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Applying for a trademark can be a minefield for business owners unfamiliar with the process. That's why it's essential to instruct a trademark solicitor to assist you. One element of the trademark application process that can be exceptionally tricky is managing distinctiveness vs descriptiveness. 

In this guide, we demystify this complex area of IP law, ensuring your trademark not only survives the process but emerges as a powerful asset for your business.

Distinctiveness vs descriptiveness

A trademark must be distinctive rather than merely descriptive. Therefore, it's essential to run a clearance search to check what you want to trademark, be it a logo, sound, saying, or colour is distinctive.

What is a descriptive mark?

A mark becomes descriptive when it straightforwardly outlines a product or service's nature or characteristics. For instance, if you're in the business of selling cakes, attempting to trademark terms like "gâteau" or "sponge" may face challenges due to their descriptive nature. However, success stories like Apple's trademarking of its apple shape demonstrate clever strategies that distinguish it from the product sold.

What is a distinctive mark?

A distinctive trademark is one that:

  • Is unique when compared with other marks used to describe similar products
  • Able to be easily recognisable by a consumer as relating to a particular good or service

How can I protect against genericide?

The following were once all registered trademarks - Aspirin, Elevator, Pilates, Hoover, Jacuzzi, and Frisbee. Unfortunately for the trademark owners, they became victims of genericide, a situation where the trademark identifies the product as opposed to the company that produces it.

To prevent your trademark from becoming a victim of its own success, use unique fonts or colours when registering your mark, for example, WhatsApp and Mobil. Also, place your trademark on all your product lines so it cannot be identified with one particular creation. And finally, take immediate legal action against any trademark infringements.


Trademarks legal advice


How to ensure your proposed mark is distinctive

Nothing is more frustrating than having your trademark application rejected for not being distinctive. Applying for a trademark is a significant investment in time and money; therefore it's vital to instruct a trademark solicitor to undertake the required clearance searches. More than a simple Google search will be required - your solicitor will have access to specialist tools that can search UK and international trademarks in seconds.

Get legal assistance from LawBite

Protecting your intellectual property involves more than legal filings—it's about securing the essence of your ideas. Our IP experts can help you implement robust measures against infringement, genericide and unforeseen challenges, ensuring your creations retain their value and impact.

Choosing LawBite for your intellectual property needs isn't just a legal decision; it's a strategic investment in the longevity of your innovations. If you have any questions or want to discuss an IP issue with an expert lawyer, you can book a free 15 minute consultation or call us on 020 3808 8314.


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In closing

Nothing in this article constitutes legal advice on which you should rely. The article is provided for general information purposes only. Professional legal advice should always be sought before taking any action relating to or relying on the content of this article. Our Platform Terms of Use apply to this article.

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