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Trademarks: the distinctiveness requirement


In order to obtain a trademark, the chosen brands, trade names, logos or slogans etc need to fulfil a number of conditions of registration. However, the requirement for ‘distinctiveness’ is subjective and can be dependent on a national trademark office’s policy, meaning that trademarks that are accepted for registration in one jurisdiction may not necessarily be accepted in others. Novagraaf's Theo Visser looks at the distinctiveness requirement for registering trademarks.

The first step when selecting a new brand or product name should be to ensure that the name chosen is capable of registration in the relevant class. This should include undertaking a trademark search to verify that the mark selected hasn’t already been registered by another party, and also assessing the mark to ensure that it meets trademark office’s requirements for distinctiveness (the more distinctive the name, the more likely it will be accepted) and descriptiveness (if a name is too descriptive of the goods or services, the trademark office will likely refuse the application).

Distinctiveness can be challenging to assess, as it is a subjective test and so dependent on the policies of the different trademark offices, which are also informed by national case law. However, it is possible to overcome the first instincts of national trademark offices, as two recent US cases illustrate.

BJNI in Armenia
You may never have heard of it, but there is a village in Armenia called Bjni, which has a natural water spring. The US Patent and Trademark Office (USPTO) clearly has, however, as it refused a trademark application for the word ‘BJNI’ by a mineral water supplier, deeming the village to satisfy the requirement of a ‘geographical indication’ (a well-known place). The applicant appealed the decision, arguing that Bjni - a village of only 3,000 inhabitants - is little known outside the region. The USPTO’s Trademark Trial and Appeal Board (TTAB) agreed, clearing the trademark for registration (in the US).

Jiujiteiro sportswear
The applicant for the figurative mark JIUJITEIRO (in special notation), One Nation Inc, had a similar experience. It wished to register the brand name for sportswear; however, Jiujiteiro is the Portuguese term for a practitioner of Jiu Jitsu and the mark was refused by the USPTO at first instance.

In principle, a word mark in special notation is more likely to be accepted by a trademark office as the design should eliminate the distinctiveness shortfall. For example, the addition of a logo or picture can make a chosen mark more distinctive (and less descriptive), thereby increasing its likelihood of registration. The question for the USPTO’s examiners was whether the stylisation of the name JIUJITEIRO was sufficient to make the word distinctive. The examiners found that it was not.

On appeal, the TTAB dismissed the refusal, finding that the quirky cursive handwriting made the mark sufficiently distinctive. However, it was clear in its ruling that this did not mean that One Nation Inc had rights to the word Jiujiteiro. It was the specific embodiment of the brand that had been approved for registration and not the word itself.

For more on trademark registration criteria and advice on overcoming registration requirements, please speak to your Novagraaf attorney or contact us.

Theo Visser is a consultant and partner in the Amsterdam offices of Novagraaf