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Published: Sep 9, 2021

Updated: Dec 8, 2023

How To Avoid Using a Descriptive Trademark

By Andrew David Easler, Esq.

Published: Sep 9, 2021

Updated: Dec 8, 2023

Can you imagine spending years of your life working to build the perfect image of your company, products or services only to realize that you cannot successfully protect the brand that you have so carefully built? That is where the importance of selecting a trademark which is not descriptive comes into play.

A descriptive trademark is something that can easily be avoided, however it is important to know how trademarks are categorized in order to be better equipped with the knowledge of how to make your trademark the strongest that it can be. The consequences of having a descriptive trademark can include the loss of protection of the intellectual property as well as potential economic losses.

How are trademarks categorized?

On the subject of trademarks, it is important to know that trademarks are categorized according to a “Distinctiveness/Descriptiveness Continuum.”[1] Trademarks can be categorized as either being Generic, Descriptive, Suggestive or Arbitrary.[2]How a trademark is categorized according to the continuum is important, as certain categories of trademarks are unregisterable or are considered to be weak trademarks.

A “generic” trademark is the weakest on the Distinctive/Descriptive Continuum and consists of a symbol or expression that is commonly used in our language which cannot distinguish a company or product from other products or companies that market the same product or service, and therefore cannot be considered a brand, nor be registered.[3]

Next on the continuum are “descriptive” trademarks, which is a word or set of words that are usually used to describe the product or service that is being marketed.[4] “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services[5]”.

Suggestive trademarks, which are stronger than descriptive trademarks,are those which “require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.[6]” Thus, a suggestive trademark differs from a descriptive trademark, which immediately tells something about the goods or service.  For example, the trademark “TINT TONE” was held  to be suggestive for hair coloring.[7]

The strongest category of trademarks are those which are arbitary or fanciful. Arbitrary trademarks “comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services[8]  For example: APPLE being used as a trademark for computers and OLD CROW being used as a trademark for whiskey.[9]Fanciful trademarks are those which are “invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language.”[10]

Why is it important to avoid descriptive marks and how can you avoid them?

Descriptive marks are problematic, weak, and can be extremely difficult to register.  According to the Lanham Act;  a“mark which when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them” cannot be registered on the Principal Register.[11] Therefore, you should avoid using a trademark that is likely to be considered descriptive.Instead, the focus should be on using a distinctive trademark,which is determined in connection with the product or service that the trademark is being used in connection with[12].

The best practice for avoiding a descriptive trademark is to select an arbitrary and distinctive brand. Fanciful, arbitrary, and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness.[13]In practice, selecting a trademark which does not describe and is unrelated to the type of product or service that it is being used in connection with the trademark is one way that you can minimize the risk of having your trademark being considered “descriptive.”

Consequences of having a descriptive trademark

In the event that the United States Patent & Trademark Office (USPTO) examining attorney that has been assigned to your application refuses registration based upon your mark being merely descrptive, there are still options available.

Depending upon the circumstances surrounding the grounds for the refusal, a trademark attorney may be able prepare a substantive response which successfully overcomes the examining attorney’s grounds for refusal. Alternatively, a descriptive trademark may be eligible for registration on the Supplemental Register.[14]

A trademark that is registered on the Supplemental Register is still allowed to use the registration symbol “®” or the “Reg. U.S. Pat. Off.” abbreviation to discourage would-be infringers and also allows for the mark to be registered in certain countries. Most importantly, a trademark on the Supplemental Register still allows a holder to obtain injunctive relief, monetary damages and profits that were wrongfully earned from an infringing party. Unfortunately, trademarks on the Supplemental Register do not provide for the presumption or constructive notice of ownership in connection with a litigation proceeding and do not imply the exclusive rights to the use of the mark. Additionally, marks on the Supplemental Register cannot later support a claim for incontestability status and cannot be registered with the U.S. Customs & Border Protection which acts to exclude the importation of counterfeit products.

 

References:

[1]TMEP 1209.01 [2]Id. [3]TMEP 1209.01(c) [4]TMEP 1209.01(b) [5]See, In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) [6]TMEP 1209.01(a) [7]See, In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966)

[8]TMEP 1209.01(a) [9]See, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) [10]TMEP 1209.01(a) [11]15 U.S.C. 1052(e) (2020) [12]See, Remington Products, Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580 (Fed. Cir. 1990) [13]TMEP 1209.01(a) [14]TMEP 801.02(b)

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A real estate attorney specializes in property law, helping clients navigate the complexities of buying, selling, and managing real estate, ensuring that transactions comply with state laws and regulations, and providing protection and peace of mind.

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They also assist in distributing the assets and formally closing the estate, ensuring all legal and financial responsibilities are met, simplifying the complex probate process, honoring the decedent's wishes, and providing clarity and support to the beneficiaries.

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Wills & Trusts

Will and trust attorneys help draft legal documents to ensure their clients' wishes for asset distribution are executed correctly. They draft personalized and legally compliant wills to designate beneficiaries, appoint executors, and establish trusts for asset management and distribution. It is important to note that wills and trusts are an integral part of the estate planning process.

Responsibilities of wills and trust attorneys include providing legal advice and guidance related to asset protection, minimizing tax obligations, facilitating efficient wealth transfer to designated heirs, offering advice on appointing guardians for minor children, and drafting healthcare directives for unforeseen circumstances.

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Estate Planning

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Experienced attorneys offer personalized legal advice, tailoring strategies to meet individual client needs, and assist clients in navigating complex laws and regulations affecting asset management, taxation, and inheritance.

End-of-life planning safeguards wealth and secures a lasting legacy for heirs and charitable causes. Whether estates are modest or substantial, these plans provide invaluable peace of mind and financial security for future generations.

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Civil litigation attorneys manage disputes and represent their clients effectively with various legal matters and issues. They provide clear legal advice and handle all aspects of a case, from preparing documents to gathering evidence and preparing for trial. They also offer guidance and experience to help clients navigate the legal system efficiently, ensuring that cases are managed effectively and lead to timely outcomes.

Civil litigators are also skilled negotiators, often resolving disputes outside of court to save time and maintain relationships, which is particularly vital in business and probate matters.

When trials are necessary, they present and argue cases effectively to minimize losses and secure favorable outcomes. They offer continuous support and guidance throughout the litigation process, simplifying complex legal issues for their clients in both personal and business contexts.

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