Merely Descriptive and Generic Trademarks


Merely Descriptive and Generic Trademarks

If you are starting a new business or considering launching a new product or service, you undoubtedly will be considering the best option for a trademark. During this process business owners often tend to choose descriptive trademarks that may be helpful from a marketing perspective but that may be harmful from a legal perspective.

What Are Weak Trademarks?

A trademark can be one of the most valuable assets a company owns, therefore it is best to create the strongest possible trademark. A trademark that is unique and distinctive, for example, is considerably stronger than a trademark that does not distinguish the product or services from its competitors or the product or service itself. For example, the words Furniture Store would be considered weak and could not be protected for use in relation to the sale of furniture. While it is possible to use a weak trademark, it would not be afforded much legal protection from perceived infringers.

The worst trademarks from a legal perspective fall under the following categories:

Merely Descriptive – Words or phrases that simply describe the function, use or purpose of the product or service may not be considered trademarks at all and may not qualify for exclusive trademark rights. For example, a furniture store named California Furniture Center would have limited trademark rights because the trademark describes the fact that the company sells furniture in California.

Generic – Common words used for categories of goods or services are not eligible for trademark protection because it would prevent other companies from fairly describing their goods or services. For example, if a company were permitted to register Furniture Store for the sale of furniture, all other furniture stores would have difficultly describing their business without committing trademark infringement.

What is Acquired Distinctiveness?

It is possible, however, for a descriptive trademark to become distinctive if a company has established exclusive use of the name over a period of time and consumers now associate the descriptive name with the particular company. For example, Raisin Bran took on a secondary meaning over time as consumers differentiated the various cereals using raisins and bran from the specific cereal sold by Kellogg’s.

Trusted Trademark Attorney

If you are selecting a trademark and are concerned that it may lean toward the descriptive side, please feel free to contact us. Not only can a trademark lawyer help you narrow down a name that is strong and marketable, but we can also help you avoid a potentially costly mistake of settling on a generic or merely descriptive term that will not afford your company the trademark rights you expect.

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