Descriptive Trademark Refusal

What Is A Merely Descriptive Trademark?

The Trademark Manual of Examining Procedure (TMEP) is a comprehensive guide and reference material for the procedures and practices regarding the prosecution of trademark applications at the United States Patent and Trademark Office (USPTO). It covers a wide range of topics, including the examination of the substantive and procedural aspects of trademark applications.

According to the TMEP, a mark is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.

More specifically, as per TMEP Section 1209.01(b), a mark is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. The trademark must be evaluated not in the abstract, but in relation to the goods/services, the context in which it is being used, and the possible significance that the trademark would have to the average purchaser because of the manner of its use or intended use. It is not necessary that a trademark describe all the purposes, functions, characteristics, or features of a product to be considered merely descriptive; if it describes any single significant attribute, the trademark may be considered merely descriptive.

Examples of merely descriptive marks could be “Creamy” for yogurt, “World’s Best Bagels” for bagels, or “Cold and Creamy” for ice cream. These trademarks directly tell something about the goods and do not require any imagination, thought, or perception to understand the product characteristics.

The TMEP advises that merely descriptive marks are not registrable on the Principal Register under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), unless it has acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f). However, they may be registrable on the Supplemental Register in an application under Trademark Act Section 1 or Section 44, 15 U.S.C. §§1051, 1126.

This is because descriptive marks are initially considered too weak to function as a trademark, which is meant to identify and distinguish the goods/services of one seller or provider from those of others and to indicate the source of the goods/services. However, through extensive use and marketing, a merely descriptive mark may acquire distinctiveness and secondary meaning, becoming associated in the public mind with the trademark owner’s goods or services.

Descriptive Trademark USPTO Office Action

In the United States, the USPTO is the entity that reviews and approves applications for trademarks. A trademark is a unique mark (such as a name, phrase, symbol, design, or combination thereof) that identifies and distinguishes the goods or services of one source from those of others.

During the application review process, the USPTO might issue an “office action,” which is an official communication that outlines problems with the trademark application. An office action can either be “non-final” (first round of refusals and requirements) or “final” (if the issues raised in the first round have not been satisfactorily resolved).

A “descriptive trademark office action” is an office action issued when the examining attorney at the USPTO has determined that the applied-for trademark is merely descriptive of the goods or services it seeks to represent. This is based on the principle that purely descriptive terms should be freely available for use in their primary, descriptive sense and therefore are not afforded protection under trademark law.

Under the Lanham Act, which governs trademark law in the United States, marks that are merely descriptive of the goods or services on or in connection with which they are used cannot be registered on the Principal Register without proof of acquired distinctiveness under Section 2(f) (15 U.S.C. § 1052(f)). The Principal Register is the primary register of trademarks in the U.S. and offers the greatest protection.

Grounds that an examining attorney will cite in issuing a merely descriptive trademark refusal can include:

• Directly Descriptive: The mark directly conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service.
• Descriptiveness in Relation to Goods/Services: The mark is deemed merely descriptive not in the abstract, but in relation to the applicant’s goods or services. It need not describe all purposes, characteristics, or features of the goods or services, but rather just one significant attribute, purpose, or use to be merely descriptive.
• Geographically Descriptive: The mark primarily describes the origin of the goods or services rather than functioning as a source identifier.
• Deceptively Misdescriptive: If a term misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used, and consumers would likely believe the misrepresentation, then the mark can be considered deceptively misdescriptive.

The applicant has an opportunity to respond to the office action by providing arguments and evidence to overcome the refusal. If the trademark has acquired distinctiveness through secondary meaning, i.e., it has become distinctive of the applicant’s goods or services in commerce, it may still be registered.

Considerations If You Have Received a Descriptive Trademark Office Action

If a trademark applicant receives a merely descriptive trademark office action from the United States Patent and Trademark Office (USPTO), it means that the examining attorney has determined that the applied-for mark is merely descriptive of the goods or services it seeks to represent. This action is a hurdle, but not necessarily the end of the line for the trademark application. The applicant has several options to consider:

• 1. Respond to the Office Action: The applicant has three (3) months from the mailing date of the office action to submit a response. This response should ideally contain legal arguments against the examining attorney’s refusal. Applicants can argue that the trademark is suggestive rather than descriptive, or that the trademark has acquired distinctiveness (assuming the applicant has been using the mark for a significant amount of time).
• 2. Submit Evidence of Acquired Distinctiveness: If the trademark has been in use for five years or more, it might be considered to have acquired distinctiveness, also known as secondary meaning. This means that even though the trademark is descriptive, consumers have come to recognize the mark as a source identifier for your goods or services. Applicants can submit evidence of this, such as consumer surveys, declarations, or other proof of exclusive and continuous use of the trademark over a five-year period.
• 3. Amendment to the Supplemental Register: If the trademark is not eligible for registration on the Principal Register, the applicant may consider amending the application to seek registration on the Supplemental Register. Trademarks on the Supplemental Register do not have all the protections of marks on the Principal Register, but registration can provide some benefits and could potentially lead to registration on the Principal Register in the future once the trademark has acquired distinctiveness.
• 4. Amendment to Descriptive Component of the Trademark: If the merely descriptive refusal pertains only to part of the trademark, and the other part is registrable, the applicant may consider amending the application to disclaim the unregistrable portion of the trademark.
• 5. Acceptance of the Refusal and Consideration of a New Trademark: If the applicant agrees with the refusal or does not wish to contest it, they can let the application go abandoned and consider developing a new, more distinctive mark.

Given the complexities of trademark law and the potential impact on your business, it’s highly recommended that you consult with one of our experienced trademark attorneys before responding to an office action from the USPTO. Our attorneys can guide you through your options and help formulate the best strategy moving forward.

Looking for Assistance With Your USPTO Office Action?

Receiving a merely descriptive trademark office action from the USPTO can feel like a setback. However, this is not the end of your trademark journey, but rather an important step that offers a chance to clarify and strengthen your application.

Our experienced trademark attorneys understand the complexities of the trademark process and the importance of your brand to your business. We have a strong track record in assisting clients to effectively respond to office actions, utilizing a range of strategies to argue against refusal, demonstrate acquired distinctiveness, or suggest appropriate amendments.

We encourage you to reach out to us as soon as possible after receiving your office action. Together, we can review the details of your case, assess the best response options, and strategize a plan of action that aligns with your business objectives.

Our goal is to not just overcome the current hurdle, but to equip your trademark with the strongest possible protection, ensuring the integrity of your brand and the value it brings to your business.

Please feel free to contact our law firm to schedule a complimentary consultation. Let us help you navigate this critical phase of your trademark application process.