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)].

Why are descriptive marks not registrable?

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 to avoid selecting a mere 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. Practically, you have one shot to make your best argument. If you do not persuade the examining attorney in your response to a non-final Office Action, you have only a few options remaining:

  1. File a Request for Reconsideration based on new evidence; or
  2. Appeal to the Trademark Trial and Appeal Board (TTAB).

The probability of a successful appeal over a mere descriptiveness rejection is quite low (less than 20% based on recent years).

How to argue against a Section 2(e) rejection

If the mark has at least two words, one potentially effective argument is show incongruity between the two words. Another approach is to show how the mark actually does not convey information about features of the goods or services. Below are examples of marks held to be not merely descriptive.

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 forĀ 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

 

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.