Trademark Registrability and Absolute Grounds for Refusal
A trademark is a source identifier, not a description of the goods. The registrability provisions of the IP Code (RA 8293) and IPOPHL examination practice test whether a mark can perform that function. Absolute grounds are examined without comparing a prior right; relative grounds come later.
Core absolute grounds
- Generic terms and terms customary in the trade cannot be monopolized.
- Marks consisting exclusively of signs that designate kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics are merely descriptive and are refused unless distinctiveness is established under the applicable rules.
- Deceptive or misleading marks, immoral or scandalous matter, national flags and official insignia, and marks contrary to public order are barred.
- Shapes that are functional or solely dictated by the goods, and color alone that lacks distinctiveness, face refusal.
- Suggestive, arbitrary, and fanciful marks are inherently distinctive and pass more easily.
Worked example
An applicant seeks 'SWEET MANGO' for dried mangoes in Class 29. The words immediately describe a characteristic (sweetness) and a fruit, so the examiner treats the mark as descriptive. A distinctive stylized mango device might create a registrable composite, but the words would likely need a disclaimer. Adding 'Brand' does not cure descriptiveness. Evidence of long use and consumer recognition could support acquired distinctiveness, but only if properly pleaded and proved.
Traps
Do not confuse suggestive with descriptive: 'COPPERTONE' suggests sun care without describing it, while 'SUNSCREEN' describes it. A foreign-language term is examined for its meaning in the relevant market. Disclaimers do not make an otherwise unregistrable mark registrable. Functional shapes cannot be rescued by trade dress evidence.