Understanding Descriptive Trademark Refusals
In accordance with the United States Patent & Trademark Office (USPTO) and the guidelines outlined in the Trademark Manual of Examining Procedure (TMEP) and the Lanham Act, a trademark may be refused registration on the Principal Register if it is deemed to be merely descriptive, deceptively misdescriptive, or deceptive of the goods or services to which it pertains.
A “merely descriptive” trademark, as per the TMEP and the Lanham Act, refers to a trademark that directly and immediately conveys information regarding the nature, function, quality, or characteristics of the product or service it represents. If a trademark is found to be merely descriptive, it can be denied registration on the Principal Register because such a mark does not inherently distinguish the applicant’s goods or services and does not identify and indicate the source of the goods or services. However, it may be registered on the Principal Register if it has acquired distinctiveness, also known as secondary meaning, indicating that over time consumers have come to associate the descriptive mark with a specific source or provider.
On the other hand, a “deceptively misdescriptive” trademark is one that falsely suggests a connection, characteristic, quality, or geographic origin that the goods or services do not have. This is distinguishable from a deceptive trademark which is more likely to affect the decision of a consumer, leading to material harm. Both deceptively misdescriptive and deceptive marks are not registrable on either the Principal Register or the Supplemental Register, as they can mislead the public or cause confusion.
Merely descriptive trademarks, while not generally entitled to registration on the Principal Register, can still be registered on the USPTO’s Supplemental Register. The Supplemental Register offers some benefits, such as the ability to use the federal registration symbol “®”, and it can provide a basis for registering the mark in foreign countries. Furthermore, a mark on the Supplemental Register can later be moved to the Principal Register once it has acquired distinctiveness.
In conclusion, the type of mark – merely descriptive or deceptively misdescriptive – can significantly impact its registration possibilities on the Principal and Supplemental Registers of the USPTO. These guidelines play a critical role in ensuring that trademarks effectively serve their purpose of identifying the source of goods or services, and are not used to deceive or confuse consumers.
Office Action Refusing To Register A Descriptive Trademark
Under Section 2(e)(1) of the Trademark Act, an examining attorney of the United States Patent and Trademark Office (USPTO) may refuse to register a mark if it is merely descriptive of the goods or services with which it is used. A mark is deemed merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services.
An office action refusing registration of a trademark on the grounds that it is merely descriptive typically arises for several reasons. The examining attorney may determine that the mark describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. For example, if a company selling apples tried to register the mark “Sweet Apples,” an examining attorney would likely refuse it as merely descriptive of a characteristic of the goods.
Similarly, if the mark is a geographic term and the goods or services come from the location described by the term, the mark could be considered geographically descriptive. For instance, a mark like “New York Pizza” could be refused if it’s used for pizza originating in New York.
Another reason for a descriptive refusal is if the mark is a laudatory term or phrase, which means it simply praises the goods or services rather than distinguishes them from those of other businesses. For example, a phrase like “The Best Quality” could be seen as merely descriptive.
Lastly, if the mark consists of a common surname, it may be considered primarily merely a surname, and refused on that basis, as it does not serve the function of a trademark in distinguishing the goods or services of one business from those of others.
In any of these scenarios, an examining attorney would issue an office action under Section 2(e)(1) to refuse registration of a descriptive mark. To overcome such a refusal, the applicant may need to demonstrate that the mark has acquired distinctiveness or consider other strategic responses depending on the specifics of the refusal.
What Is a Merely Descriptive Trademark?
A “merely descriptive” trademark is a term used in trademark law that pertains to a mark which directly and immediately describes the nature, function, qualities, or characteristics of a product or service. This concept is critical in trademark law because descriptive marks are not inherently distinctive, and thus, cannot function as trademarks unless they acquire secondary meaning. Acquiring secondary meaning signifies that consumers have come to identify the descriptive term or phrase not just with the underlying product, but also with its manufacturer or provider, and consider it as a brand name.
For example, a business selling fresh fruits could not successfully register the trademark “The Best Fresh Fruits” for its goods because this phrase merely describes the quality and nature of the goods. Similarly, “Cold and Creamy” would likely be considered merely descriptive for ice cream products, as it merely describes the characteristics of the product. “Fast and Reliable” for courier services or “Crunchy” for potato chips would be other examples of merely descriptive trademarks, as these phrases describe the attributes of the courier services and the potato chips, respectively.
These types of trademarks, because they directly describe the goods or services they’re related to, cannot be registered on the Principal Register without a showing of acquired distinctiveness or secondary meaning. This policy prevents a business from limiting competition by securing a trademark that is simply descriptive of the product or service being offered, which should be freely available for all businesses in a particular field to use.
Descriptive Symbols and Images Used As Trademarks
Similar to word marks, symbols and images used as trademarks can also fall into the category of being “merely descriptive” under trademark law. A merely descriptive symbol or image is one that visually conveys direct information about the nature, characteristics, quality, or other attributes of the related product or service. As with descriptive word marks, these symbols or images generally do not qualify for registration on the Principal Register of the USPTO because they do not inherently identify and distinguish the source of the goods or services.
However, there are exceptions. If the symbol or image has acquired distinctiveness, also known as secondary meaning, it could be eligible for registration on the Principal Register. Acquiring distinctiveness means that, through extensive use in commerce, consumers have come to identify the symbol or image specifically with the goods or services of the applicant. The USPTO will require evidence such as sales data, advertising expenditure, consumer surveys, or other pertinent information to substantiate the claim of acquired distinctiveness.
In cases where a merely descriptive symbol or image has not yet acquired distinctiveness, it can be registered on the USPTO’s Supplemental Register. Registration on the Supplemental Register offers several benefits, such as the right to use the federal registration symbol ®, and it may serve as a basis for obtaining registration in foreign countries. Furthermore, a symbol or image on the Supplemental Register could potentially move to the Principal Register after acquiring distinctiveness through use in commerce over time.
So, while merely descriptive symbols and images face challenges in obtaining registration, they are not entirely precluded from registration under U.S. trademark law. Their eligibility for registration depends on whether they have acquired distinctiveness or can be registered on the Supplemental Register.
Self Laudatory Terms, Slogans and Phrases are Descriptive
Self-laudatory terms, slogans, and phrases used as trademarks are subject to the same registration rules as other types of trademarks under the guidelines of the United States Patent and Trademark Office (USPTO). If a term, slogan, or phrase is self-laudatory, meaning it makes a claim of superiority or excellence, it could be considered merely descriptive or even potentially deceptive, depending on the nature of the claim and the goods or services it is associated with.
If the self-laudatory phrase merely describes a characteristic or quality of the product or service, it could be viewed as merely descriptive. For example, a coffee shop trying to trademark the slogan “Best Coffee in Town” might face challenges because this phrase merely describes a perceived quality of the product, namely that it is the best. As a general rule, merely descriptive marks are not registrable on the Principal Register unless they have acquired distinctiveness, or secondary meaning, showing that consumers associate the phrase with a specific source.
However, it’s worth noting that not all self-laudatory phrases will be deemed merely descriptive. If the phrase is deemed to be puffery, or an exaggerated claim of superiority that no reasonable consumer would take literally, it might be inherently distinctive and hence registrable on the Principal Register. For example, a trademark like “World’s Best Coffee” might be seen as a form of puffery since it is an exaggerated claim of superiority that consumers are unlikely to take literally.
In any case, self-laudatory phrases that are merely descriptive and have not acquired secondary meaning can still be registered on the USPTO’s Supplemental Register. This allows the owner of the mark to use the federal registration symbol ®, and can serve as a basis for obtaining registration in foreign countries. It also provides the possibility for later registration on the Principal Register once it has acquired distinctiveness through use in commerce. Thus, while self-laudatory terms, slogans, and phrases may encounter some obstacles during the registration process, they are not completely barred from registration.
Composite Trademarks Using Descriptive Terms
A composite trademark combines multiple elements such as words, slogans, symbols, or designs into a single trademark. If the composite mark includes a merely descriptive term, the ability to register the mark on the Principal Register of the United States Patent and Trademark Office (USPTO) depends on several factors.
When evaluating a composite mark for registration, the USPTO considers the mark as a whole. Even if part of the mark is merely descriptive, the mark could still be registrable if the composite mark, taken as a whole, creates a distinct commercial impression separate from the descriptive part.
For instance, if a descriptive term is combined with a unique symbol or word that is distinctive, the composite mark could be registrable because the distinctive element can create the necessary differentiation from other products or services. The distinctive element would need to be the dominant part of the mark, meaning that it is the part that would likely make the strongest impression on consumers.
If the composite mark is deemed merely descriptive as a whole, it may still become registrable on the Principal Register if it has acquired distinctiveness or secondary meaning. This means that through extensive use in commerce, consumers have come to recognize and associate the composite mark with a specific source or provider.
However, if the mark is considered merely descriptive as a whole and hasn’t acquired distinctiveness, it may still be registered on the USPTO’s Supplemental Register. Registration on the Supplemental Register affords some legal protections and can be a stepping stone to eventual registration on the Principal Register once the mark has acquired distinctiveness.
In conclusion, while the inclusion of a descriptive term can pose challenges for the registration of a composite mark, it does not preclude the possibility of registration on the Principal Register, particularly when considered in conjunction with other elements of the mark or when it has acquired distinctiveness.
Disclaimer of Descriptive Terms
The Trademark Manual of Examining Procedure (TMEP) under U.S. trademark law allows for the registration of a composite mark even if it contains descriptive components. If a mark is made up of multiple elements, and one or more of those elements is merely descriptive of the associated goods or services, the USPTO may require a disclaimer of the descriptive portion.
A disclaimer in this context is a statement that the applicant does not claim exclusive rights to use the disclaimed term separately from the mark as a whole. In other words, the applicant acknowledges that the disclaimed term is merely descriptive and therefore not inherently distinctive. The disclaimer does not physically remove the term from the mark or alter the appearance of the mark in any way. Instead, it affects the rights associated with the mark.
For example, if a business applies for a trademark for the name “Lightening Bolt Chips” for a brand of potato chips, the USPTO would likely require a disclaimer of the term “Chips,” since this word is merely descriptive of the underlying product. The disclaimer would thus mean that while the company could enforce rights in the phrase “Lightening Bolt Chips” as a whole, it could not exclude others from using the word “Chips” on its own.
Disclaimers allow for the protection of the composite mark while ensuring that descriptive terms remain available for use by others in the industry. Therefore, while merely descriptive terms are not usually registrable on their own, when they are part of a larger mark, a disclaimer may enable registration on the Principal Register by acknowledging the limited scope of protection for the descriptive element. It’s important to note, though, that if the mark as a whole is deemed merely descriptive, a disclaimer won’t make it registrable. The mark must have a distinctive element beyond the disclaimed, descriptive term.
Using Misspellings and Abbreviations to Avoid A Descriptive Refusal
When considering the registration of a trademark, the United States Patent and Trademark Office (USPTO) closely evaluates whether a proposed mark is merely descriptive of the goods or services it is associated with. Sometimes, applicants may attempt to avoid a merely descriptive refusal by the USPTO through the use of misspellings or abbreviations of descriptive terms in their trademarks.
However, the USPTO applies what is known as the doctrine of “equivalents,” which holds that a word and its phonetic equivalent are legally equivalent and thus indistinguishable. This means that misspellings or phonetic equivalents that bring to mind descriptive words would still be considered merely descriptive. For example, if an ice cream company wanted to register the name “Kreamy Kone,” it would likely be considered merely descriptive despite the creative spelling, because it sounds like “creamy cone” and directly describes a characteristic of the product.
Similarly, abbreviations or acronyms that are understood by consumers to represent descriptive terms could also be considered merely descriptive. If the abbreviation or acronym immediately conveys knowledge of qualities, features, or characteristics of the goods or services, then it would be refused registration on the Principal Register unless it has acquired distinctiveness.
While misspellings, abbreviations, and creative phonetic variations can sometimes add a distinctive character to a trademark, they cannot be used to bypass a merely descriptive refusal if the commercial impression of the term remains descriptive. It’s therefore important to consider this when choosing a mark to ensure that it is not merely descriptive and that it will serve effectively as an indicator of source in commerce.
Deceptive and Deceptively Misdescriptive Trademarks
Under Section 2(e)(1) of the Trademark Act, a trademark may be refused registration if it is found to be deceptive or deceptively misdescriptive of the goods or services it represents.
A trademark is considered “deceptively misdescriptive” if it misdescribes a quality, feature, function or characteristic of the goods or services with which it is used, and consumers are likely to believe the misrepresentation. The misdescription could mislead or confuse consumers, but it doesn’t necessarily have to materially affect their purchasing decision. For example, if a clothing company tried to trademark “Silk” for goods that are not made of silk, the mark could be deemed deceptively misdescriptive, as it may lead consumers to believe that the goods are made of silk.
On the other hand, a trademark is considered “deceptive” if it misrepresents the nature, characteristics, qualities, or geographic origin of the goods or services, and the misrepresentation is likely to affect the decision of a reasonable consumer to purchase the goods or services. For instance, using the term “Champagne” for a sparkling wine that does not come from the Champagne region in France could be considered deceptive because consumers could be misled into thinking the wine is of a certain quality or origin, which could materially influence their purchasing decision.
Both deceptive and deceptively misdescriptive marks are generally barred from registration on either the Principal Register or the Supplemental Register due to the potential harm they may cause to consumers. The distinction between the two lies in the extent of the potential harm to consumers, with deceptive marks posing a greater risk of causing material harm. The goal of these regulations is to ensure a fair marketplace and to prevent confusion or deception of consumers.
Contact Our Chicago Business Attorneys
Navigating the intricacies of trademark registration can be challenging, especially when facing an office action refusing registration due to a descriptive mark. Our business attorneys have experience in dealing with a office actions issued by the USPTO in connection with descriptive trademarks.
If you have received a refusal office action due to your mark being merely descriptive, we invite you to reach out to us for assistance. Our team can provide an analysis of your situation, advise on potential responses to the office action, and explore strategies for demonstrating that your mark has acquired distinctiveness or for adapting your mark to meet the USPTO’s requirements.