Adding Elements to My Trademark to Overcome Confusion or Descriptiveness

Sometimes, you ideally want to file for a very short trademark, maybe a word or two. And during the search, we realize that it’s a problem. There is something problematic out there. There’s either a previously filed trademark application or the mark is just simply descriptive. So the question then we hear often is, maybe we should add something to it to make it trademarkable?

There are two sides to this answer. First of all, yes, usually the more elements you add to the trademark, the more registrable it becomes—unless of course, those elements don’t add anything specific to that name. So for example, let’s say you are a software company, you make software, and you have this crazy idea why don’t I try to trademark the word Microsoft for my services. You would do the search and of course, it would tell you, you know what, it’s taken, you can’t do it. And then you ask, well, what if we add something to it? Like Microsoft Software Solutions? And the answer to that would be still, it’s unregistrable because what you’re adding are descriptive words. They really don’t add anything of substance, anything that your consumers or your customers would be able to remember on top of the name, the dominant word is still Microsoft—and it’s still not registrable.

But sometimes you can actually come up with really interesting and creative things to add to your application that would make it trademarkable.

The other side of the coin, as I mentioned, is sometimes when you add too many things to your trademark application, yes, your application becomes trademarkable, it becomes registrable, but what you’re going to get is going to be such a weak trademark that there’s going to be very little you can do with it.

If your point is that you want to stop your competition from stealing your brand, you need to realize that if you trademark a name that has seven words in it just to make sure that it goes through the trademarking process, that you’d only be able to stop those who copy either those seven words or something very close to those seven words. You wouldn’t be able to say, you know what, out of those seven words, you’re using two, so you should stop doing that because that’s our trademark. The more things you add, the more registrable it becomes, but also the weaker it becomes as to your ability to police partial use of your brand.

• Does My Trademark Need to Match My Company Name? ()
• What Is a Trademark? ()
• Can I Add More Products and Services to My Trademark Application After It Has Been Filed? ()
• Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks) ()
• What Is Conventional Priority? ()
• Can I Change the Trademark Itself After My Trademark Application has been Filed? ()
• How Long Does It Take to Register a Trademark? ()
• Can I Trademark Dictionary Words? ()
• Can I Trademark the Same Brand for Different Products or Services? ()
• Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks) ()
• Can I Trademark a Brand Before It Is Launched? (Intent-to-Use Trademarks) ()
• Is My Trademark Available? ()
• Should I Trademark My Startup's Brand? ()
• In Whose Name Should I Apply For My Trademark? ()
• Will the Trademarks Office Help Me Enforce My Trademarks? ()
• Should I Trademark a Logo Done On Fiverr? ()
• How Much Does It Cost to Register a Trademark? ()
• Should I Trademark My #Hashtags? ()
• Are There Annual Trademark Maintenance Fees? ()
• If I Register My Trademark, Does It Mean No One Can Use It? ()
• Four Things Most Commonly Trademarked (The Trademark Dance) ()
• How Does Trademark Factory's Guarantee Work? ()
• What Are Nice Classes of Goods and Services ()
• Do I Have to Be an American Resident to File in the U.S.? ()
• How Are Service Marks Different From Trademarks? ()
• What Are Oppositions? ()
• 3 Most Important Benefits of Registering Trademarks ()
• Why Register a Trademark in Canada to Get a .CA Domain Name? ()
• What is Post-Allowance Statement / Declaration of Use? ()
• Am I Protected Between the Filing and the Registration of My Trademark? ()
• What Is Post-Registration Statement of Use? ()
• How to Use Trademarks to Create a Sense of Uniqueness for Your Business? ()
• What Goes Into a Trademark Application? ()
• What Happens If You Don't Respond to Correspondence from Trademarks Office in Time? ()
• What Makes a Brand Valuable? ()
• Is Registering a .COM Domain Name Enough to Secure Trademark Rights? ()
• Why Is It Important to Preserve Evidence of Use of My Trademarks? ()
• Do I Need an Agreement with My Logo Designer? ()
• Andrei Mincov's story ()
• What is Madrid Protocol? ()
• Trademark Factory Ultimate package ()
• What Are Official Marks in Canada? ()
• Trademark Factory I Feel Lucky package ()
• How Will a Trademark Examiner Examine My Trademark Application? ()
• Can You Trademark Book Titles? ()
• Trademark Factory All-Inclusive package ()
• Trademarks vs. Trade Names ()
• Look-Alike and Sound-Alike Trademarks ()
• Will the Trademark Examiner Check Other Applied For Trademarks? ()
• Trademarking Words in a Fancy Font? ()
• Will the Trademark Examiner Check Unregistered Trademarks? ()
• You Received an Office Action. Now What? ()
• How Long Is a Trademark Registration Good For? ()
• When Should I Trademark My Brand? ()
• Why is Google the Textbook Example of What Not to Do with Your Trademark? ()
• Should I Claim Color as a Feature of My Trademark ? ()
• What Is the Difference Between Trademarks and Patents? ()
• How Should I List Products and Services in My Trademark Application? ()
• What Is the Difference Between Trademarks and Copyright? ()
• When Should I Trademark My Logo? ()
• What Are the Two Main Reasons My Trademark Application Can Be Rejected? ()
• What Is the Trademarking Process? ()
• Can I Mention Someone Else's Trademark on My Website? ()
• What Is An Acceptable Specimen of Use? ()
• What Are Generic, Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks? ()
• What Is UDRP Uniform Domain Name Resolution Policy? ()
• How Do I Trademark Product Names? ()
• When Am I Allowed to Put TM Next To My Brand? ()
• How Do I Trademark Service Names? ()
• What Are Word Marks, Design Marks, and Combined Marks? ()
• What Should I Know About Trademarking Slogans and Taglines? ()
• Should I Trademark My Name Or My Logo ()
• Are Famous Trademarks Treated Differently From Regular Trademarks ()
• Received an Invoice For International Publication of Trademark ()
• What Should I Do If Somebody Infringes on My Trademark ()
• Do Trademarks Protect Their Foreign Equivalents ()
• What Should I Do If Somebody Accuses Me of Infringing Their Trademark? ()
• Asian Domain Name Scam ()
• What Are Two Biggest Branding Mistakes? ()
• Are Dead Trademarks a Problem? ()
• What Is The Difference Between a TM and an R in a Circle Symbols ()
• What Does Using a Trademark Mean? ()
• How Do I Choose a Great Brand for my Business, Product, or Service ? ()
• What Is Weekly Confusion Watch Service? ()
• Supplemental Register ()
• What Are Ornamental Trademarks? ()
• What Happens If I Don't Renew My Trademark In Time? ()
• What Does Confusingly Similar Mean? ()
• What Is a Trademark Assignment Agreement? ()
• What Does Date of First Use Mean? ()
• What Is a License Agreement? ()
• Why Is Search So Important? ()
• What Are Incontestable Trademarks? ()
• How Do I Check the Current Status of my Trademark Application? ()
• Important Amendments to Canada's Trademark Law ()
• How To Trademark a Name and Logo ()
• Trademarking Strategies For Life And Business Coaches ()
• How Do I Cancel Someone Else's Trademarks? ()
• Why Do Celebrities Trademark Their Catchphrases? ()
• How George Clooney Made $1 Billion Using Trademarks? ()
• Misspellings and Other Changes to Get Around Someone Else's Trademark ()
• How To Protect Your Brand On Amazon? ()
• Dividing a USPTO Trademark Application ()
• 5 Movies with Unbelievable Scenes about Trademarks and Intellectual Property ()
• Trademark Factory's New & Improved I Feel Lucky Package ()
• The Dumbest Advice About Trademarks You Could Ever Give ()
• 5 Things You Should Never Say About Your Brand ()
• Trademarks vs Domain Names ()
• What's Your Brand Worth? ()
• 3 Y's Of Protecting Your Brand ()
• Matrix of Success 2 Things a Business Needs for Success ()
• How Coca Cola Trademarked Their Brand ()
• Trademarks: Certainty vs. Commitment ()