2018-08-03
When we explore the essential characteristics of a great trademark, we learn that a great trademark must remain distinctive; it must not be descriptive, and it must certainly not be generic. There are a few reasons why a mark should not be descriptive: it is harder to obtain legal protection for them, they are generally provided more narrow protection and it is harder to show infringement by third parties. If you opt for a descriptive trademark, the public must have a secondary association with the mark (or the term) that is independent of the nature of its primary use in the industry.
"Why is that" you may ask, "is it not good if the mark clearly describes the meaning of a relevant industry term?" Here is why using descriptive marks is not a good idea.
A Case Study
Storytelling is great way to provide important information from real life scenarios. Here, we explore a famous case that concerns The Ottawa Athletic Club.
The Basic Facts
The Ottawa Athletic Club, the entity in question, has been running its athletics and fitness-related facility since 1976 under the trademarked name ‘Ottawa Athletic Club’. The facility (the applicant) also filed another trademark application under the title ‘OAC & Design’, which The Athletic Club Group Inc. opposed.
The Athletic Club Group Inc. (the respondent) is the legal owner of the trademark it obtained under the name ‘The Athletic Club and Design’, which it obtained in 2003. The nature of business of The Athletic Club Group is fairly diverse, as it concerns itself with restaurant and snack bar services, physical training services, fitness training, sporting goods, a section of clothing, and health foods.
The Application to Expunge
As a response to The Athletic Group’s opposition to the registration of the applicant’s new trademark ‘OAC & Design’, the applicant instead filed an application that aimed at the removal of the respondent’s original trademark on multiple grounds. The applicant (Ottawa Athletic Club) argued that the respondent’s trademark is obviously descriptive of the nature of its' services; it is closely connected to the type of services it offers; the trademark can possibly be confused with the applicant’s original trademark; and finally, that the trademark isn’t distinctive enough.
The Issue of Descriptiveness
While the respondent (The Athletic Club and Design) argued that the word section of its trademark isn’t the main focus of the trademark, the judge disagreed. The judge believed the word section and the mark as a whole was clearly descriptive of the services that the entity can be associated with.
As a conclusion, it can easily be said that a descriptive trademark is problematic. Although most trademark lawyers and agents might believe that distinctiveness of the mark remains a more obvious chink (and they are true in that assessment of theirs), the issue of descriptiveness mustn’t be undermined either. We encourage you to approach a trademark lawyer or agent to understand the characteristics of a good trademark. Contact our team of professionals for trademark assistance.
