How To Avoid Using a Descriptive Trademark

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September 09, 2021
By Andrew David Easler, Esq.

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 that 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 arbitrary 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 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 Principal Register without proof of acquired distinctiveness.[13]In practice, selecting a trademark that 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 descriptive, there are still options available.

Depending upon the circumstances surrounding the grounds for the refusal, a trademark attorney may be able to prepare a substantive response that 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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