What Is A Descriptive Trademark?
A descriptive trademark is a type of trademark that clearly and directly communicates information or describes some aspect, characteristic, or feature of the goods or services it represents. This may include the quality, ingredients, features, function, purpose, or use of the product or service. For example, “Cold and Creamy” for ice cream or “Fast and Reliable” for courier services could be considered descriptive trademarks.
Are Descriptive Trademarks Registrable?
When it comes to their registrability on the Principal Register of the United States Patent and Trademark Office (USPTO), descriptive trademarks face a significant hurdle. As a general rule, the USPTO does not allow the registration of descriptive marks on the Principal Register because they don’t inherently distinguish the goods or services of one company from those of another. The underlying reason for this is to prevent one business from unduly restricting competition by gaining exclusive rights to use common descriptive language.
However, there is an exception to this rule. If a descriptive mark has achieved what is known as “secondary meaning” or “acquired distinctiveness,” it may be eligible for registration on the Principal Register. Secondary meaning is when the trademark, through substantial use and significant marketing efforts over time, has become uniquely associated in the public mind with the goods or services of the specific business. In other words, despite its descriptiveness, consumers have come to recognize the trademark as a source identifier for that particular business. Once this is proven to the satisfaction of the USPTO, a previously unregistrable descriptive trademark could be registered on the Principal Register.
Here are a few examples of descriptive trademarks that, after acquiring distinctiveness, have been registered on the Principal Register of the USPTO:
“Sharp” for televisions: Initially, the term “sharp” could be considered descriptive, relating to the sharpness of the picture quality on the TV. However, over time, it has acquired distinctiveness and is now recognized as a brand name.
“International Business Machines” for computers: This is a descriptive phrase that directly states what the company does, but “IBM” is now a famous trademark due to its long-term use and recognition in the market.
“Windows” for operating system software: While initially a generic term for the graphical ‘windows’ used in many graphical user interfaces, Microsoft’s long-term use and marketing of the Windows brand has led to it being recognized distinctly as a source of their software products.
“Holiday Inn” for hotel services: This term describes a kind of inn one might stay at during a holiday or vacation. However, it has been used so extensively that it has acquired secondary meaning and is now a registered trademark.
Remember, these trademarks likely would not have been eligible for registration when they were first used, but over time, they have become distinctive through their use and the goodwill they’ve built up in the marketplace.
Descriptive trademarks that are not eligible for registration on the Principal Register of the USPTO can often be registered on the Supplemental Register. The Supplemental Register is designed for trademarks that are not (yet) distinctive enough to qualify for the Principal Register, which often includes descriptive trademarks. The Supplemental Register offers some of the benefits of trademark registration, including the ability to use the ® symbol and providing some advantages in court disputes.
While it doesn’t offer all the protections of the Principal Register, a listing on the Supplemental Register can be a valuable step. It allows the trademark owner to continue using and building recognition for their mark, which may in time achieve the required “secondary meaning” or “acquired distinctiveness” to allow for registration on the Principal Register.
Move To The Principal Register
A trademark owner can seek to move a trademark from the Supplemental Register to the Principal Register once the mark has achieved secondary meaning or acquired distinctiveness.
Secondary meaning occurs when, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. In other words, consumers have come to identify the mark with a particular source or provider, despite the mark’s descriptive quality.
To demonstrate that a trademark has acquired distinctiveness, the USPTO typically looks for evidence such as:
The duration and extent of use of the mark in commerce: Long-term and widespread use can support a claim of acquired distinctiveness.
The duration and extent of advertising using the mark: Significant advertising and promotional efforts can help create a connection in consumers’ minds between the mark and the source of the goods or services.
Consumer surveys or other evidence of consumer recognition: Surveys can be a powerful way to demonstrate that consumers recognize a mark as a source indicator.
Any other evidence that symbolizes the distinctiveness of the mark in the marketplace.
After a trademark on the Supplemental Register has acquired distinctiveness, the owner can file a new application for registration on the Principal Register. This application must be accompanied by a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, along with the necessary evidence. If the USPTO finds the evidence sufficient, the mark can be moved to the Principal Register.
It’s important to note that this process can be complex and nuanced, so it’s generally advised to work with our experienced trademark attorneys when attempting to move a mark from the Supplemental Register to the Principal Register.
USPTO Office Action – Section 2(e)(1) Descriptive Refusal
An examining attorney from the USPTO will issue an Office Action based on Section 2(e)(i) of the Trademark Act when they believe that the trademark applied for is merely descriptive of the goods or services it’s associated with. This Office Action is essentially a formal refusal to register the trademark on the Principal Register.
In the context of trademark law, “merely descriptive” means the mark directly conveys information regarding an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. If the examining attorney determines that a mark fits this description, they will issue a refusal to register the mark under Section 2(e)(1).
If an applicant receives a merely descriptive refusal, they can respond with several arguments to try and overcome the refusal. One common argument is to show that the mark has acquired distinctiveness, also known as secondary meaning, through substantial use over time. This means that the public has come to recognize the mark as identifying the source of the goods or services, rather than merely describing them.
The applicant might also argue that the trademark is suggestive rather than descriptive. A suggestive trademark requires a leap of imagination or thought to connect it to the goods or services, and therefore can be registered without proof of acquired distinctiveness.
Another potential argument is to demonstrate that the trademark is not descriptive of the goods or services in the manner the examining attorney suggests. For instance, if the term could have multiple meanings and the descriptive interpretation isn’t the most common or immediate one, this could be used as a point of argument.
Finally, if the trademark is a compound term, the applicant might argue that while individual components of the trademark might be descriptive, the overall impression created by the mark as a whole is not.
However, each case is unique, and the success of these arguments will depend on the specifics of the mark and the evidence provided. It’s generally advisable to consult with an experienced trademark attorney to navigate this process.
What Types of Marks Are Typically Deemed Descriptive?
In the context of trademark law, several types of marks can fall into the descriptive category:
Descriptive Words or Phrases: These directly describe some aspect, characteristic, or feature of the goods or services it represents. This could include the quality, ingredients, features, function, purpose, or use of the product or service. For example, “Fast and Reliable” for courier services.
Surnames: Marks that are primarily merely a surname are generally considered descriptive. For instance, “Johnson” for a brand of cleaning supplies. However, if a surname has acquired distinctiveness, it can be registered.
Geographically Descriptive Marks: These are marks that primarily indicate the geographic origin of the goods or services. An example could be “New York Pizza” for a pizza restaurant located in New York.
Acronyms and Initials: If an acronym or initialism is merely descriptive of the goods or services, it can fall into the descriptive category. For instance, “International Business Machines” abbreviated to “IBM” could be considered descriptive for a company that makes business machines.
Descriptive Designs: Some logos or designs that merely describe the goods or services, or a feature or characteristic of them, may be considered descriptive.
Merely laudatory terms or phrases: These are terms or phrases that simply praise the goods or services, such as “Best Quality” or “Superior.”
Terms that are descriptive of the intended user or purchaser of the product, such as “Farmers” for agricultural equipment.
Terms that are descriptive of the channels of trade or method of distribution, such as “Retail” for a store services.
Do You Need Trademark Registration Assistance?
Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.
Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.
But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.
Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.
We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.