My trade mark was rejected as descriptive — what can I do?

If IP Australia has raised a section 41 objection, it means the examiner considers your trade mark too descriptive to distinguish your goods or services from those of other traders. A descriptiveness objection does not mean your application is over — there are several strategies available, and many applicants successfully overcome these objections.

This guide focuses specifically on section 41 descriptiveness objections. For a broader overview of the examination process, start with our guide on what a trade mark examination report is. For all types of objections, see what types of objections IP Australia can raise.

Received a descriptive objection? Upload your examination report and our lawyers will review it for free and advise on your options.

What does "descriptive" mean?

A trade mark is considered descriptive if it directly describes the goods or services it covers, or a characteristic of those goods or services. This includes words that describe the quality, quantity, purpose, value, geographic origin, or other features of the goods or services.

For example:

• QUICK CLEAN for cleaning services — directly describes the nature and quality of the service.
• PURE WATER for bottled water — directly describes the product itself.
• SOFT TOUCH for fabric softener — directly describes a characteristic of the product.
• SYDNEY PLUMBING for plumbing services — describes both the location and the service.
• ORGANIC HARVEST for organic food products — describes the nature and origin of the goods.

The purpose of trade mark law is to protect marks that distinguish your goods or services from those of other traders. If a mark is descriptive, other traders may legitimately need to use those words to describe their own goods or services. Allowing one trader to monopolise a descriptive term would be unfair.

It is worth noting that the examiner may identify a descriptive meaning you had not considered. For instance, a word that seems creative to you might have a recognised meaning in the relevant industry, or the examiner may interpret the mark more broadly than you intended.

The spectrum of distinctiveness

Not all marks are created equal when it comes to distinctiveness. Trade marks generally fall on a spectrum, from weakest to strongest:

1. Generic — The common name for the goods or services themselves. For example, "Computer" for computers. Generic terms can never be registered as trade marks.
2. Descriptive — Directly describes the goods, services, or their characteristics. For example, "Fresh Baked" for a bakery. These are difficult to register without evidence of acquired distinctiveness.
3. Suggestive — Hints at or suggests a quality of the goods or services, but requires a mental leap to make the connection. For example, "Greyhound" for a bus service (suggesting speed). These are easier to register.
4. Arbitrary — An existing word used in a context unrelated to its ordinary meaning. For example, "Apple" for technology products. These are strong marks.
5. Invented or coined — A made-up word with no prior meaning. For example, "Spotify" or "Xerox". These are the strongest marks.

The further your mark sits towards the "invented" end of the spectrum, the easier it will be to register and the stronger the protection will be.

If you are in the early stages of choosing a brand name, our guide on how to choose a good trademark can help you pick a mark that avoids these issues from the start.

Your options for overcoming a descriptiveness objection

If you have received a section 41 objection, you generally have 15 months from the date of the examination report to respond. Here are the main approaches you can consider.

Option 1: Legal submissions

In some cases, the examiner's assessment of descriptiveness can be challenged through legal argument. This is particularly relevant where:

• The mark is suggestive rather than descriptive. If the mark hints at the goods or services but requires a mental leap to make the connection, it sits on the suggestive side of the spectrum. For example, "IRON MOUNTAIN" for document storage — it suggests strength and permanence without directly describing the service.
• The examiner has taken an overly broad view. The examiner may have interpreted the mark's meaning more broadly than is warranted. You can argue that the ordinary consumer would not read the mark as a description of the goods or services.
• The mark has a double meaning. If the mark has a meaning unrelated to the goods or services that a consumer is equally or more likely to perceive, this can support an argument for inherent distinctiveness.

Legal submissions can be effective on their own or combined with other strategies. A trade mark lawyer can review the examination report and advise on whether there are reasonable grounds to challenge the objection.

Option 2: Evidence of use

If you have been using the mark extensively, you may be able to file evidence demonstrating that the mark has acquired distinctiveness through use.

This means showing that, despite being descriptive on its face, the mark has become recognised by consumers as identifying your business specifically. The evidence needs to demonstrate that consumers associate the mark with you, rather than reading it as a mere description.

Evidence of use typically includes:

• Sales figures — revenue data showing the scale of trade under the mark.
• Advertising spend — investment in promoting the mark over time.
• Customer testimonials — statements from customers or industry contacts who recognise the mark as your brand.
• Media coverage — press mentions and articles referencing the mark as a brand.
• Marketing materials — examples of how the mark has been used in trade, such as packaging, signage, and online advertising.

This approach can be effective, but it requires substantial evidence and can be time-consuming to prepare. IP Australia generally expects around three or more years of continuous use. For more detail, see our guide on what evidence of use involves for a trade mark.

Option 3: Amend the specification of goods and services

Sometimes, the descriptiveness objection is closely tied to the breadth of the goods and services specification. Narrowing or amending the specification can help to distinguish your mark from the descriptive concern.

For example, if "NATURAL GLOW" is considered descriptive for a broad category of cosmetics, it may not be descriptive when applied to a narrower subset such as cosmetics brushes or applicators. By refining the specification, you may be able to address the examiner's concern without changing the mark itself.

This approach will not work in every case, but it is worth considering — particularly if the mark is only borderline descriptive for certain goods or services.

Option 4: File a composite mark

If your original application was for a plain word mark, you may consider filing a new application for a composite mark — that is, a logo version that combines the words with a distinctive design element.

The design element adds visual distinctiveness, which can make the application more likely to be accepted. For example, a stylised logo featuring the words alongside a unique graphic element may be registrable even where the words alone are not.

However, there is an important trade-off. A composite mark only protects that specific visual combination. If a competitor uses your words in a different logo or in plain text, your composite mark registration may not give you the same level of protection as a word mark would.

A composite mark can be a pragmatic solution, but it is worth understanding the limitations before you go down this path.

Choosing the right approach

The best approach will depend on your specific circumstances. Some of the key factors to consider include:

• How long you have been using the mark — if you have been using it for several years and have strong evidence, an evidence of use case may be viable.
• How much evidence you have — gathering evidence of use can be a significant undertaking. You will need to assess whether you have enough to make a compelling case.
• How important broad word mark protection is — if you need the strongest possible protection, a composite mark may not be sufficient. You may want to pursue the word mark through evidence of use or legal submissions instead.
• Whether the mark is borderline — if the mark sits on the boundary between suggestive and descriptive, legal submissions may be the most efficient path.
• Your budget — some approaches are more cost-effective than others. Amending the specification is usually the simplest and least expensive option, while evidence of use cases can be more involved.

In many cases, a combination of approaches is most effective. For example, you might narrow the specification and make legal submissions at the same time, or pair submissions with evidence of use.

For a broader overview of response strategies, see our guide on how to overcome a trade mark examination report.

Frequently asked questions

Can I still use my mark while the objection is being resolved?

Yes. An objection to your trade mark application does not prevent you from using the mark. However, you will not have the benefit of a registered trade mark until the application proceeds to registration. This means you may have limited options if someone else starts using a similar mark in the meantime.

What happens if I cannot overcome the objection?

If you are unable to overcome the objection within the 15-month response period, the application will lapse. You may need to consider rebranding, or filing a new application for a modified version of the mark — such as a composite mark or a more distinctive variation. You can also request a hearing before a delegate of the Registrar if you disagree with the examiner's final decision.

How is a descriptiveness objection different from a conflicting mark objection?

A descriptiveness objection (section 41) is about the nature of your mark itself — the examiner considers it too descriptive to function as a trade mark. A conflicting mark objection (section 44) is about another mark on the register — the examiner has found an existing registration that is too similar to yours. The strategies for overcoming each are different. For more on section 44 objections, see our guide on what types of objections IP Australia can raise.

Should I get help from a lawyer?

It depends on the situation, but getting advice from a trade mark lawyer is generally a good idea when you are dealing with a descriptiveness objection. A lawyer can review the examination report, assess the strength of the objection, and recommend the most effective strategy for your circumstances. Our examination report review is free and will give you a clear picture of your options.

Can a descriptive mark ever be registered?

Yes. If you can demonstrate that the mark has acquired distinctiveness through extensive use in trade, it can be registered despite being descriptive on its face. This requires filing evidence of use showing that consumers have come to associate the mark with your business. The threshold is high, but it is achievable with sufficient evidence.

Not sure if your objection can be overcome? Get a free review of your examination report from our trade mark lawyers.

Need help?

If you have received an examination report with a descriptiveness objection and you are not sure what to do next, upload your report for a free review or contact us today.

For a broader overview of trade mark registration in Australia, see our trade mark registration guide.

Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.