What Are Descriptive Trademarks?
Descriptive trademarks are words, phrases or designs that describe the characteristics, functions, ingredient, quality, size, uses, or other elements of the product or service. These descriptive words, phrases or designs do not distinguish the source of the products or services and do not function as a trademark. However, context can be an important determining factor in a USPTO examining attorney opinion as to whether your proposed trademark is descriptive or not. For example, a descriptive term that would be trademarks is illustrated by the following use of the term “Toboggan.” If you were going to use “Toboggan” to describe the sled you are going to sell, this would be held to be descriptive of the product and unregistrable. However, if you change the context of the term as used to identify the product and used “Toboggan” to describe a line of designer jeans, this would not be descriptive of the products as associated with the trademark. Changing the context of a given term used for your trademark can alter the decision of the examining attorney as to whether it will be deemed descriptive.
Considerations For Determining Descriptiveness
When the examining attorney looks at a proposed trademark to determine descriptiveness, he or she will look at whether the proposed trademark immediately conveys knowledge of a feature, function, quality, or characteristic of the goods and/or services that will be used with the trademark. This is done from the perspective of the relevant consumers that would be purchasing the product. Even if a trademark is held descriptive, it can be awarded legal protection when there is consumer recognition and acceptance that the descriptive trademark designates only one source for the product. An example of this occurring is with 5-Hour Energy. This is a descriptive term. If you drink this product, you will get five hours of energy from it. However, consumers have given recognition and acceptance that this trademark designates only one source for the product, therefore, a federal trademark registration was issued for this trademark.