The Role of Trademark Significance Analysis in Trademark Query

Trademark inquiry is an important step before trademark application. Through trademark inquiry, you can understand the registration of the applied trademark, avoid blindness and reduce the registration risk. In trademark query, we often mention that the trademark may be rejected by the Trademark Office due to lack of distinctiveness. What is trademark distinctiveness? What role does trademark distinctiveness play in trademark query? The following article will elaborate from several aspects.

1、 What is trademark distinctiveness?

Trademark distinctiveness is the essential feature of trademarks and plays an important role in the legal system of trademarks. Different scholars have different interpretations of the concept of trademark distinctiveness. Generally speaking, trademark distinctiveness refers to the feature that allows consumers to distinguish the supplier of this commodity and service from other suppliers of the same or similar commodities and services when the logo is used in specific goods or services. The distinctiveness of trademarks can be divided into intrinsic distinctiveness and acquired distinctiveness. The so-called inherent distinctiveness means that a certain mark itself has the distinctiveness required by the Trademark Law. The so-called obtainment of distinctiveness refers to the ability or characteristics of a mark that does not have distinctiveness but has been recognized by the market as having the ability to distinguish the source and origin of goods through its long-term use as a trademark. Our country also stipulates in Article 9 of the Trademark Law that "the trademark applied for registration shall have distinctive features, be easy to identify, and shall not conflict with the legal rights acquired by others earlier".

2、 How to distinguish between strong and weak significance?

The theory of distinguishing between strong and weak trademark distinctiveness originated from the United States. According to the difference in the inherent distinctiveness (identifiability) of trademarks, this theory distinguishes between strong and weak trademarks. For a trademark with strong distinctiveness, consumers will directly associate it with the marked goods or services without combining it with product types and service items. The trademark with weak distinctiveness can only connect consumers with the goods or services marked by it if it is combined with the types of goods or services indicated. The traditional way to judge the strength of trademark distinctiveness is to determine the strength of trademark distinctiveness according to the position of the trademark in the inherent distinctiveness system, and the order of the fictitious trademark, arbitrary trademark, implied trademark, and descriptive trademark is from strong to weak.

1. Fictional trademark (FANCIFUL MARK) refers to non intrinsic words, which are created by the obligee from scratch, such as "Haier" refrigerator, "Kodak" film, etc.

2. ARBITRARY MARKS means that although it is an inherent term, it does not directly describe the designated goods and services, such as "BMW" used in cars, "Apple" on mobile phones, and "Great Wall" on wine.

3. SUGGESTIVE MARKS means that they have certain implications for goods or services, but do not directly describe the inherent characteristics of goods and services, such as "Rejoice" used on shampoo and "Shufujia" on soap.

4. Descriptive trademark (DESCRIPTIVE MARK) is also called narrative trademark, which only describes the function, quality, composition and other characteristics of the goods it uses. For example, the "Vision Center" only describes the places where glasses can be purchased.

3、 The Important Role of Trademark Significance Analysis in Trademark Query

（1） Judging whether a trademark lacks distinctive features as a whole by analyzing trademark distinctiveness

In trademark inquiry, the trademark distinctiveness is used to judge whether the applied logo lacks distinctive features, and the logo lacking distinctive features cannot be registered. According to Article 11 of the Trademark Law, the following marks shall not be registered as trademarks:

(1) Only the general name, figure and model of the commodity;

(2) Directly indicating the quality, main raw materials, function, use, weight, quantity and other characteristics of the commodity;

(3) Other lack of obvious characteristics.

At the same time, in the trademark examination and trial standards, the judgment of distinctive features is also specified. To judge whether a trademark has distinctive features, the following should be considered comprehensively:

1. The meaning, call and appearance of the logo itself constituting the trademark (the trademark itself)

2. Trademark designated goods (designated goods/service items)

3. Cognition habits of the public related to the use of goods designated by the trademark (public cognition related to goods/services)

4. Factors such as the actual use of the industry in which the trademark is designated to be used. (Current situation of the industry).

In short, when querying trademarks, it is necessary to specifically analyze whether the trademarks to be queried are lack of significant features as a whole in combination with the trademark itself to be queried, the goods/services of the trademark, the public cognition related to goods/services, and the current situation of the industry. Some trademarks are not obvious in themselves, such as simple lines, ordinary geometric figures, one or two letters A, RO, JT in ordinary forms of expression; some trademarks are not absent in every category, such as ice cream, which is obviously absent in 30 categories of ice cream products, but if used in the ninth category of computers, its significance will be stronger; Some trademarks were originally not lacking in visibility, but will be lacking in visibility after market changes, while some trademarks were originally lacking in visibility, but after use, they can already have a unique corresponding relationship with the corresponding trademarks, and can play a role of differentiation, so there is no lack of visibility.

Therefore, only when we fully understand the significance of the trademark can we analyze and judge whether the trademark as a whole has the above lack of salient features in the goods or services used.

（2） Lock the significant part of a trademark by analyzing its significance

When doing trademark queries, it is particularly important to analyze the significance of the words or graphics in the trademark. We often see that trademarks are composed of several elements, some of which contain elements that are not significant or have weak significance. According to the trademark examination and adjudication standards, a trademark is composed of signs and other elements that do not have distinctive features. If the signs that do not have distinctive features are consistent with the characteristics of the goods or services designated for use, and according to business practices and consumption habits, it will not cause misunderstanding by the relevant public, the relevant prohibition clauses are not applicable, and only the salient parts need to be searched approximately. At the same time, China's trademark review practice also usually uses the so-called "isolated observation, overall observation and important part observation" method to compare the two trademarks. The "important part observation" is the observation of the significant part of the trademark. Therefore, it is particularly important to analyze the significance of the trademark to lock the significant part of the trademark when making the approximate judgment of trademark query.

For example, when querying the text sign "Rejoice shampoo", it is obvious that the word shampoo directly describes the purpose of the commodity in category 3, which is descriptive and lacks significance. Therefore, the prominent part of the sign is Rejoice. When querying the trademark, you should query the prominent part "Rejoice", such as the previous trademark "Rejoice", "Rejoice Cleanser", etc., which are similar. For another example, if some graphics are commonly used for packaging, content or decoration of goods, their background role is relatively weak in the trademark. If the query logo is composed of other people's prior trademarks and such graphics, it should form a similar trademark with other people's prior trademarks.

In fact, according to the standards for trademark examination and adjudication, a trademark is only composed of other people's prior trademarks and signs with weak distinctiveness, including the common name and model of the commodity, words that directly indicate the quality, main raw materials, function, use, weight, quantity and other characteristics of the commodity, and some words that indicate the place where the commodity is produced, sold or used, Adjectives or adverbs that play a modifying role, as well as other words that are less prominent in the trademark, that are easy to confuse the relevant public with the source of goods or services, should be judged as similar trademarks. Unless the meaning or overall difference of the trademark is obvious, which is not easy to confuse the relevant public with the source of goods or services, it can not be judged as similar trademarks. At the same time, if the trademark completely includes the trademark of others with certain popularity or high visibility, which is likely to cause the relevant public to think it belongs to a series of trademarks and confuse the source of goods or services, it will also be judged as a similar trademark.

It can be seen that in trademark query, in addition to judging the overall significance of the trademark, we should first lock the main salient parts of the trademark, and at the same time, we should also have the ability to judge the salient parts of the cited trademark, which requires us to understand the significance of various words, and then accurately lock the main salient parts of the trademark for query.