According to trademark law, it is advisable not to use a non-distinctive mark as a brand. This is because such marks are not eligible for registration, and even if they are registered, enforcing trademark rights may prove difficult. For stable trademark protection that prevents third parties from registering or using similar marks, it is better to avoid non-distinctive brand names during the naming stage.
However, trademark registration is ultimately a business tool. If using a non-distinctive brand significantly boosts sales due to marketing strategies, it might not make sense to prioritize trademark registration over business success.
There are cases where non-distinctive marks play a crucial role in brand strategy, especially in industries like food service, cosmetics, and other product categories where branding is highly significant. In such industries, intuitive and straightforward brand names may be preferred depending on trends and brand hierarchy.
For instance, in the food industry, names such as Delicious Milk GT, Bananas Are Originally White, and Really Delicious Jjampong have become popular in recent years despite their lack of distinctiveness.
Even if these marks seem non-distinctive, it is still beneficial to secure their registration through any possible means.
Why Register Non-Distinctive Marks?
You might wonder why it is worth trying to register a non-distinctive trademark when monopoly rights over it are unlikely. However, many trademarks exist in a gray area between distinctive and non-distinctive. Unless a trademark is an obvious generic term (like a product name), whether or not it has distinctiveness can be subjective. Ultimately, only bodies such as the Patent Office, courts, or the Supreme Court can make a final determination.
Once a trademark is registered, it becomes challenging to definitively deny its distinctiveness without a court ruling. Moreover, even non-distinctive marks can become widely known through use. While they may eventually be registrable on their own after gaining fame, having a registered trademark beforehand makes enforcing rights against third parties easier.
How to Apply for Registration of a Non-Distinctive Trademark
- Combine the Trademark with a Logo or Symbol
One of the easiest ways to enhance the distinctiveness of a non-distinctive mark is to combine it with a graphic element, such as a logo or symbol. Under Korean trademark law, registration is denied only for trademarks composed solely of non-distinctive elements. If a mark acquires overall distinctiveness through additional elements, it can be registered.
You can stylize the letters of the trademark or combine them with a separate logo or symbol. However, for successful registration, merely stylizing the letters may not be sufficient; combining the trademark with a distinct logo is usually more effective.
For example, when LG changed its corporate name, its two-letter trademark applications were initially rejected because two-letter combinations were considered simple and common signs. To overcome this, LG combined its trademark with a smiley logo to secure registration. It wasn’t until about ten years later, after gaining significant brand recognition, that LG successfully registered the two-letter trademark on its own.
- Combine the Trademark with Distinctive Text
Another approach is to combine the non-distinctive mark with other text that has sufficient distinctiveness for registration. For example, an application for Delicious Milk GT alone was rejected, but Namyang Delicious Milk GT was successfully registered because the distinctive element “Namyang” was included.
- Modify the Trademark
You can also modify the trademark to create a new coined term that has inherent distinctiveness. This allows for registration without the need for additional design elements.
- Apply for Multiple Versions Simultaneously
Although combining the trademark with other elements can enhance its distinctiveness, it is not ideal in terms of the scope of trademark protection. The best-case scenario is to register the brand name on its own.
For trademarks that fall into a gray area between distinctive and non-distinctive, it may be wise to file two applications simultaneously:- one for a modified version of the trademark (e.g., with a logo or additional text), and
- one for the original text-only trademark.
This approach allows you to evaluate the results of both applications.
If both applications are approved, that is the best outcome. However, even if only the modified version is approved, you can still register it and later reapply for the original text-only trademark. Since you already hold a similar registered trademark, the likelihood of approval for the original mark increases.
Why Trademark Registration Is Crucial
Whether you combine your trademark with a logo or additional text, it is still important to apply for registration, even if the mark is perceived as non-distinctive. Unless the lack of distinctiveness is absolutely clear, obtaining a registered trademark reduces the risk of future disputes and provides more stability for your business. Ultimately, it is advisable to register your brand under any circumstances. Just be sure to strategize how to file your application in a way that maximizes the chances of successful registration.