A few trademark-related questions from our IP Strategy Workshop to Staff

FRESH IP Strategy team has recently hosted the first 2020 IP Strategy Workshop to Staff, and we have decided to share a few of the interesting trademark-related questions and answers which were raised and discussed:

Q: Is having a trademark really that important? Why does it matter to me or my business?

A: Yes, it is. For small businesses, it is an essential tick in every investor’s check list. It raises eyebrows and creates problems if you don’t protect it. As your business grows, the brand builds value. Similar brands like Apple and Samsung may compete technologically, but they’re (arguably) quite similar- so they compete on the strength of their brand. It’s cool to own an iPhone. There are other considerations as well. Trademarks can be used to regain ownership of domain names that use your brand for example.

Q: What is deemed to be “too obvious”? Can an absolute opposition for obviousness be overcome?

A: Something is “too obvious” if it is generic or descriptive of what it is i.e. A key is a key, so you wouldn’t be able to trademark it. Similarly, it’s too obvious if it represents something that’s common to an industry or widely known within it. A good example of this is, If you’re filing a trademark for an electric vehicle company, you wouldn’t want your logo to include the scientific symbol for a battery. It would be too obvious. Absolute oppositions refer to marks perceived to be “generic, descriptive, non-distinctive”. In order to overcome an absolute opposition, you must rebut these assumptions (It’s not generic because…. It’s not descriptive because…. It is distinctive because….). This could be done by submitting evidence that the mark acquired distinctiveness through its use. It may be difficult to overcome but it’s not impossible.

Q: Does selecting a class protect me for everything within it or do I have to dictate what is relevant to me?

A: You must select/identify from a class what is relevant to your brand. You’re not automatically covered for everything within the class. This is where having a well written specification comes in handy and why filing a mark yourself can be a bit hit or miss. There are significant differences between jurisdictions in this sense. In Europe you can generally have very broad descriptions of classifications, but in the U.S. you must be very specific.