distinctiveness On Trademark Registration

Source: CtR Intellectual Property Co.

A proposed trademark can be refused registration for distinctiveness reasons. Indeed, it’s important for applicants to establish the distinctiveness of their proposed trademarks as early as possible! But it doesn’t mean that a non-distinctive proposed trademark cannot be registered – there are remedies that can be done to still have it registered.

What to Do

Keep in mind that a proposed trademark that has been refused registration due to its non-distinctiveness still has hope, so to speak. But the applicant has the burden of proof in establishing that before its date of application, the trademark has a matter of fact become distinctive due to its application in the real world.

The applicant has to show reasonable proof and to file evidence, both of which should be contained in a statutory declaration, containing the following information:

• What the mark is
• How it was and is used
• How long it was used and the specific circumstances of its use
• How it became distinctive, particularly in terms of consumer recognition wherein the consumers recognize the goods or services sold under the trademark

Of course, the statutory declaration should also state that the applicant actually used the trademark or that it was used by another person with the authorization of the applicant/owner.

The information contained in the statutory declaration should also relate to the relevant period or the period before the date of registration, obviously to establish proof of its distinctiveness before said date. The statement should also be supported by sufficient and relevant evidence, such as packaging, advertisements, and photographs of the trademark being used.

When the Trademark Should Have Been in Use

Emphasis must be made that a long period of use of the trademark doesn’t necessarily mean that it has acquired a distinctive character. But it can influence the decision of the trademark examiners in determining distinctiveness albeit perhaps not as significantly as applicants would like.

Instead, the length of use is just among the factors considered when considering the distinctiveness of a proposed trademark. The other factors considered include the manner of its use, the extent that the public recognizes it through marketing, and even the volume of sales related to the goods or service.

What if there are conflicting proposed trademarks filed for registration purposes? If the Registry objects to an application for trademark registration due to an earlier application being either similar or identical, the former is deemed “provisional” until the latter becomes registered.  But the applicant can still take formal action to reach a resolution, such as by removing the specification of products and/or services in his application that have already been covered by the earlier application.

Once the earlier application has become registered, the Registry will then make a formal objection to the later application, usually through an examination opinion.

Source: CtR Intellectual Property Co.