During examination, a combined mark (word + device) is split into its word and device elements, each of which is compared against prior trademarks. If any single element is found similar, the entire application is rejected. This is the all-or-nothing examination rule for combined marks, and it is the source of a large number of office actions in practice. The typical scenarios and coping strategies are analyzed below.
Scenario 1: Similarity of the Word Portion Leads to Total Rejection
Typical situation: the applicant files a word + device combined mark in which the word portion differs from a prior registered trademark by only one character or is identical in pronunciation, and the designated goods are similar. Although the device portion is an original design and clearly different, the examiner still rejects the entire combined mark on the ground that the word element is similar to the prior trademark.
Examination logic: under Article 30 of the Trademark Law, an application that is identical or similar to another's trademark already registered or preliminarily approved on the same or similar goods is rejected. Every element of a combined mark is a channel through which consumers identify the sign; words in particular carry the calling function, so word similarity alone is sufficient to cause confusion and is not excused by a different device.
Strategies:
- If the device is highly original and genuinely worth keeping, file the device separately as a new application and amend the word portion for a separate filing.
- Arguing in review that the overall appearance of the marks differs significantly usually has limited prospects, except in special circumstances such as a low-reputation cited mark and weak relatedness of the goods.
Scenario 2: Similarity of the Device Portion Leads to Total Rejection
Typical situation: the word portion of a combined mark is entirely original with no prior conflict, but the device portion (e.g., an animal silhouette or a mountain-shaped pattern) is found similar to a prior device mark in composition or artistic treatment, and the entire application is rejected.
Examination logic: device elements are searched and compared by figurative element classification codes; where the overall visual impression is similar, a conflict is found. Applicants often feel wronged that they drew the device themselves — but originality under copyright law does not equal non-similarity under trademark law; the two sets of standards are unrelated.
Strategies:
- Refile the word portion separately (if the elements had been registered separately earlier, this trouble would not exist).
- Redesign the device for differentiation, search prior devices by figurative element codes first, and then file.
Scenario 3: Similarity of the Foreign-Language Portion Leads to Total Rejection
Typical situation: in a three-in-one mark combining Chinese, English, and a device, the English portion is similar to a prior English trademark (e.g., differing by only one letter or corresponding in meaning). It does not matter that neither the Chinese nor the English element is similar to the same cited mark — as long as the English element alone collides with some prior mark, the whole application is rejected.
Examination logic: each of the three elements is searched and compared separately, and the cited marks need not be the same one. The more elements, the more the collision probability compounds.
Lessons Learned
- Separate registration is the optimal solution: file the word, device, and English elements as separate applications; rejection of any one does not affect the others, and the risk of total rejection is isolated rather than compounded.
- Search element by element before filing: search words against words, devices by figurative element codes, and foreign-language elements against foreign-language marks; consider a combined filing only after each element clears on its own.
- Order of remedies after rejection: first immediately file the unproblematic elements separately to lock in a filing date, then decide whether to seek review of the rejected application — so that the window does not stay open for squatters during the review period.
- A combined mark application as a whole is suitable only as a supplementary registration after the word and device have each been secured; it is not suitable as the first filing.
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