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 do descriptive marks 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 to 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. 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:
- File a Request for Reconsideration based on new evidence; or
- 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.
Is the mark suggestive of the goods, and not descriptive? 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?
If your mark contains multiple words, would it make sense to submit a disclaimer for one of the more descriptive words?
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 been rejected on the grounds of a Section 2(e)(1) merely descriptive refusal, contact patent and trademark attorney Vic Lin at firstname.lastname@example.org or call (949) 223-9623 to see how we might help you prevail against this refusal.
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