Under the proviso to Article 11 of the Trademark Law, a sign lacking inherent distinctiveness "may be registered as a trademark if it has acquired distinctive character through use and is capable of being readily identified." In practice, a considerable number of descriptive trademarks have indeed been overturned at review on the strength of use evidence. Below is an analysis of the typical features of such successful cases and how to organize the evidence.
Typical Scenario
The applied trademark is a word or phrase somewhat descriptive of the characteristics of the goods (e.g., terms suggesting quality, taste, or craftsmanship), and is refused as "merely directly indicating the characteristics of the goods" or "lacking distinctive character." The applicant has used the trademark in actual commerce for years and has built up a degree of market presence.
Evidentiary Features of Successful Turnarounds
1. Temporal Continuity
The evidence covers several consecutive years before the filing date, rather than last-minute use shortly before filing. In examination practice, the shorter the period of use, the higher the required intensity of use. Successful cases typically produce sales records and advertising records spanning several years.
2. Scale and Coverage
- Sales volume and sales territory reaching a substantial scale, not limited to small-scale operations in a single region;
- Advertising across mainstream channels (e-commerce, offline, trade fairs, media);
- Third-party corroboration: industry rankings, market reports, and public media coverage.
3. Correspondence of the Sign as Used
This is the most frequently overlooked yet most fatal point: the sign shown in the evidence must be substantially identical to the applied trademark. Where the sign was altered or elements were added or removed in actual use, the probative value of the evidence is greatly diminished. A common feature of successful cases is consistent, unchanged use of the sign over many years.
4. Direct Evidence of Consumer Perception
Some successful cases submitted market survey reports proving that the relevant public had formed a stable association between the sign and a specific source — i.e., the sign had acquired "secondary meaning." Such evidence is costly to produce but carries the greatest probative force.
Cautionary Lessons from Failed Cases
Cases of the same type that failed at review typically stumbled on:
- Fragmentary evidence — a few invoices and photos that cannot establish scale;
- Use occurring after the filing date or concentrated in the few months before filing;
- A sign in the evidence that does not match the applied trademark;
- A mark that is excessively descriptive (e.g., directly using generic industry praise words), which even strong use evidence cannot overcome.
Practical Takeaways
- Use first, file later is the best strategy: if a descriptive trademark must be used, put it into use and accumulate sufficient evidence before applying for registration;
- Evidence awareness must start in daily operations: contracts, invoices, and advertising agreements should fully display the trademark sign;
- Assess first, review second: where the mark is highly descriptive or has been used for less than three years, expectations for a review should be modest; consider a dual-track approach of redesigning the trademark and refiling.
If you need assistance with the process above, you may book a refusal review assessment service with a registered trademark agent on MyTMBee, covering everything from material preparation to filing and follow-up.