FREQUENTLY ASKED QUESTIONS Adding Elements to My Trademark to Overcome Confusion or Descriptiveness
You want to file a very short trademark with a word or two. But there’s a problem because a similar mark is in use, or your brief filing is merely descriptive.
Should you add elements to your trademark registration to make it registrable?
Possibly, but there are two sides to that answer.
First, the answer is yes; the more elements, the more registrable your trademark becomes. For example, let’s say you are a software company wanting to register a trademark containing the name Microsoft. Your trademark name search will tell you it is in use, and you cannot use it in your trademark.
THINKING OF TRADEMARKING YOUR BRAND?
What Should You Add?
What if you add something and change it to Microsoft Software Solutions? The answer is still no because you are adding only descriptive words, and Microsoft remains the dominant identifier. Nothing indicates to the consumer that this mark is uniquely yours.
The purpose of your trademark is to enable consumers to quickly identify your brand in the marketplace, only add elements that support that goal. However, it is possible you could come up with compelling and creative elements to make your trademark eligible.
The Other Side of the Coin
You might add too many elements on the other side of the coin. Your application may be trademarkable, but the result is a weak trademark that may be of little use.
If your goal is to prevent trademark infringement, something like a seven-word trademark, while eligible for registration, will mean you can only stop competition using those exact seven words or something very close. A competitor using only some of those words would be beyond your reach.
The more elements you add, the more registrable your trademark becomes, but it also weakens your ability to police trademark infringement or partial use of your brand.
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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.
