Under the new Trademarks Act which came into effect June 17, 2019, Trademark Examiners will now assess a trademark as to whether it has inherent distinctiveness.

Inherent Distinctiveness

Inherent Distinctiveness means that the trademark has sufficient features to act as a distinguishable identifier from other sources of goods/services in the marketplace.

For all newly filed trademark applications (and those still pending but filed before June 17, 2019), Examiners will now determine whether a trademark is inherently distinctive relative to the goods and/or services sold under the mark.

Some factors the Examiner will consider under this assessment include: 1) is there use of the trademark in the marketplace by others in the same industry? If yes, this leans towards a finding that the trademark lacks inherent distinctiveness; and 2) if some portions of the trademark are considered not inherently distinctive, is there any component of the trademark that has some inherent distinctiveness? If yes, then the Examiner should not conclude that the trademark lacks inherent distinctivenes.

Overcoming the Objection

An inherent distinctiveness objection may be addressed by 1) providing arguments as to why the Examiner's preliminary assessment regarding distinctiveness is incorrect; or 2) providing evidence of acquired distinctiveness (click here for more information on acquired distinctiveness).

Time will tell as to how widely this type of objection is raised by Examiners, and how difficult it will be to overturn such an objection with arguments alone.

Contact Sander Law to discuss registering your trademark or if you need assistance in responding to an Examiner Report!

The above content is for informational purposes only and is not legal or professional advice.