Descriptive Trademark

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Descriptive Trademark

A descriptive trademark is capable of being registered with the U.S. Patent and Trademark Office and functioning as a source of goods.   However, when creating a trademark it is best to aim for strong trademarks instead.  This ensures stronger levels of protection and fewer hurdles to registration. If you decide to utilize a descriptive trademark regardless, then you should know the upside and downside.

Descriptive Trademark Examples

There are countless descriptive trademark examples out there, but some famous brands have also managed to establish acquired distinctiveness with their identifiers. Listed below are some fictitious companies whose trademarks would qualify as descriptive – along with a few real-life companies that have developed secondary meaning.

  • Sun-Away Sunscreen
  • Cool & Breezy Air Conditioners
  • 104 Key Computers (104 Key is a category of keyboards).

Real Examples

  • Coca-Cola (made with ingredients from coca leaves).
  • International Business Machines (sells business machines internationally).
  • Western Digital (located in California and sells tech products).
  • Power Computing (first company to create MAC computer clones).
  • American Airlines (provides flight services in America).

The latter five examples show that acquiring distinctiveness is not an impossible task. Pulling this off, however, does take dedication to establishing a secondary meaning. If you feel your brand has already succeeded in this endeavor, you can file an application for trademark registration to the principal register.

What About Deceptively Misdescriptive Trademarks?

Trademarks that are deceptively misdescriptive, generally cannot be registered.  This means an identifying term or design misdescribes some characteristic of the product (e.g. SoftHide for belts containing no leather). Even though they don’t truly describe the traits of a good, these applications are still treated the same as descriptive trademark applications.

The USPTO will consider three factors when deciding whether a deceptively misdescriptive identifier can be registered:

  • Is the quality, composition, character or function of the good misdescriptive?
  • Are customers likely to believe that the misdescription describes real product characteristics?
  • Would consumers’ purchasing decisions likely be affected by the misdescription?

If the answer to all three of these questions is ‘yes,’ an examining attorney will reject the application as deceptive.

Descriptive Trademark Definition

Unique brand identifiers are meant to help consumers differentiate between your products or services and those from others.  A descriptive trademark presents challenges in this regard because some may see the trademark as merely describing the goods.  This is because a descriptive trademark identifies a characteristic of the product or service in some way.

The USPTO may restrict registration of these terms or only allow them to be registered to the supplemental register.  The trademark ‘Cold and Creamy,’ for instance, features verbiage that can describe any product created by ice cream making companies. It may be unfair to grant a single brand the exclusive rights over such a term.

In addition to difficulty with registration, descriptive trademarks have a variety of other disadvantages:

  • Competitors may not be prevented or discouraged from using your trademark.
  • Descriptive brand identifiers are weaker than other trademarks which is likely to lead repeated trademark infringement
  • Potentially gaining rights involves far more work than typical registration.
  • Higher costs in advertising and marketing are required to gain recognition.
  • It is harder to distinguish your brand from competitors.
  • Trademark litigation to protect your brand is more likely.

The big issue with descriptive trademarks is that they’re not inherently distinctive. This means a consumer wouldn’t necessarily recognize a term or design element as a source identifier upon its initial use. Someone walking by a hamburger stand whose sign read ‘Hot and Juicy Burgers,’ for instance, may understandably think the business had no name at all.

The only brand identifiers weaker than descriptive trademarks are generic trademarks.  Generic verbiage or designs do less than describing a product – they simply present the name of the product. ‘Blue jeans,’ ‘computers’ and ‘motorcycles’ would all constitute generic trademarks. So while generic and descriptive trademarks tend to be weaker trademarks, the following are stronger:

  • Fanciful trademarks: Fanciful trademarks are completely unique. They were created solely to function as a brand. Examples include KODAK and Xerox.
  • Arbitrary trademarks: Arbitrary trademarks already exist, but they’re used in an arbitrary way. They’re registrable because they’re unrelated to the product itself. Apple and Shell are examples.
  • Suggestive trademarks: With suggestive trademarks, there is a link between the brand and this form of trademark, but it requires imagination on the part of consumers. Microsoft (i.e. software for microcomputers) and KitchenAid (i.e. machines that aid in the kitchen) are examples.

Each of these trademark types may be inherently distinctive. Their use decreases the chances of a likelihood of confusion occurring. This doesn’t mean, however, that descriptive trademarks can’t be useful. If you’ve already invested time and money in these identifiers for your brand, there are upsides as well.  For example, descriptive trademarks tend to be more valuable from a marketing perspective because consumers generally know immediately what you are selling.

Can Merely Descriptive Trademarks be Registered?

Merely descriptive trademarks cannot be registered to the principal register but they can achieve registration on the supplemental register.  There are ways, however, that such a brand identifier can graduate to the principal register.

When attempting to register a descriptive term, a disclaimer is common. This grants protection for a trademark – but not to the unregistrable portion.  The fictional brand “Texadome’s Delicious Burgers,” for instance, contains fanciful, descriptive and generic words. “Delicious burgers” obviously cannot be trademarked in relation to the sale of burgers, so the applicant must include a disclaimer to let others know they’re not claiming exclusive rights over those terms. This must be done in the following format:

“No claim is made to the exclusive right to use ‘delicious burgers’ apart from the mark as shown.”

By including such a disclaimer, it’s possible to have descriptive portions of a trademark listed on the Principal Register. However, only the inherently distinctive aspects of the brand identifier will be protected. If the verbiage or design in question creates a distinct commercial impression separate from its individual elements, though, a disclaimer may not be necessary.

It’s also possible for a descriptive trademark to earn acquired distinctiveness. This occurs when a descriptive identifier gains secondary meaning in the minds of consumers. If a farming equipment manufacturer can prove that consumers link their descriptive surname directly to their product, for instance, they may be granted trademark registration on the principal register.

Acquired distinctiveness can occur before or after an application is submitted. If this change has yet to take place, though, the brand identifier will need to first be listed on the Supplemental Register. There are several benefits to a supplemental registration:

Your USPTO application can be geared towards placement on the Principal or Supplemental Register. If you go the former route and your trademark isn’t eligible due to mere descriptiveness, you can amend your submission for the supplemental register. There are about 10,000 supplemental trademark registrations granted each year.

Otherwise a supplemental registration is very similar to a principal registration.  You’ll need to file trademark maintenance documents about five years after being listed on the Supplemental Register. Coincidentally, you can also use five years of continued and substantially exclusive use as evidence of acquired distinctiveness which may get you to the principal register.

What Proves Acquired Distinctiveness?

To get a descriptive trademark on the principal register, evidence of acquired distinctiveness must be submitted. Whether this is your initial submission or a five-year follow-up to listing in the Supplemental Register, the USPTO examining attorney will decide whether your documentation proves that a secondary meaning in the minds of consumers has been established.

Your submitted evidence will be reviewed to determine the extent of your descriptive trademark’s use, the length of time it’s served as an identifier, and amount of advertising. The amount of proof required will vary based on the specific circumstances, but the following evidence is typically considered:

  • Five years of use: Continued and substantially exclusive use for a period of five years can serve as evidence that distinctiveness has been acquired. It’s beneficial to have additional evidence in these cases.
  • Prior registrations: A related prior registration can be used to show acquired distinctiveness. This usually only applies to preexisting trademarks that will be featured on new products and services.
  • Advertising: A large amount of money spent on advertising may tend to prove that consumers now see the trademark as a source identifier.
  • Other evidence: Any other evidence that proves a secondary meaning has been established will be considered. This could include the following:
    • Affidavits and depositions (from consumers, experts, owners, etc.).
    • Market research.
    • Promotional expenditures.
    • Survey results.
    • Customer feedback studies.
    • Media coverage.

There are no concrete rules on just how much evidence is necessary to prove acquired distinctiveness. When submitting proof that your descriptive trademark has earned the secondary meaning, try to be as thorough as possible. Imagine you’re the examining attorney and submit the amount of documentation that you would find convincing.

Merely Descriptive vs Suggestive Trademarks

A suggestive trademark is one stop up from a descriptive trademark. They both describe characteristics of a product or service, but the latter does so directly. Suggestive brand identifiers require imagination on the part of the consumer.  The line can sometimes become blurry.

Imagine a single sun block product with two potential names: SunStop and Solar Goo. The former would likely be considered descriptive since it’s essentially listing characteristics of sunblock. The second option, though, would require a bit of imagination on the part of the consumer. The Federal Circuit attempted to simplify this distinction stating that descriptive trademarks impart information directly whereas suggestive trademarks require some mental pause.

There have been cases when examining attorneys have found a trademark to be descriptive even though it was suggestive. This often occurs with identifiers that are plays on words. You could amend your application for the Supplemental Register, but you’ll miss out on many benefits by doing so. If you think the USPTO is wrong in its initial action, a persuasive response must be filed.

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