Is My Trade Mark Too Descriptive?
Descriptive Trade Marks
The function of a trade mark is to serve as a “badge or origin”. When a trade mark is filed, it gives the applicant exclusive rights and the power to prevent others from using the trade mark in the specific classes it was filed in. It is a sign or symbol that is used to distinguish the goods or services of one trader from those another. But not everything can be registered as a trade mark!
A descriptive trade mark typically refers to a trade mark that is directly descriptive of the goods or services for which registration is sought. For example, it would be unreasonable for someone in Australia to trade mark “dress” in class 25 (the class for clothing), as this would unfairly prevent anyone else from being able to use that term in this class as well. A mark that does not distinguish the goods or services of the applicant from another must be rejected if it fails to meet the criterion of distinctiveness.
The Fine Bros
Fine Bros are an extremely popular YouTube channel with 18 million plus subscribers and discovered for themselves how tricky it can be navigating trade marks – especially with a following of millions of people watching every move you make. They post content dealing with subgroups of people reacting to different videos. One of their most popular uploads is titled “YouTubers React to Try to Watch this Without Laughing or Grinning,” a video with currently 51 million views.
In 2016, they received serious backlash from the Internet for trying to file the single word ‘React’ in the trade mark class for entertainment claiming “entertainment services, namely, providing an on-going series of programs and webisodes via the Internet in the field of observing and interviewing various groups of people”. Evidently, many people had a huge problem with this and took to the comment section to flame the Fine Bros for daring to file a trade mark so descriptive. The YouTube community was not amused with the claim because so many people use the word “react” in the title of their videos for similar reaction-based videos online. As a consequence, it was reported the Fine Bros lost three hundred thousand followers from their YouTube channel.
Comments included “soooo. Fine Bros trademarked the word “REACT” so if I tweet the word, does that mean I’ll get fined? Will my tweet be removed? I need answers” and “Short form about the fine bros. Try to extend your brand = good. Try to shut down other reactors = bad”.
A multitude of comments and 200,000 dislikes evoked a response video from the Fine Bros because “the negative response has been so overwhelming”. Eventually, the Fine Bros abandoned their attempt to trade mark “react” in response to the overwhelming backlash and ended their trade mark filing!
Evidently, plenty of frustration can be generated from intellectual property claims that are perceived by the Internet community as “unfair”, such as a monopoly claim for a descriptive trade mark. The ideal trade mark is not descriptive, for example, the iconic “Apple” trade mark would be easy to register as a trade mark because it is a word that is not typically used to describe electronic products, and consequently, a word which other traders would not legitimately want to use to describe their same or similar goods.
If you are a social medial personality, consider the instant and global response of the Internet and how quickly online opinion can escalate. Think carefully about your trade mark before filing and always ask yourself before filing, “is my trade mark too descriptive?”
To decide a trade mark’s inherent adaptability to distinguish, the basic inquiry is whether or not the mark is one which other traders are likely to use, without improper motive, upon or in connection with similar goods.
The question was considered in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555 by Kitto J:
“the question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.”
Take away points
Bear the following factors in mind when you choose your trade mark:
• Your trade mark should be distinctive, or at least capable of being distinctive through use
• A descriptive trade mark is often directly descriptive of the character or qualities of goods or services
• The reference can be a generic term or a word which other traders might legitimately wish to use in connection with their own goods or services
• The ideal trade mark is distinctive, such as the iconic “Apple” trade mark for electronics and technology
• Think carefully about your trade mark before filing and always ask yourself, “is my trade mark too descriptive?”
Lara Alexandra, Legal Assistant and Trade Mark Administrator
We are a team of trade mark attorney and IP specialists based on Gold Coast and Sydney. If you need any assistance with your trade mark, please contact us on 1300 77 66 14.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.