China trademark lawThe purpose of a trademark, from both a legal and branding perspective, is to identify the source of goods. It follows, therefore, that the best trademark is one that is both memorable and distinctive. You want people to associate your brand with your company, not confuse your brand with other brands. You also want to make sure that your brand is more than just a description of the product.

The latter issue seems to trip up a number of companies. If you have a cleaning product, you can call it “The Best Household Cleaner” but you can’t register that as a trademark because “Household Cleaner” is just a description of the product and “The Best” is (in theory) descriptive of the product’s performance. Look at it from the perspective of other market participants: if you could register “Household Cleaner” as a trademark, that means no one else could use the term “household cleaner” on their products and that wouldn’t make sense at all. The same logic applies to the phrase “The Best.”

In China, trademark examiners have always been strict on the issue of descriptiveness; they will reject anything remotely descriptive, whether it’s descriptive of the product, the materials used to make the product, or the function of the product. CTMO examiners will also reject many trademarks that in the US would be considered suggestive (and therefore distinctive enough to be registered).

When we inform clients that their trademark will most likely be rejected by the Chinese Trademark Office (CTMO) as being descriptive, many respond by saying that they can’t or won’t change their trademark (some are already selling products bearing the mark) and they want to know what their options are, because they are still concerned about protecting their mark from trademark squatters in China.

The odds are the same no matter who files for a mark: the “real” company or a trademark squatter. And while the odds are low for descriptive (or suggestive) marks, they are not zero. So should you still try to register a descriptive mark? If you try and fail, it will give you a small amount of added protection, as the decision would be accessible to a trademark examiner. That said, neither the CTMO nor Chinese courts are bound by prior decisions so it’s not guaranteed that a trademark squatter’s future application would be rejected on the same grounds. It’s quite likely, but not guaranteed.

The most likely outcome with a descriptive mark is that the application would be rejected initially and every time thereafter, which would mean that the trademark would effectively be in the public domain in China. Everyone would be free to use the mark, and no one would be able to stop anyone else from using it. If a company’s sole concern is being able to export safely, having an unregistrable trademark is probably okay. But if the company ever wants to market or sell in China, then it could have a thousand copycats and couldn’t do a thing about it.

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Photo of Matthew Dresden Matthew Dresden

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists…

Matthew advises a wide range of businesses on corporate and transactional matters at Harris Bricken, with an emphasis on media and entertainment, international intellectual property, and cross-border work. Matthew provides finance, development, production, and distribution legal services for filmmakers and other creative artists, and has worked on behalf of film studios, cable channels, production companies, video game developers, magazines, restaurants, wineries, international design firms, product manufacturers, outsourcing companies, and computer hardware and software companies. Matthew is widely viewed as an expert in Chinese intellectual property law, and is regularly quoted in publications from the New York Times to The Economist to Variety.

Before attending law school, Matthew worked in Hollywood for eight years as an independent filmmaker, starting as a production executive for Roger Corman’s Concorde-New Horizons Pictures. Before that, he was a computer science graduate student at Stanford University. He has also worked as a journalist, a transportation planner, a food critic, and a website designer. He serves on the board of the Northwest Film Forum, and is currently the immediate past chair of the Washington State Bar Association’s International Practice Section. He is also an adjunct faculty member at Indiana University Maurer School of Law, where he teaches a clinic on legal issues for independent filmmakers.

Matthew was born and raised in the San Francisco Bay Area. He spends his free time watching movies, hiking, cooking spicy food, and relaxing with his wife and daughter.