Rejection for lack of distinctiveness is one of the most common grounds of refusal in trademark registration, based on Article 11 of the Trademark Law. Such rejections share a common feature: there is nothing wrong with the name itself — the problem is that the name sticks too closely to the goods, so consumers perceive the sign merely as a product description rather than a brand. The typical scenarios are analyzed one by one below.
Scenario 1: Consisting Solely of a Generic Name
Typical situation: applying for the word mark "smart watch" on smart watches in Class 9; or applying, in Class 30, for a sign that coincides with a generic name such as "Wuchang Rice."
Rejection logic: a generic name is public vocabulary of the trade, which every undertaking is entitled to use; granting an exclusive right to one party would deprive competitors of legitimate expression. Item 1, Paragraph 1 of Article 11 expressly prohibits this.
Strategy: there is essentially no value in seeking review of such a rejection; the only way out is to rework the name by adding an inventive element — such as a coined prefix — and refile.
Scenario 2: Directly Describing Product Features
Typical situations:
- Applying for "pure cotton" or "wrinkle-free" on clothing (directly indicating materials or craftsmanship).
- Applying for "fast charging" on chargers (directly indicating function).
- Applying for "crispy" or "low sugar" on snacks (directly indicating taste or quality features).
Rejection logic: these words are direct descriptions of product features for consumers, falling under Item 2, Paragraph 1 of Article 11. The more direct the description and the closer its connection to the designated goods, the more certain the rejection.
Strategies: there are two paths — first, change the mark and refile, transforming the descriptive word into a suggestive or arbitrary one; second, if the sign has been used extensively and has gained market recognition, submit evidence such as sales data, advertising spend, and market surveys in the refusal review to argue that distinctiveness has been acquired through use. The latter has a high evidentiary threshold and a long timeline, and is suitable only for brands that have actually operated for several years.
Scenario 3: Overly Simple Signs
Typical situation: applying for a single circle, a horizontal line, or a single letter or numeral in an ordinary typeface as a trademark.
Rejection logic: an overly simple sign can hardly serve to distinguish source, falling under the catch-all of Item 3, Paragraph 1 of Article 11 for "other signs lacking distinctive character."
Strategy: combine the simple device with words or apply artistic design so that the whole acquires identifiability, then refile.
Scenario 4: Ordinary Advertising Slogans and Felicitous Phrases
Typical situation: applying for slogans such as "Quality First," "Enjoy Life with Benefits," or "Wishing You Prosperity" as trademarks.
Rejection logic: such expressions are everyday language in the public domain, and consumers will not recognize them as indicators of a specific source.
Strategy: if a slogan needs protection, it should be applied for in combination with the brand name (with the brand name carrying the distinctiveness); the pass rate for registering a slogan alone is extremely low.
Lessons Learned
- Distinctiveness rejections are preventable and controllable: stay away from generic and descriptive words when naming, and eighty percent of distinctiveness rejections will never happen.
- Refiling with a new mark is usually more efficient than review: unless you already have years of use evidence, fighting a review head-on is poor value.
- Run an approval-rate assessment before filing, so that distinctiveness problems surface before money is spent.
If you need the above process handled for you, you may book the trademark registrability assessment service of a CNIPA-recorded agent on MyTMBee, with full assistance from document preparation to filing and follow-up.