Dealing with a Merely Descriptive Trademark Refusal
Author: Karen Y. Kim
A trademark examining attorney may refuse registration of a trademark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Trademarks are considered to be on a continuum of distinctiveness – fanciful, arbitrary, suggestive, descriptive, and generic – with fanciful or arbitrary marks being the most distinctive and generic words being not distinctive and not protectable as trademarks. There is often a fine line between suggestive and descriptive marks. Suggestive marks suggest a quality or characteristic of the goods or services while merely descriptive marks directly imparts that quality or characteristic.
Merely descriptive marks are not protectable under U.S. trademark law. Protecting generic or descriptive words would prevent competitors from using common words necessary for describing their goods or services. Still, office actions refusing trademark registration on the basis of merely descriptiveness is very common, especially among trademark owners who take it upon themselves to apply for registration without first seeking legal counsel.
Applicants who are faced with a refusal because their marks are merely descriptive have several options, depending on the specific circumstances.
- While descriptive marks are not registrable, suggestive marks are. The line between descriptiveness and suggestiveness can be a fine one, and whether a mark is merely descriptive or suggestive is often a close call. If you can convince the USPTO that your mark is suggestive, the USPTO cannot refuse your mark for lack of distinctiveness. Therefore, it often makes sense to submit a response arguing that the mark is not merely descriptive, but is suggestive of the goods or services.
- Secondary meaning, or acquired distinctiveness, occurs when an otherwise descriptive term has, through long term use or other means, gains a particular significance such that the consuming public comes to know the word as a trademark that points to particular source for the good or services. If your trademark has acquired secondary meaning, you might be able to overcome a descriptiveness refusal by submitting a claim under Section 2(f) of the Trademark Act. One route to secondary meaning is if your trademark has been in substantially and continuous use in commerce for at least five years. Another is to submit evidence of acquired distinctiveness, including advertising expenses, revenue, sales figures, unsolicited media coverage, customer declarations, and market surveys. The caveat to claiming secondary meaning is, if your application is based on an intent-to-use, you would find it difficult to then claim that you had either been using the mark continuously for at least five years or that the mark had garnered sufficient consumer recognition through commercial success or media coverage.
- If you are not able to show that your mark is suggestive or cannot prove secondary meaning, you may still have the option of amending the mark to the Supplemental Register. The Supplemental Register is for descriptive marks that are in actual use and are not eligible to be listed on the Principal Register. While registration on the Supplemental Register does not afford all the rights that you would get if the mark were registered on the Principal Register, you will be able to use the registered trademark symbol, ®, and to block others from using or registering confusingly similar trademarks.
Additionally, if the mark acquires a sufficient degree of secondary meaning while on the Supplemental Register, you can later reapply for the mark to be registered on the Principal Register with a Section 2(f) claim. Applicants typically do this at the five year mark of registration as this when the maintenance fees are due.