Determining Trademark Descriptiveness
Descriptive terms or phrases used in connection with a trademark generally do not meet the purpose of a trademark; the purpose of a trademark is to distinguish the goods and/or services from one individual or business from the goods and/or services of another individual or business. If a consumer is able to instantly associate the terms used in connection with a trademark, with a quality, feature, function, characteristic, ingredient of the good or service, then that trademark will be deemed to be descriptive and will not achieve trademark registration. This is by definition trademark descriptiveness. The USPTO Trademark Trial and Appeal Board has held that the test to determine trademark descriptiveness is whether a term will immediately convey the knowledge of a quality, feature, function, or characteristic of the goods or services that are associated with the trademark. Therefore, if a proposed trademark immediately conveys information on as little as one characteristic of the good or service, then the entire trademark will be ruled descriptive.
The USPTO examining attorney will determine whether a proposed trademark is descriptive based on the perception of the relevant consumers that will be purchasing the goods or services. Determining who the relevant consumers are is vital. The examining attorney is allowed to use evidence from any competent source in order to determine what the relevant consumers understanding of any given term within the trademark is. This may include interviews from consumers, surveys, the dictionary, newspaper, and any other reports on the topic. In the end, the examining attorney must state a reasonable basis for their determination on whether the proposed trademark lacks distinctiveness.
Examples of Trademark Descriptiveness
Some examples of prior trademarks that have been held to be descriptive include:
- complete and file initial application,
- America’s Best Popcorn! – for popcorn
- Blackcard – for a premium credit card
- Break and Bake – for frozen cookie dough
- Juice Joint – for a juice shop
- Hotels.com – for an online hotel booking service
It is important to understand that because each trademark is different in regards to the terms used, the goods or services associated with the trademark, and the channels of trade used, each reviewing decision will be based on the evidence in front of the examining attorney and not any prior decisions on trademark descriptiveness. Further, trademark registration may still be afforded to a trademark that is descriptive as long as there is consumer acceptance and recognition that the descriptive trademark designates only one source for that product.