"BAGUIO STRAWBERRY" and the Descriptive Composite Mark
A cooperative in Benguet files a Philippine trademark application for a word-and-device mark: the words "BAGUIO STRAWBERRY" in bold serif type above a stylized red strawberry with green leaves. The application covers Class 29 for jams, fruit preserves, and processed strawberries, and Class 31 for fresh strawberries. The cooperative claims use since 2019 and submits Instagram posts, a local radio advertisement, and a certificate from a growers' association. The examiner issues a provisional refusal citing descriptiveness and geographical origin, noting that Baguio is a known source of strawberries and that the goods are themselves strawberries. The examiner also questions whether the device element is sufficient to make the composite distinctive. The cooperative has no registered mark and no foreign priority. It wants to keep the words because buyers reportedly recognize "Baguio Strawberry." The response period is two months from mailing, extendible under the rules.
1. Assess the examiner's refusal. Is the composite mark registrable as a whole, and what role does the device element play?
Read the worked answer
The examiner's objection is strong as to the words. "BAGUIO" is a geographical term and "STRAWBERRY" names the goods; together they describe origin and kind. Those words cannot be monopolized as a bare word mark. But the application is for a composite, so the inquiry is whether the mark as a whole is exclusively descriptive in the relevant trade. A stylized strawberry device can supply distinctive matter, but if the words dominate the commercial impression, the examiner may still refuse or require a disclaimer. The cooperative should not argue that "BAGUIO STRAWBERRY" is inherently distinctive. It should argue acquired distinctiveness through use since 2019 and that the device creates a separate commercial impression. The applicant bears the burden of showing that consumers associate the composite with the cooperative. If the examiner accepts the device but requires a disclaimer of the words, that is a workable outcome: registration would protect the composite, not the phrase apart from it. A refusal of the words alone does not necessarily doom the composite, but the applicant must give the examiner a reason to see the device as more than ornamentation.
2. What evidence and procedural steps should the cooperative take in response? Outline a short response strategy.
Read the worked answer
The cooperative should file a verified response within the two-month period, or request an extension before it expires. The response should: (1) acknowledge that the words are descriptive and offer a disclaimer of "BAGUIO STRAWBERRY" apart from the composite; (2) argue that the stylized strawberry device and the overall layout create a distinctive commercial impression; and (3) alternatively, claim acquired distinctiveness through use. Evidence should be organized by year and by channel: sales invoices and receipts showing the composite mark on jams and fresh strawberries; packaging and labels; advertising contracts, radio scripts, and social-media analytics; affidavits from distributors and consumers; awards or growers'-association certifications; and, if feasible, a consumer survey conducted by a qualified researcher. The cooperative should not submit fabricated or unrepresentative social-media posts. It may also consider a separate application for the device alone if the composite strategy fails. If the examiner maintains the refusal, the cooperative can appeal within the period set by the rules.
3. If the composite is registered, can the cooperative stop another Benguet farmer from labeling fresh strawberries "Baguio Strawberry"? Explain the scope of rights.
Read the worked answer
Generally, no. Registration of a composite mark containing descriptive and geographically descriptive words does not give the cooperative the right to prohibit others from using those words in a descriptive, fair, good-faith way. A farmer who truthfully labels strawberries grown in Baguio as "Baguio Strawberry" is using the term for its ordinary meaning, not as a source identifier. The registration would protect the composite as a whole, especially the stylized device, and the cooperative could act against a competitor whose use of a confusingly similar composite suggests sponsorship or origin. It could also sue for unfair competition if a trader makes a false or misleading designation of source. But the cooperative cannot convert a geographical term into an exclusive trademark against local growers. If the cooperative wants to control use of the name by members, it should explore a collective mark or certification mark strategy, with clear rules on who may use the name and under what standards.