Main requirement of a trademark is that it has be distinctive enough, otherwise it cannot fulfill the function of a mark.
What are the main requirements for a trademark?
In general, wherever you are in the world, your trademark must have distinctive character and may therefore not be descriptive. This is often given a different interpretation depending on your particular country or region. For example, a general or descriptive English term may be refused in many Western countries, but such a mark could be approved in a country where few people understand English.
This also applies to the use of, for example, descriptive Asian words in Western regions such as the EU and US.
In the US, an individual trademark has minimum requirements for obtaining an application date for your trademark registration. It is important to understand that a trademark application does not guarantee that the trademark will actually be registered. It’s best to look at the trademark application as a test to determine whether you will actually be allowed to use it, and that you are not committing trademark infringement.
Only when there is no objection or refusal will you be certain that the trademark will be registered.
That is why it is important to firstly determine what kind of trademark you want to apply for, then perform a trademark search, while at the same time making sure you are able to meet the formal trademark requirements, such as:
- Name of applicant
- Address for correspondence
- Clear image of the brand
- List of goods and/or services
● Official fees (for at least 1 Nice class)
How do these requirements work in general?
There is also the possibility of submitting a collective mark. In which case, the same requirements would apply as they would for the individual brand, with the addition of explaining what is the relationship to the applicant, and how the use will be monitored.
Finally, the United States has a certification mark. The requirements of the individual brand also apply here, plus:
- Conditions for use
- Supervision by trademark owner
- No use by trademark owner
However, it is important to note that a certification trademark may not be registered as an individual or collective mark.
It should also be noted that the USPTO assesses whether there are already identical or similar trademarks, and on the basis of this assessment, an application may be subject to an office action or refusal.
In the EU, when a trademark application is received, it is checked whether the requested trademark meets the formal trademark requirements, and therefore whether the name of the applicant will be entered, as well as which name or logo it concerns and which products or services are provided.
Also in the EU, there is a rule stating that a trademark must have distinctive character, that it may not be contrary to morality or the public order, and may not, for example, contain flags of countries.
If a name is descriptive, it will be refused, but refusal on those grounds can easily be avoided if the proposed trademark includes a strong logo. A strong logo contains an icon or image element that says nothing about your business. Think Apple. Their name and logo have nothing to do with telephones and computers, but it cannot be used as a mark for fruit.