What is a merely descriptive mark?
Your trademark application might get rejected for a number of reasons. Near the top of the list of possible trademark rejections is mere descriptiveness. But, what exactly is a merely descriptive trademark? A merely descriptive mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services” specified in the trademark application [TMEP 1209.01(a)].
Need to win a merely descriptive trademark argument? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you get your trademark registered.
Why do descriptive trademarks get rejected?
Fair competition is the main reason why descriptive marks are generally not registrable. The principle at work here is that competitors ought to be able to use certain words to sell their products. It would therefore be unfair to give a trademark owner exclusive rights to a descriptive mark which would inhibit competition in the sale of certain goods or services.
How can you avoid selecting a merely descriptive mark?
Search the USPTO trademark database for applications filed for the same mark. Pay particular attention to any trademark filings in your particular class of goods or services since a mark for one product might not be descriptive for an entirely different product in a different class. If you find any dead applications, drill into the Office Actions to see if they contain a Section 2(e) rejection [15 USC 1052(e)].
How difficult is it to overcome a mere descriptiveness rejection?
It is not easy to prevail over a mere descriptiveness rejection. You have one shot, practically speaking. Your first Office Action response must include your best arguments. Don’t make the mistake of going cheap in your first Office Action response with the plan of possibly investing more in responding to a final Office Action.
Statistics show that about 80% to 90% of merely descriptive refusals are affirmed on appeal. This means that you have only a 10-20% shot of overturning a merely descriptive rejection on appeal.
If your first Office Action response fails to persuade the examining attorney to withdraw the refusal, you will receive a Final Office Action. Here are your options in responding to a Final Office Action:
- File a Request for Reconsideration based on new evidence; or
- Appeal to the Trademark Trial and Appeal Board (TTAB).
Again, the probability of a successful appeal over a mere descriptiveness rejection is terribly low.
How do you argue against a Section 2(e) rejection?
Suppose your mark has at least two words that do not relate or belong to each other. One potentially effective argument is to show incongruity between the words. Another approach is to show how the mark actually does not convey information about any features of the goods or services. See the examples below of marks held to be not merely descriptive.
Is the mark suggestive, but not descriptive, of the goods? Can a persuasive argument be made that there is a disconnect between the meaning of the mark and the actual goods or services identified in your trademark application?
Are you dealing with a crowded field of registrations? Have other equally descriptive trademarks been registered?
Does your mark contain multiple words where one word is quite descriptive? In that case, would it make sense to submit a disclaimer for that one descriptive word? Sometimes there is wisdom in picking your battles. Give up the term that you cannot win so that you can protect the remainder of the mark.
Can a design mark containing descriptive words be registered?
A mark containing descriptive words may be applied for as either a word mark (standard character format) or a design mark (logo).
Q: Would applying for an otherwise descriptive mark as a design mark make it more registrable?
A: Only if the stylization of the design mark creates “a separate and inherently distinctive commercial impression apart from the word itself.” In re Sadoru Group, Ltd., 105 USPQ2d 1484 TTAB 2012). An example of a design mark registrable on the Principal Register without requiring any showing of acquired distinctiveness is the CONSTRUCT-A-CLOSET design mark (US Trademark Registration No. 1420070):
What is a suggestive trademark?
One potentially effective approach is to argue that the mark is not merely descriptive, but suggestive. A suggestive mark requires “imagination, thought or perception to reach a conclusion” as to the nature of the goods or services [TMEP 1209.01(a)]. This is contrast to a descriptive mark which immediately conveys something about the product.
What are examples of suggestive marks?
Keep in mind that the degree of connection between the mark and the product depends upon the particular goods or services identified in the application. Here are some examples of suggestive marks in relation to particular products:
- SPEEDI BAKE for frozen dough
- NOBURST for liquid antifreeze
- DRI-FOOT for anti-perspirant for feet
- TOPDOC CONNECT for physician referral and related medical services
- MASTER PLUMBER for plumbing items targeted to do-it-yourself consumers (i.e., purchases who would not be licensed or master plumbers)
- GREEN INDIGO for clothing tops and bottoms (incongruity of the combination of the two terms was a major factor)
- HEALTHY HOME VACUUM for vacuum cleaners with a disclaimer of “VACUUM”
- GLOBAL GROWERS for frozen fruits and frozen vegetables
- PERSON for wearable computers and devices
Can you trademark the combination of two descriptive words?
What if you combined two or more descriptive words to form a new mark? Combining two or more descriptive terms may be registrable if the combination evokes a new and unique commercial impression.
Need to respond to a merely descriptive trademark refusal?
If your trademark application has received a Section 2(e)(1) merely descriptive rejection, contact patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we might help you prevail against this refusal.
