An Overview Of Descriptive Trademarks & Registrability

Are Descriptive Trademarks Registrable With The USPTO?

In the complex world of intellectual property, particularly for entrepreneurs and business owners, understanding the concept of a descriptive trademark is very important. A descriptive trademark is exactly what it sounds like: it’s a trademark that straightforwardly communicates something about the product or service it’s associated with. This could be anything from the quality, ingredients, and features to the function or purpose of the product or service. For instance, “Hot and Chocolatey” used for hot chocolate or “Fast and On-Time” for courier services are good examples of descriptive trademarks.

However, when it comes to officially registering these trademarks, particularly with the United States Patent and Trademark Office (USPTO), there’s a significant challenge. The USPTO typically does not allow descriptive marks to be registered on its Principal Register because they don’t naturally set apart the products or services of one company from another. This policy is in place to ensure that no single business can monopolize common descriptive terms, which would limit competition.

But there’s a noteworthy exception to this rule. If a descriptive trademark has gained a “secondary meaning” or “acquired distinctiveness,” it might be eligible for registration. What does this mean? Essentially, if a trademark, through extensive and sustained use and significant marketing efforts, becomes uniquely identified in the public’s mind with a particular company’s goods or services, it may be considered for registration. The trademark, despite being descriptive, is recognized by consumers as a specific indicator of a business’s products or services. Once this unique recognition is established and acknowledged by the USPTO, the once unregistrable trademark can be registered on the Principal Register.

There are several examples of descriptive trademarks that have achieved this status:

  • “Sharp” for televisions is initially descriptive, relating to the picture quality. But over time, it has become known as a specific brand.
  • “International Business Machines” for computers, commonly known as IBM, started as a descriptive name but has gained fame and recognition over time.
  • “Windows” for operating system software was once a generic term, but Microsoft’s extensive marketing and long-term usage have made it a distinctive brand.
  • “Holiday Inn” for hotel services, while descriptive of a vacation lodging, has become uniquely identified as a trademark through extensive use.

For any business owner, it’s important to understand that while these trademarks might not have been eligible for registration initially, they have gained distinctiveness over time through continuous use and have built up a significant presence in the market. This transformation from a simple descriptive term to a recognizable brand is a critical aspect of trademark strategy in the business world.

What Is The USPTO Supplemental Register vs Principal Register?

The USPTO’s Supplemental Register is a trademark registration option that business owners and entrepreneurs to be aware of, particularly when their descriptive trademarks don’t meet the eligibility criteria for the USPTO’s Principal Register. The Supplemental Register is specifically designed for trademarks that haven’t yet achieved the distinctiveness required for the Principal Register. This often includes descriptive trademarks that, over a period of time and use, may become uniquely associated with a particular product or service.

What are the benefits of the Supplemental Register?

Registering a trademark on the Supplemental Register allows for certain trademark benefits. One of the key advantages is the ability to legally use the ® symbol with your trademark. This can be a significant signal to competitors and the market at large that you are serious about protecting your brand. Additionally, having your trademark on the Supplemental Register can provide certain legal advantages in court disputes. While it’s true that the Supplemental Register doesn’t offer the full range of protections that come with the Principal Register, its advantages are not to be underestimated.

Being on the Supplemental Register can be a strategic move for a business. It allows the trademark owner to continue to use their mark in commerce, thereby increasing public recognition and association with their goods or services. Over time, this continued use and growing recognition can help the trademark achieve the “secondary meaning” or “acquired distinctiveness” needed to qualify for the Principal Register. In essence, a place on the Supplemental Register isn’t just a consolation; it’s an opportunity for growth and development of the trademark’s distinctiveness in the marketplace.

For entrepreneurs and business owners, understanding the distinction between the Principal and Supplemental Registers, and the strategic use of each, is key in developing a strong, legally protected brand identity. Whether starting with a descriptive trademark that needs time to develop its unique association with your business, or having a distinctive mark ready for the Principal Register, navigating these aspects of trademark law is crucial for effective brand protection and market presence.

Transferring A Trademark From The Supplemental to the Principal Register

When a trademark owner is ready to move their trademark from the Supplemental Register to the Principal Register, a clear understanding of what this entails is important for entrepreneurs and business professionals. This move is possible once the trademark has developed what is known as secondary meaning or acquired distinctiveness.

Secondary meaning arises when the public begins to recognize a product feature or term more as a symbol of the product’s source rather than the product itself. In simple terms, it means that consumers start associating the trademark with a specific provider or company, despite its originally descriptive nature.

To successfully demonstrate that a trademark has gained this distinctiveness, the USPTO looks for various forms of evidence:

  • Duration and Extent of Use: Long-term and widespread use of the trademark in commerce is a strong indicator of acquired distinctiveness. It shows that the trademark has been consistently present in the market and recognized by consumers.
  • Advertising Efforts: The extent of advertising and promotion using the trademark is also a crucial factor. Significant advertising efforts can forge a strong link in the consumer’s mind between the trademark and the goods or services offered, reinforcing the trademark as a source identifier.
  • Consumer Recognition: Concrete evidence like consumer surveys can effectively illustrate that the public recognizes the trademark as an indicator of the source. These surveys need to be carefully designed to accurately gauge consumer perception.
  • Other Evidence: Any other form of evidence that underscores the trademark’s distinctiveness in the marketplace can also be valuable. This could include media coverage, market analysis, or expert opinions.

Once a trademark has developed this level of distinctiveness, the owner can then file a new application for registration on the Principal Register. This trademark application should include a claim of acquired distinctiveness under Section 2(f) of the Trademark Act and be backed by the necessary supporting evidence. If the USPTO finds this evidence compelling, the trademark can successfully make the transition to the Principal Register.

USPTO Office Action Refusing To Register Descriptive Trademarks

When dealing with the USPTO and trademark registrations, entrepreneurs and business owners might encounter what is known as a Section 2(e)(1) Descriptive Refusal. This happens when an examining attorney from the USPTO decides that the trademark you’re applying for is merely descriptive of the goods or services it’s linked to. Essentially, this Office Action is a formal notice refusing the registration of your trademark on the Principal Register.

In the realm of trademark law, “merely descriptive” refers to a mark that directly tells something about an ingredient, quality, characteristic, function, feature, purpose, or use of the specific goods or services. If the examining attorney concludes that your mark fits this description, you will face a refusal under Section 2(e)(1).

However, all is not lost if you receive such a trademark refusal. There are several arguments you can present in response to try and overcome it. One common strategy is to demonstrate that your mark has gained a secondary meaning or acquired distinctiveness. This involves showing that through extensive use, the public now recognizes your mark as a symbol identifying the source of the goods or services, rather than it just being a descriptor.

Another angle is to argue that your trademark is suggestive, not descriptive. A suggestive mark implies a quality or characteristic of the goods or services, but it requires a bit of imagination or thought to make the connection. Unlike descriptive marks, suggestive ones can be registered without the need for proof of acquired distinctiveness.

Alternatively, you might argue against the examining attorney’s interpretation, suggesting that the trademark isn’t descriptive in the way they are proposing. If your mark could have multiple meanings and the descriptive one isn’t the most obvious or immediate, this might form the basis of your argument. In the case of compound terms, you could argue that even if individual elements of your trademark are descriptive, the combined impact of the whole mark isn’t. It’s crucial to understand that each trademark case is unique, and the effectiveness of these arguments will depend heavily on the particular characteristics of your mark and the strength of your evidence.

Examples of Trademarks That Are Descriptive

Descriptive trademarks can pose challenges in terms of registration and protection. Here are some categories of marks that are typically deemed descriptive:

  • Descriptive Words or Phrases: These marks straightforwardly describe an aspect, characteristic, or feature of the goods or services they represent. It could be anything from the quality, ingredients, and features to the function, purpose, or use of the product or service. For example, using “Fast and Reliable” to represent courier services directly describes the nature of the service.
  • Surnames: Marks that are primarily just a surname are often seen as descriptive. An example could be “Johnson” for a cleaning supply brand. However, if a surname has become widely known in the market and acquired distinctiveness, it can qualify for registration.
  • Geographically Descriptive Marks: These marks directly indicate the geographic origin of the goods or services. “New York Pizza” for a pizza restaurant in New York is a typical example. Such marks can be challenging to register unless they’ve gained a secondary meaning.
  • Acronyms and Initials: If an acronym or set of initials is directly descriptive of the goods or services, it falls into this category. For instance, “IBM,” short for “International Business Machines,” initially describes the nature of the business.
  • Descriptive Designs: Some logos or designs that simply depict the goods or services, or a key feature or characteristic of them, may be considered descriptive. These require careful design to avoid being too literal.
  • Merely Laudatory Terms or Phrases: Terms or phrases that just praise the goods or services, like “Best Quality” or “Superior,” are typically seen as descriptive. They usually don’t qualify for registration because they don’t distinguish one product or service from another.
  • Terms Descriptive of the Intended User or Purchaser: For example, the term “Farmers” used for agricultural equipment directly describes the target user group.
  • Terms Descriptive of Channels of Trade or Distribution Method: Like “Retail” for store services, these terms directly describe how the goods or services are sold or distributed.

For those in business, especially in the early stages of brand development, it’s vital to understand these categories to avoid potential legal challenges and ensure their marks are distinct and registrable. Navigating the fine line between descriptive and distinctive is a key part of trademark strategy. If a mark falls into one of these descriptive categories, consider strategies to either develop distinctiveness or choose a mark that inherently stands out from the competition.

Contact Our Charleston Trademark Attorneys

Protecting your brand is very important 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 sometimes a complex process. 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 invite you to contact our law firm by completing our online contact form or giving us a call.  We make every effort to respond to all inquires within one business day.