Trademark Rejected for "Lack of Distinctiveness"? Four Strategies to Help You Successfully Register

When launching a brand and preparing to enter the market, one of the most common legal stumbling blocks many companies face is submitting a trademark application with high hopes, only to receive a stone-cold notification from the Intellectual Property Office (or local trademark office) stating: “This trademark lacks distinctiveness and cannot be registered.”

What does “distinctiveness” mean? Why might a carefully chosen brand or product name be rejected? If a brand is rejected for lack of distinctiveness, how can it overcome that through legal and commercial strategies and secure trademark protection?

1. Core Concept: What Is “Distinctiveness” in Trademarks?
   
   The core function of a trademark is to “indicate source.” When consumers see this mark in the market, they can immediately recognize that the goods or services come from a specific business, rather than from competitors.
   
   If a mark fails to enable consumers to distinguish your goods or services from those of others, it is legally deemed to “lack distinctiveness.” The reason officials reject such applications is to prevent specific businesses from maliciously monopolizing common terms in the public domain or generic industry terms, thereby safeguarding fair competition in the market.
   
   
2. A Comprehensive Review of Common Mistakes: Why Do Trademarks Lack Distinctiveness?
   
   Common grounds for rejection can be summarized into the following five major categories:
   
   

   Generic industry terms or graphics: Direct use of the common name for a product within that industry. For example, applying for the trademark “APPLE” for a fruit store, or “PC” for computer products. Directly Descriptive Marks: Trademarks that literally describe characteristics of the goods, such as quality, ingredients, functions, uses, or quantity. For example, registering “All-Natural” for milk, “100% Wool” for thermal clothing, or “Cough Relief” for cold medicine. Designs that are too simple or too complex: a plain straight line, a single English letter, a simple geometric shape, or designs with too many words or such cluttered patterns that consumers cannot possibly remember them as trademarks. Commonly used public slogans or well-wishes: For example, “Wishing you good health,” “High quality at a low price,” or “May you enjoy a century of happiness together.” These phrases are part of the public domain and cannot be exclusively claimed by an individual. Common surnames or well-known place names: Using common surnames or widely recognized administrative districts or place names directly as trademarks.

   
   
3. Four Turnaround Strategies: How to Overcome a "Lack of Distinctiveness"?
   
   If your trademark is assessed as risky prior to application, or if you have already received an official office action (examination report), you can seek a breakthrough using the following four specific strategies:
   
   

   3.1	Submit Evidence of Use to Establish "Acquired Distinctiveness" This is the most powerful remedy available under the law. Although certain terms are inherently descriptive, they can undergo a transformation through long-term, intensive, and widespread commercial use, coupled with comprehensive marketing campaigns. As a result, when relevant consumers see the term, they no longer view it merely for its literal meaning, but instead immediately associate it with your specific brand. How it works: Proactively submit an extensive record of your market footprint during the refusal review, hearing, or response to the official examination report. Key Evidence Checklist: - Sales Performance: Invoices, contracts, e-commerce platform backend sales data, and financial statements. - Advertising Investment: TV and online advertising contracts, newspaper and magazine features, social media (FB/IG) page reach, and photos of outdoor billboards. - Awards & Recognition: Records of participation in major exhibitions, and awards presented by the Government or authoritative industry associations.
   3.2	If the plain text is deemed too common or descriptive, the brand owner can use visual design to create distinctiveness for the trademark as a whole. How it works: Incorporate Original Graphics: Pair the non-distinctive text with a highly stylized, original, and creative LOGO design. Artistic fonts and Layout: Move away from standard fonts like PMingLiU (新細明體) or Arial. Instead, opt for specially designed handwritten fonts, unique color combinations, or creative geometric arrangements.
   3.3	Filing a "Disclaimer" If a trademark consists of a "distinctive main brand name" combined with "descriptive text that lacks distinctiveness," the application often gets held up because of the descriptive text. How to proceed: The applicant can submit a Disclaimer to the officials. They should inform the examiner: "I agree that I do not claim exclusive rights to a certain descriptive term in this trademark (e.g., “Workshop”, “Technology”, or a product ingredient name), and others are free to use it; however, I request protection for the [overall visual combination] of the entire trademark and its remaining distinctive parts." This usually allows the trademark to successfully pass the examination.
   3.4	Cross-industry Pivot: Repositioning Goods or Services Classes The distinctiveness of a trademark is always assessed in relation with its designated goods or services. How to proceed: Avoid industries where your brand name simply describes the product. A word that is common or descriptive in one industry can become a very creative brand name when you use it for a completely unrelated product or service. This can greatly increase your chances of getting approved.

   
   
4. Conclusion
   
   When building your own brand, your name and logo design do more than just look good—they also give you legal protection. When choosing a trademark, try not to use words that simply describe your product. Instead, pick original words or names that have nothing to do with what you sell. This is the best way to build a strong legal shield for your brand.

Disclaimer All information in this article is only for the purpose of information sharing, instead of professional suggestion. Kaizen will not assume any responsibility for loss or damage.

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