Descriptive trademarks, or descriptive terms or phrases in a trademark, do not satisfy the purpose of a trademark and the USPTO examining attorney in most every case will issue a descriptive refusal (SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE). Trademarks are required to distinguish the goods or services of the owner with the goods and services of another. Descriptive terms or phrases merely describe the functions or characteristics of the product or service, not distinguish the source of the goods or services.

Determining Descriptiveness

If a consumer will be able to instantly associate the term or terms in the proposed trademark, with a quality or characteristic of the product or service, then the term is descriptive. The USPTO Trademark Trial and Appeal Board has stated that the test for descriptiveness is whether a term will immediately convey knowledge of a quality, feature, function, or characteristic of the goods or services with which the trademark is used. This means that if the trademark instantly conveys information on as little as one function, characteristic or feature of the goods or services, then the trademark will be found to be descriptive.  In other words, the trademark registration will be unsuccessful.

The examining attorney determines descriptiveness based on the perception of the relevant consumers that are going to be purchasing the good or service. Thus, discovering and learning who the relevant consumers are is vital to all determinations. The examining attorney can use evidence from any competent source to determine what the relevant consumers understanding of the term is. This could include interviews from consumers, surveys, the dictionary, newspaper and other reports on the topic. Overall, the USPTO must state a reasonable bases for their determination on whether the trademark lacks distinctiveness.

The following are examples of prior decisions that have held certain trademarks as descriptive; however, it is important to note that since each trademark is different in terms of the terms used, goods and services associated with the trademark, and the channels of trade used, each reviewing decision will based on the evidence in front of the examining attorney and not prior decisions on descriptiveness.

  • AMERICA’S BEST POPCORN! – popcorn
  • BLACKCARD – premium credit card
  • BREAK AND BAKE – frozen cookie dough
  • CD-CREATOR – computer program
  • PUDDING TREATS – pudding dessert
  • RAISIN – BRAN – cereal
  • VISION CENTER – optical center

Trademark protection may still be extended to a trademark that is descriptive. This only occurs when there is consumer acceptance and recognition that the descriptive trademark designates only one source for that product. In other words, it has acquired secondary meaning.  Raisin-Bran, in the list above, is trademarked for the owner of the cereal.