However, a mark that has acquired distinctiveness through extensive use over a long period of time, extensive advertising or monetary expenditures on marketing or other continuous use of the mark, could allow it to become whats known as an acquired distinctiveness mark and entitle it to the protections that go along with all other distinctive marks such as suggestive, arbitrary or fanciful marks. A geographically descriptive mark may acquire distinctiveness when the consuming public recognizes the mark as identify the source of a product or service. The Importance of Trademarks for NonProfit Organizations, 5 Legal Considerations for trademark rebranding, Trademark Cease and Desist Dos and Donts, Conducting a Trademark Availability Search, Protecting Your Trademark from Infringement. 11 News spoke with a local trademark lawyer about what this means. A descriptive trademark is one that describes the goods or services with which the mark is used. Example: The word "trademark" can't be trademarked; otherwise trademark attorneys wouldn't be able to talk about their businesses anymore. A distinctive mark distinguishes a company's goods and services from the goods and services of competitors. A Merely Descriptive trademark describes the purpose or function of the good/service, its components or ingredients, its use or quality - rendering the trademark ineligible for including in the Principal Register (more on this later). Marks that are merely descriptive are not protected or accorded trademark rights. You'll also need the descriptive portion "disclaimed" in order to be registered. To further illustrate what a descriptive trademark is, lets differentiate it from the two groups of marks closest in terms of distinctiveness. Some examples of descriptive trademark s include: If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive. Other companies think that being creative is the key. Acquired distinctiveness is when the consuming public begins to recognize your mark as the source of your particular goods or services, as opposed to the term or adjective describing exactly what it is your goods or services are. Were here to help. By getting a federal trademark, you have exclusive rights in your industry to a name, logo, and slogan. Abe is managing partner of Cohn Legal, PLLC, Head of the firms Intellectual Property and Transactional Group, and works in the New York office in Midtown Manhattan. The owner of a descriptive mark can show, usually through consumer pools, that the mark has acquired a secondary meaning and register it. How Can Marks Be Categorized? A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. Here, the mark would be deemed descriptive because it quite literally describes the quality of the Water being sold. Descriptive marks are a type of trademark that are usually composed of a word or words that merely describe a product or that identify the characteristics of a product and are generally considered weak marks. . Trademarks containing only descriptive words or phrases can be registered if the graphical element is so striking that it diverts or distracts the attention of the consumer from the descriptive meaning of the words. You can use taglines to briefly describe the product or service that you are offering. However, 'Apple' was able to be trademarked in terms . These are essentially random marks, therefore most courts will grant them protection. So long as a descriptive mark is capable of being a source identifier (i.e. Obviously that does not happen overnight, which is why a suggestive or more distinctive mark is usually a better starting point. Note: The word only needs to describe one major aspect of the product, not everything about it. A descriptive mark simply describes the nature or a particular characteristic of a product or service. Trademark Examining Attorneys will be governed by the applicable statutes, the Trademark Rules of Practice, decisions, and Orders and Notices issued by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Commissioners, or Deputy Commissioners. once a descriptiveness refusal is issued against an application, the trademark owner has four options: (1) appeal the examiner's refusal through office action responses and/or an appeal to the trademark trial and appeal board, (2) accept that the trademark is descriptive and provide evidence that it has "acquired distinctiveness" under section 2 Why Is Picking A Strong Mark Important? 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) ]. When applying for a descriptive trademark, contact an experienced lawyer through UpCounsel for any questions and legal guidance. Trademarks help your business grow by creating customer loyalty and awareness of your products and services. Cir. Marketers love describing their products, so that they can sell as may products as possible. Our leading internet law firm has lawyers and law offices in the following locations. A trademark that's entirely descriptive cannot be protected. All Rights Reserved. The trademark Cold and Creamy, for instance, features verbiage that can describe any product created by ice cream making companies. TMEP 1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Beckwith, Inc. v. Commr of Patents , 252 U.S. 538, 543 (1920)). However, it is important recognize that just because you started out using a descriptive trademark or it was initially determined to be a descriptive trademark, it does not ultimately preclude you from gaining those exclusive rights that go along with a distinctive mark. For example, WD-40 Company's use of the term "inhibitor" was found to be descriptive fair use of the registered mark THE INHIBITOR when used to describe a long-term corrosion inhibitor (WD-40) product. This is because they do not identify and distinguish the source of products or services. The determination is not based on research into or critical analysis of the meaning of the words. A suggestive trademark is a trademark that has some association to the product or service at issue but it is not immediately clear. Descriptive marks don't have a high sale value if you decide to sell/license the trademark or business. Still not sure? Merely descriptive trademarks have some trademark strength, but it is very low unless a company can present evidence that the public has learned to specifically associate that term with them. This includes terms like "best" and "high quality." In a perfect world, an arbitrary or fanciful mark is best, as they are protected. The fictional brand Texadomes Delicious Burgers, for instance, contains fanciful, descriptive and generic words. Namely, whether its on the principal register with all the super benefits that go along with that or on the supplemental register. Our internet attorneys handle matters and litigation cases throughout the United States on a pro hac vice basis, for clients like you from around the world. If thats the mark you used to describe a spoon with a deep bowl for scooping, it is whats known as a descriptive trademark. More specifically, it may describe the qualities, characteristics, feature, purpose, or function of those goods or services. Resist your temptation to choose a descriptive word or phrase for your trademark or even a descriptive domain name. How does the USPTO achieve this objective? That means that consumers no longer think of your mark as a description of products/services. More specifically, it may describe the qualities, characteristics, feature, purpose, or function of those goods or services. However, just because a mark is deemed . Descriptive marks are not distinct because they use words or phrases that tell what a product or service is rather than identifying a source (e.g., a brand called SOFT could not secure a . Buoyant has a second definition that means cheerful or optimistic which does not directly describe the service. The trademark may describe a key ingredient, quality, characteristic, function, feature, or purpose of the products/services. Examining attorneys at the United States Patent and Trademark Office (USPTO) assess a proposed trademarks characteristics in relation to the goods/services sold under the mark and must decide what category of distinctiveness is appropriate, given the goods/services sold. This occurs when a descriptive identifier gains secondary meaning in the minds of consumers. Descriptive fair use - The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning . For example, American Airlines is a descriptive trademark because it is literally an airline in America, but after nearly a century of being the only . Registering your trademark correctly from the start is important. What Is a Descriptive Trademark? A visual representation that consists merely of an illustration of the goods, or an important feature of characteristic of the goods is merely descriptive under Section 2 (e) (1). Thus a trademark application was filed with the Patent and Trademark Office (PTO). Here's why companies shouldn't use descriptive words or phrases: They are conceptually weak and hard to enforce, therefore are usually unprotectable from competitors. If you are a company able to pay a reasonable legal fee each month, please contact us today. Speak with an internet lawyer from our law firm today for more information. You should look for another attorney. Descriptive trademarks that are refused registration on Principal Register are given the opportunity to go to rehab. What is a descriptive mark? Descriptive trademarks like these examples, which only include words based on aspects, highlights, end results, or product uses won't qualify for a trademark. You could amend your application for the Supplemental Register, but youll miss out on many benefits by doing so. Western Digital (located in California and sells tech products). American Airlines (provides flight services in America). The public needs a certain degree of imagination in order to understand what product is advertised. In order to do so, you accomplish something more than a descriptive trademark by acquiring whats known as an acquired distinctiveness. In order to trademark a descriptive mark, a company must show that the mark has acquired what is called a "secondary meaning" in the marketplace. Descriptive trademarks are terms that describe the company or product it represents, but they must have at least one secondary meaning beyond simply just describing the product. Reasons Why You Usually Can't Protect Descriptive Trademarks, 7. The first is the Principal Register - this is the best of the best. The differences between "merely descriptive" and "generic" and between "merely descriptive" and "suggestive" is narrow. Some examples of marks that are descriptive but have achieved a secondary meaning are: Dollar a Day: at first it described a service, in fact the company rented cars for a dollar a day. Should I File a Multi-Class Federal Trademark Application? If you decide to utilize a descriptive trademark regardless, then you should know the upside and downside. Abe is committed to his client's success. In other words, these are descriptions that could be attributed to the goods or services offered by a business. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state . Trademark July 13, 2020 Trademark: Descriptive or Generic, Distinctiveness Rules its Fate The Supreme Court of United States (further referred as SCOTUS) in its June term resolved the longstanding issue of protecting generic domain names and trademarks. Descriptive marks can't be registered, but they could still be the best choice for your business, especially if you have a low advertising budget. There are multiple disadvantages of selecting a descriptive trademark. The only brand identifiers weaker than descriptive trademarks are generic trademarks. A merely descriptive trademark is one whose dictionary definition is synonymous with a quality of the good or service. That trademark is now, of course, a uniquely recognized trademark . Nothing on this site should be taken as legal advice for any individual case or situation. This field is for validation purposes and should be left unchanged. Our second level of strength of trademarks is known as the descriptive trademark here to tell us more is our good friend, trademark attorney Christopher Roden. International Business Machines (sells business machines internationally). More Details About the Different Marks. If this were granted to a descriptive trademark: Competition would be inhibited as competitors wouldn't be ableto use a simple (or the best) word or phrase in relation to their product. Descriptive trademarks can only receive trademark protection in the U.S. if they achieve something called "secondary meaning." Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. If you go the former route and your trademark isnt eligible due to mere descriptiveness, you can amend your submission for the supplemental register. Would it be fair for the USPTO to box out the rest of the distilled water industry and only let this one company use the word Clean in its name? The time and money involved to register a descriptive mark (if you succeed) is high. How to Search TESS like a Trademark Examiner. Hire the top business lawyers and save up to 60% on legal fees. If you think the USPTO is wrong in its initial action, a persuasive response must be filed. Here are some examples: See also [wex:service mark], [wex:collective mark], [wex:certification mark], [wex:trade name]. If youve already invested time and money in these identifiers for your brand, there are upsides as well. Youll need to file trademark maintenance documents about five years after being listed on the Supplemental Register. Due to current volume we are unable to offer free consultation. Although you can register purely descriptive marks on the Supplemental Register, a purgatory of sorts for descriptive trademarks, a five-year waiting period plus sufficient evidence of secondary meaning is necessary to move the mark to the Principal Registerwhere more legal rights accrue. The United States Patent and Trademark Office (USPTO) maintains two registers for trademarks. Retaining a trademark lawyer while you are trying to think of good trademark names will help you understand which names are potentially strong trademarks and which names are potentially weak trademarks. "Descriptive" marks must acquire distinctiveness through secondary meaningconsumers have come to recognize the mark as a source indicatorto be protectable. Affidavits and depositions (from consumers, experts, owners, etc. Disclaimer: The information on this website is for general information purposes only. c) the persons employed in the production of the goods or services, or. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. They want to pick a domain name which describes their products and services. While the Supplemental Register does not give you the rights of a regular registration, it can be cited against other applications to prevent their registration. In fact, an image helps describe your product. So when it comes to trademarks, we know what we are doing. Want High Quality, Transparent, and Affordable Legal Services? 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. the court observed that a descriptive trademark may be entitled to protection if it has assumed asecondary meaning which identifies it with the particular.the learned single judge had restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in whisky or any other alcoholic beverages under the Critically, Secondary Meaning does not happen overnight and may take years and many dollars spent in marketing to develop. How do you know a mark has acquired a distinctiveness? Suggestive, arbitrary, and fanciful marks are always unique upon creation and don't lead to any confusion about identifying their product or services when marketed. For any issues related to descriptive trademarks, please feel free to contact us. Was this document helpful? After all, if your company name doesnt describe what you do, a consumer may keep going to the next listing. Descriptive marks are those trademarks or service marks that only describe the products or services to which they are applied. The USPTO may restrict registration of these terms or only allow them to be registered to the supplemental register. Small companies and startup businesses often fall into the trap of wanting to create a brand which tells consumers what they do for a living. In issuing trademark registrations, the United States Patent and Trademark Office (USPTO) has two fundamental objectives: protecting an applicant who has developed a sufficiently distinct name/logo/slogan from brand-appropriation by competitors AND as a corollary, protecting consumers from mistakenly purchasing a good/service by a company trafficking in the trademark of a competitor. The U.S. Patent Office is now rejecting that initial application, saying the term is primarily geographically descriptive. The need to educate the public on the product isn't quite as large as there is some intuition linking the mark and product or service together. A merely descriptive mark is something that gives the customer an immediate idea of what the name entails and requires no existing knowledge to make sense of. Descriptive Trademarks. A trademark must be distinctive to be registered on the Principal Register. However, money saved on the front-end in advertising results in other costs spent on the back-end when dealing with cease-and-desist letters and litigations. Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. Originally, state common law provided the main source of protection for trademarks. A merely descriptive trademark isn't eligible for trademark protection and added benefits. Terms of Use, Disclaimer & Privacy Policy. Who should I identify as the owner of my trademark registration? For example, consider a company, which sells distilled drinking water and applies for the trademark, Clean. Higher costs in advertising and marketing are required to gain recognition. Interestingly enough, one of the most famous international trademarks was originally descriptive. Would you like to do a search? Acquired distinctiveness can occur before or after an application is submitted. Coca-Cola (made with ingredients from coca leaves). has secondary meaning, or has come to identify the source of the goods or services in the minds of consumers), it is registrable with the USPTO if there are no other conflicting marks. Learn more about trademark law in our free . Remember, the crux of trademark law is to award protection to those companies, which have developed a mark that identifies the source-company of the mark. Brian Hall - January 11, 2012 - Trademark Basics, Trademark Law. When I tell them that the mark is 'merely descriptive' and will be difficult to register Is the quality, composition, character or function of the good misdescriptive? 10,000 supplemental trademark registrations. A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product.7 min read. Here's What you Need to Know, Use in Commerce is defined in Section 45 of the Trademark Act as a Bona Fide Use of a trademark in the ordinary course of trade. What is Bona Fide Use? In other words, these are descriptions that could be attributed to the goods or services offered by a business. F air use is a common defence in trademark infringement actions, with a jurisprudential basis that a trademark owner cannot exclusively monopolise a descriptive phrase and deprive a third party's right to accurately describe its goods. Even though they dont truly describe the traits of a good, these applications are still treated the same as descriptive trademark applications. A Merely Descriptive trademark describes the purpose or function of the good/service, its components or ingredients, its use or quality rendering the trademark ineligible for including in the Principal Register (more on this later). In this case, the mark can be moved to the Principal Register. 104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive. When they see your mark, they actually think of you/your business. Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration. Answer this question: "Does this word describe the product or service?" If this change has yet to take place, though, the brand identifier will need to first be listed on the Supplemental Register. There are ways, however, that such a brand identifier can graduate to the principal register. It seems that new businesses really like their company name to describe what they do. Disagreement Between Marketers and Legal Departments. Cir. . It should have a secondary meaning, as the USPTO will decline applications for these trademarks if they lack this aspect. In the event an applicant attempts to register a trademark with the USPTO that is considered Descriptive, the examining attorney will refuse the mark and respond with an Office Action. The test applied is whether an ordinary consumer in Canada would be misled concerning the goods or services with which the trademark is associated. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. For example, take the mark BUOYANT used in connection with float therapy services. So, again, to differentiate, a merely descriptive trademark is not entitled to protection. These are the stronger trademarks and much easier to protect from infringement. Cannabis or Weed for legal marijuana businesses. Today, I will be answering the question: What is a descriptive trademark? and providing examples of descriptive trademarks [scroll down for free video on how to register your trademark]. When attempting to register a descriptive term, a disclaimer is common. Trademark Law FundamentalsLearn Trademarks, Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter. The rehab center is known as the Supplemental Register, where descriptive trademarks wait in punishment and suffering until they can be cleansed, purified, and . Therefore, even in instances where a trademark may prima facie be too descriptive to warrant trademark protection, it the mark becomes so well known through market acquisition and branding ubiquity, it can achieve Secondary Meaning, propelling it to the Principal Register. Trademarks are governed by both state and federal law. When the public starts to identify a certain symbol, phrase, or mark with a product or business, that descriptive mark can be trademarked even if it wasn't allowed to be before. By only granting trademarks to those names/logos/slogans that are sufficiently distinct vis--vis the goods/services sold under the trademark. The Federal Circuit attempted to simplify this distinction stating that descriptive trademarks impart information directly whereas suggestive trademarks require some mental pause. However, only the inherently distinctive aspects of the brand identifier will be protected. Fanciful Trademark: Everything You Need To Know, Can You Trademark a Word in the Dictionary, How to Trademark a Name: 6 Simple Steps to Complete. A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. A descriptive mark can range from highly descriptive to lowly descriptive. Its also possible for a descriptive trademark to earn acquired distinctiveness. Share it with your network! Near the top of the list of possible trademark rejections is mere descriptiveness. Unique brand identifiers are meant to help consumers differentiate between your products or services and those from others. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions. However, learning to search TESS is challenging. Phone: (858) 487-9300 Click to Contact us, Phone: (949) 474-9330 Click to Contact us, Phone: (310) 656-3900 Click to Contact us, 2018 Mandour & Associates, APC All Rights Reserved Aggressive Intellectual Property Litigators Trademark Attorneys Patent Lawyers Copyright Attorneys. This source indicator feature of a mark is also known as secondary meaning. Mastering TESS will provide you with unparalleled trademark searches that you can use to identify potential risks that may . Pulling this off, however, does take dedication to establishing a secondary meaning. These are words that give an idea of the product or service but don't describe it specifically. This latter difference is why companies opt for descriptive words where possible, as it helps consumers making the connection between the mark and product. One possible of showing acquired distinctiveness is the continuous use of the mark for at least five years. A descriptive mark is not automatically distinctive and becomes eligible for trademark protection only when it becomes associated in the minds of the public with the relevant good or service. 2005) (citing Estate of P.D. 10. Well, if you have a descriptive trademark and apply to register it with the U.S. Patent & Trademark Office, you will receive a rejection. No one could legally use the word anymore, which would result in a silly number of infringements in everyday occurrences. Descriptive marks are the next level and are afforded more protection - with a catch. If you need to know whether you have a descriptive trademark, one that is generic, or otherwise, please call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultationtoday. For example, consider a company, which sells distilled drinking water and applies for the trademark, "Clean". While the USPTO wants to protect marks that are sufficiently distinct, it simultaneously wants to ensure that it does not confer protection to those marks, which are not sufficiently distinct. The USPTO will consider three factors when deciding whether a deceptively misdescriptive identifier can be registered: If the answer to all three of these questions is yes, an examining attorney will reject the application as deceptive. It's possible that a descriptive mark could be disguised as a suggestive mark, but there is a difference. This ensures stronger levels of protection and fewer hurdles to registration. What constitutes a trademark first use in commerce? Descriptive. Most commonly, we might debate between generic and descriptive, or between descriptive and suggestive. For example, descriptive trademarks tend to be more valuable from a marketing perspective because consumers generally know immediately what you are selling. Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable. These descriptive words, phrases or designs do not distinguish the source of the products or services and do not function as a trademark. You are also invited to review the free information on our website. A descriptive trademark is one that describes the goods or services with which the mark is used. Acquired distinctiveness happens when the public starts to associate your mark (and your company) as the source of a specific good more than if you simply describing the product with an adjective. Descriptive Trademark Vs. Suggestive Trademark Issues: Mixed Culture Jul. Any confusingly similar applications will be rejected. A non-distinctive mark simply describes and names a trait or quality of goods or services. 104 Key Computers (104 Key is a category of keyboards). The words GRILLED and CHICKEN aregeneric, because it literally says what the product is. These marks are capable of holding up fairly well in court. Distinctiveness can be tough to measure; it's usually broken into five categories across a spectrum known as the Abercrombie spectrum. A suggestive mark, on the other hand, is something that alludes to its purpose but doesn't explicitly state it. A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant's services; and. In the seminal Zatarains, Inc. v. Oak Grove Smokehouse, Inc. case, the court established a series of factors that may determine whether or not a mark has achieved Secondary Meaning: If the mark has not achieved Secondary Meaning AND it is Descriptive, it cannot register on the Principal Register. I look forward to speaking with you. Knowing that you may be able to acquire distinctiveness in a descriptive mark over time may sway you to choose this option if you don't have a large marketing budget to start. 1052 (e) (1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. See 15 U.S.C. Imagine youre the examining attorney and submit the amount of documentation that you would find convincing. Suggestive mark examples: Greyhound (bus), Citibank (financial services), Playboy (magazine). Have a question? Were here to field your questions and concerns. This can only be determined by assessing the mark in question in relation to its goods or services. This ensures stronger levels of protection and fewer hurdles to registration. Due to the distant relationship between the product and its name, the company needs to educate the public on the association of the word with the good. Don't worry: a descriptive mark "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." Descriptive marks are considered the weakest of protectable marks. If you feel your brand has already succeeded in this endeavor, you can file an application for trademark registration to the principal register. 9. But, either way, you would be well served by speaking with a trademark attorney that can advise you over these differences between the strength levels of a mark and, also, give you an idea of how that affects what a trademark application may ultimately be relegated to in the USPTO. Almost like taglines, they're less descriptive but can be trademarks themselves as they often involve suggestive traits. They usually consist of a random assortment of letters to create a word. 2021 Traverse Legal, PLC. ). There are about 10,000 supplemental trademark registrations granted each year. The trademark is not considered in a vacuum. Instead, it is considered in the context of the relevant goods or services. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. A powerful way to do this is to argue that the Examining Attorney has not demonstrated a sufficiently clear nexus between the mark and the goods/services; in another words, while the mark may appear to describe the goods/services, it in fact does not. A mark that's achieved a secondary meaning is usually entitled to the protections granted to suggestive, arbitrary and fanciful marks. Your submitted evidence will be reviewed to determine the extent of your descriptive trademarks use, the length of time its served as an identifier, and amount of advertising. Unlike more distinctive types of trademarks, you cannot receive protection for descriptive trademarks once you start using them in commerce. The word which has descriptive quality should only describe one major feature of that . Part of this registration, which is for cooked chicken, is generic and part is descriptive. However, you can also argue that BUOYANT is suggestive because it describes the way a person might feel after the therapy. The word doesn't mean anything until it's related to the company's product or service. There are countless descriptive trademark examples out there, but some famous brands have also managed to establish acquired distinctiveness with their identifiers. When a new company is entering a market, choosing the perfect mark to represent the business isn't easy. 5. The thinking is that if they pick a descriptive word for their company name they will get more business. Educating the public doesn't happen overnight either. The second option, though, would require a bit of imagination on the part of the consumer. However, that is not the proper test. Balancing a mark that helps the consumers know what they're are buying versus the cost of issues down the line will vary from business to business. Some examples of descriptive trademarks are: They are nouns pertaining to common language, so they can't be registered. It would be especiallyhard to describe the product without using the word chicken. But KENTUCKY isdescriptive, because ittells us about the qualities of the chicken. So what does this mean for trademark registration? 1209.01 (b) Merely Descriptive Marks To be refused registration on the Principal Register under 2 (e) (1) of the Trademark Act, 15 U.S.C. Instead, come up with a unique word or phrase which will provide for strong trademark protection and can only mean your company, good or service in the market. Here is a screenshot of a portion of an Office Action a client of mine has recently received: To respond to a Section 2(e) Refusal, an applicant must demonstrate that the mark is not Merely Descriptive of the goods/services sold under the mark. Trademark Act Section 2(e)(1), 15 U.S.C. Learn more in this article or contact us for more information. A descriptive trademarkidentifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. If the trademark is not descriptive, the company will need to set aside a big marketing budget. Descriptive marks can be trademarks when there has been a secondary meaning established; otherwise they aren't protected. What Are the Alternatives to Descriptive Trademarks? (3) a relevant consumer viewing the . That being said, remembering that you can acquire distinctiveness in a descriptive mark gives you that ability to have protections, even if the mark at first glance or initially was merely descriptive. It tells the consumer that the chicken is Kentucky style or that it originates from Kentucky. Given that this word is new, the company needs to advertise the product the public to help them understand the link between the new word and the company's product or service. 6. Cir. Suggestive product identifiers do not directly describe a quality or characteristic of a company, product or service. This means an identifying term or design misdescribes some characteristic of the product (e.g. A descriptive mark recognizes one or more features of a product or a service and then only assists by describing that product or service. A company can't register a descriptive mark on the Principal Register under the Lanham Act but can place it on the Supplemental Register. When you want to pick a brand and trademark which comes to mean something special and only designates you in the market. Claims of trademark infringement can put a lot on the line. So, once again, this has been Brian Hall answering your question: What is a descriptive trademark? Once your descriptive trademark has been in use at least five years, there is a presumption that you have acquired distinctiveness. Usually you find out through consumer surveys. Trademark law attorneys who help companies with branding issues almost always push their client to consider a suggestive, arbitrary or fanciful trademark for their name. 1052(e)(1); see TMEP 1209.01(b), 1209.03 et seq. How Can a Descriptive Trademark Be Protected? 21 June 2022. Instead, theyd be relegated to the supplemental register, which does not carry with it the ability for you to claim exclusive rights to use that mark in connection with your goods and services recover attorneys fees and statutory damages in the event of a federal court lawsuit and other benefits and presumptions that go along with ownership of a distinctive mark. The Supplemental Register, grants registration of those marks (like Clean in our aforementioned example), which would otherwise be ineligible for registration in the Principal Register because of the indistinct quality of the proposed mark. If a farming equipment manufacturer can prove that consumers link their descriptive surname directly to their product, for instance, they may be granted trademark registration on the principal register. If the verbiage or design in question creates a distinct commercial impression separate from its individual elements, though, a disclaimer may not be necessary. They are expensive to defend, because they are weak. [1] " Generic" terms are used to refer to the product or service itself and cannot be used as trademarks. Some (fictitious) examples might be GREEN & CRUNCHY in connection with a salad restaurant, or BOOKS AND MORE in connection with a book retailer. They're only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. Acquired distinctiveness can be established via: A long period of continued use of the mark, Heavy advertising in terms of reach and expenditure. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicants goods and/or services. The key with taglines is to make them short; the shorter the better but usually less than eight words. However, the Trademark Office may let you amend to try and get your mark on the Supplemental Register. A descriptive trademark is a name that describes a quality or characteristic of the product, but it should do more than just describe a company's product. Descriptive trademarks are the most common marks which new companies and startup companies seem to gravitate towards. 2022 Kevin Haynie If you are unsure whether your mark is a descriptive mark, ask yourself whether the mark describes aspects of your service or product. In fact, you can only register a descriptive mark onthe supplemental register. What Is a Merely Descriptive Trademark? Only then can you determine whether the mark describes something that is important or significantabout the goods or services. Potentially gaining rights involves far more work than typical registration. One of the most common misconceptions about the descriptive trademark is that it is only descriptive if you can figure out what the product or service is from just the mark. This status, however, grants the mark much less protection. Delicious burgers obviously cannot be trademarked in relation to the sale of burgers, so the applicant must include a disclaimer to let others know theyre not claiming exclusive rights over those terms. Because your Trademark is Everything. The test for determining whether a trademark is either clearly descriptive or deceptively misdescriptive is the immediate or first impression formed by the ordinary user or purchaser of the goods or services in issue. Many people request that I prepare applications for trademarks that are considered 'merely descriptive'. 1127. Examples of Famous Descriptive Trademarks. While a descriptive trademark sounds like a good idea, it really wont be over the long term. Generic devices will never be a trademark whereas devices that are fanciful, arbitrary, or suggestive aredistinctive, and therefore they can function as trademarks. This doesnt mean, however, that descriptive trademarks cant be useful. The amount of proof required will vary based on the specific circumstances, but the following evidence is typically considered: There are no concrete rules on just how much evidence is necessary to prove acquired distinctiveness. And, its important to identify what your mark is and the strength of that mark because descriptive trademarks, those that are merely descriptive, are not entitled to trademark protection and all the benefits that go along with it. These are terms that describe the goods or services to which the mark is applied, or a characteristic of those products. It is certainly true that no one knows who you are when you 1st start out as a small start-up business. 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