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

One of the most common reasons a trade mark application is rejected in Australia is that IP Australia considers the mark to be too descriptive. If you've received an examination report with a Section 41 objection, the examiner has concluded that your mark directly describes the goods or services - or a characteristic of them - rather than functioning as a badge of origin.

It can be frustrating, and sometimes these objections come as a surprise. Not all descriptiveness objections are straightforward - the examiner may identify a descriptive meaning that you hadn't considered, or take a broader view of what the mark describes than you'd expect. Either way, a descriptiveness objection doesn't necessarily mean the end of the road for your application. There are several options available to you.

If you're not sure what an examination report is or what to expect, read our guide on what is a trade mark examination report.

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

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.

IP Australia can raise a range of objections in an examination report. For a full overview, see our guide on what types of objections IP Australia can raise.

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're 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've 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: Evidence of use

If you've 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 things like sales figures, advertising spend, customer testimonials, media coverage, and examples of how the mark has been used in trade.

This approach can be effective, but it requires substantial evidence and can be time-consuming to prepare. For more detail, see our guide on what evidence of use involves for a trade mark.

Option 2: 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's worth understanding the limitations before you go down this path.

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 your mark is considered descriptive for a broad category of goods, it may not be descriptive when applied to a narrower, more specific subset of those goods. By refining the specification, you may be able to address the examiner's concern without changing the mark itself.

This approach won't work in every case, but it's worth considering - particularly if the mark is only borderline descriptive for certain goods or services.

Option 4: 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 directly descriptive, or where the examiner has taken an overly broad view of what the mark describes.

A trade mark lawyer can review the examination report and advise you on whether there are reasonable grounds to challenge the objection through submissions.

For a broader overview of how to respond to examination reports, read our guide on how to overcome a trade mark examination report.

Choosing the right approach

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

• How long you've been using the mark - If you've 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'll 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.
• 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 can be effective. For example, you might narrow the specification and make legal submissions at the same time.

A trade mark lawyer can help you assess which option, or combination of options, gives you the best chance of success.

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 won't 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 can't overcome the objection?

If you're 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.

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're 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.

Need help?

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

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.