When starting out your journey into a trademark registration territory, it is a good thing to consider the question of when you should not file a trademark. The question of when you should not file a trademark may seem like an odd one, but it is very important.
Here in this article, we have identified five conditions when you should not file a trademark. Let’s dive in.
So, you shouldn’t file your trademark:
When the availability of the mark has not been searched
Have you ever imagined how disastrous driving down a highway without any headlights would be? Of course, that’s a very sure way of getting into trouble. That’s exactly what filing without searching can be. Most of the time, you will wait for a few months before your trademark is examined and refused by Trademark Office examiner. This is really a waste of your business time.
The truth is, regardless of whether your application makes it to the official registration, other parties may still petition to cancel your trademark for a few years after registration based upon earlier use. This is the reason it’s in every case better to look into the issue of availability and registrability of your proposed trademark before starting the procedure of registration.
While the Trademark Office website is a good medium for an initial trademark search, consulting with a trademark professional is a good idea before looking into the use of a potential brand.
The unwarranted objection may be ignited by filing
You may have heard that trademark applications can be seen in the Trademarks Office database as they are open for public inspection. This implies that many trademark owners employ watchdogs to look out for any new trademark filings that encroach upon their own trademarks.
Sometimes, it’s best to fly under the radar; not filing a trademark won’t give you the same benefits as official registration. But it does allow you to keep some of the bigger businesses off your back!
The mark is too descriptive, generic or scandalous
Keep in mind: The Trademarks Office may refuse registration of a mark that simply describes an ingredient, quality, characteristic, function, feature, purpose or use of your particular goods or services. A well-informed trademark agent will be able to help with this: they can point out when a mark may be refused on the grounds of being scandalous, immoral or generic and point you in the direction of a more unique and registered trademark.
Using the name GROW FAST within the manure market is an example of a descriptive trademark.
Just like there are exceptions to every rule, there are some descriptive trademarks that may be registered after a long period of use. A good example is BEST BUY.
One must note that if a descriptive mark is already in use and can be proven as such in a US marketplace, such a mark can be registered on the Supplemental Register in the US. Descriptive trademarks are usually not registrable in Canada.
Then again, scandalous or deceptive marks can likewise be refused, in which case a trademark lawyer could point out the respective issues and assist you with creating a more registrable trademark. A very good example of a scandalous trademark is “BIG BOOBS” for restaurant service, or “JEWS GO TO ISRAEL” for a newspaper.
The life expectancy of the mark is brief
From the time the application was filed, the earliest time that one can expect a registration to be officially issued is about 8 months for the US and 18-24 months for Canada. This is without the consideration of possible objections to the registration from 3rd parties or objections to registration (office action) issued by the Trademarks Office. Both of these factors can lengthen the expected time of the registration process.
The implication of this is that if the proposed time of use of the mark is limited, spending resources to file an application may be of little or no value. While one cannot deny the fact that registration comes with a lot of important benefits, the owner of a trademark has the “Common Law Rights” that it can rely on. This comes from the use of the mark in the sale and provision of goods or services.
An example of this may be trademarking the service of holding a single catering event or a single concert that will not be repeated.
The trademark owner already owns a similar registration
Registering a mark for everything under the sun is not necessary. The “related goods” doctrine often protects goods and services that are closely related to current trademarks by the same company.
A very good example of this is that if a one owns a trademark for linden honey, it may not be worth it to file another application to register an equivalent mark for clover honey or even maple syrup as these products are very similar. As a matter of fact, it would probably be viewed as trademark infringement if someone else started selling clover honey or syrup under the same trademark because customers would be deceived into thinking that the products are from the similar source.
There are numerous examples when applying for a trademark may not be necessary.
The most reasonable approach to expanding your brand value and limit the risk of a conflict, especially with competing businesses. In these cases, your trademark agent can provide you with the pros and cons of your particular trademarking goals. Which means you get to spend less time worrying about trademark registration and more time running your business.
Moose and Goose Trademarks is here to help.
In case you have any inquiries regarding the likelihood of logo registration for you and your developing business, please don’t hesitate to contact us.