A trademark will be refused registration on the Principal Register of the United States Patent & Trademark Office (USPTO) if the applied-for mark is merely descriptive, deceptively misdescriptive or deceptive of the goods and/or services to which it relates.
A trademark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Similarly, a trademark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services to which it relates.
The determination of whether a trademark is merely descriptive must be made in relation to the goods or services for which trademark registration is sought, not in the abstract. It is not necessary that a mark describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the mark describes one significant function, attribute, or property.
Merely descriptive marks may still be eligible for registration on the Supplemental Register of the USPTO if the applied-for mark is capable of achieving secondary meaning or acquired distinctiveness through use over time. That said, however, the more descriptive the applied-for mark, the more extensive the evidence must be in showing the applied-for mark has acquired distinctiveness in the marketplace.
Note: It is highly recommended to consult with one of our trademark attorneys for personalized guidance and representation if you intend to claim, or if you seek to claim, acquired distinctiveness in the marketplace for registration on the USPTO Principal Register.
What Is a Merely Descriptive Trademark?
A “descriptive” term is one that directly describes or immediately conveys some knowledge of the characteristics of a product or service. A trademark is merely descriptive if it is descriptive of:
Descriptive Symbols and Images Used As Trademarks
A trademark will also be refused if the applied-for mark is a descriptive pictorial designation or symbol used to identify the source of the products and/or services. For example, a pictorial designation of a “doughnut” used to identify a café that sells primarily doughnuts would be deemed “merely descriptive.” Another example would be a fish market using a “fish” symbol to promote its seafood products would be deemed “merely descriptive.” The rationale for refusing a trademark applicant from claiming exclusive rights in these descriptive images and symbols is because all merchants in the respective markets need to use the images and photos to describe, promote and advertise their products.
Self Laudatory Terms, Slogans and Phrases are Descriptive
Laudatory terms, slogans and phrases, those that attribute quality or excellence to goods or services, are merely descriptive under Section 2(e)(1). For example, the terms best, friendly, majestic, dependable, preferred, greatest, deluxe, supreme, etc… would likely be deemed laudatory terms and thus descriptive. Remember, some descriptive trademarks may become registrable on the Principal Register after long and extensive use in the marketplace. A mark that has long and extensive use in the marketplace may achieve secondary meaning, which is the same thing as “acquired distinctiveness.” Some confusion is created by the two labels which mean exactly the same thing and are synonyms. That said, the more descriptive and the less inherently distinctive the trademark, the greater the quantity and quality of evidence of secondary meaning must be to prove that level of distinctiveness necessary to achieve trademark registration. Thus, it is possible, but extremely difficult, for a very highly descriptive, self-laudatory term, slogan or phrase to acquire secondary meaning.
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.
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 examining attorney must state a reasonable basis for his or her determination on whether the trademark lacks distinctiveness (or why it is merely descriptive).
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 used, goods and services associated with the trademark, and the channels of trade used, each reviewing decision will be based on the evidence in front of the examining attorney and not prior decisions on descriptiveness.
Composite Trademarks Using Descriptive Terms
A “composite” mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. It is possible for a trademark applicant to combine two descriptive terms to create a non-descriptive trademark. In other words, the commercial impression of a composite mark using descriptive terms may be deemed arbitrary or suggestive depending on how it is used with the products and/or services. For example, “Glass Doctor” could be registered as a non-descriptive trademark if this composite mark was used by a business that glasses surfboards. Some trademark applicants will join two descriptive terms together into compound or telescoped word marks. A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., GoPro, HydroFlask, HydroFoil). A telescoped mark is comprised of two or more words that share letters (e.g, NexTrend). Compound and telescoped marks are subject to the same descriptive analysis as all other marks and designs. If the USPTO examining attorney finds that one component of the compound or telescoped mark is unregistrable due to descriptiveness, a disclaimer of the descriptive term will be required.
Disclaimer of Descriptive Terms
Typically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, matter that is merely descriptive or deceptively mis-descriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services. A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. Most disclaimers cover descriptive terms, phrases, slogans, designations and symbols. By imposing such a disclaimer, all other businesses and individuals selling products or providing services in the marketplace may use these descriptive terms without fear of being subject to a trademark infringement claim.
The significance of a disclaimer is conveyed in the following statement: As used in trademark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark. A disclaimer may be limited to apply to only certain trademark classes, or to only certain goods or services. Some examples include the use of the word “burger” in Burger King, “furniture” in Ashley Furniture, “coffee” in Starbucks Coffee and “furniture” in Crazy Ed’s Furniture (no claims are made to the exclusive right to use these terms apart from the mark shown).
Using Misspellings and Abbreviations to Avoid A Descriptive Refusal
A slight misspelling of a word will not usually turn a descriptive word into a non-descriptive one. Remember, during the examination process, the USPTO will analyze the literal and phonetic elements of an applied-for trademark for descriptiveness. If an applicant applied for “C-THRU SNGLASS” the USPTO examining attorney would likely refuse registration on a Section 2(e)(1) descriptive refusal because “C-THRU” describes a primary function of the product and “SNGLASS” is simply a generic name of the product. An abbreviation of a descriptive term which still coveys to the consumer the descriptive connotation of the original term will still be deemed descriptive. For example, if an applicant applied for “SEA B&B” for a bed and breakfast establishment on the ocean, the USPTO examining attorney would likely refuse registration on a Section 2(e)(1) descriptive refusal basis because the “B&B” is a common abbreviation used for “bed and breakfast” which immediately describes the function or purpose of the establishment and “Sea” immediately describes a characteristic of the establishment (i.e., that it’s located on the Sea).
Doctrine of Foreign Equivalents – Descriptive Terms
Under the doctrine of foreign equivalents, certain foreign words used as a trademark are translated into English and then tested for descriptiveness, geographic descriptiveness and mis-descriptiveness. The test is whether, to those American consumers familiar with the foreign language, the word would have a descriptive connotation. The doctrine of foreign equivalents does not mean that all foreign words will be translated for descriptive purposes. Rather, the foreign language must be familiar to the American consuming public, such as, Spanish, French, German, Greek, Chinese, Japanese, Italian, Russian, Yiddish, etc. In other words, if the foreign word is from a dead or obscure language, a translation will likely not be needed and thus the mark will not be deemed descriptive.
Deceptive and Deceptively Mis-descriptive Trademarks
Section 2(e)(1) also refuses to register designations that are deceptively mis-descriptive of the goods or services to which they are applied. A mark is considered deceptively mis-descriptive if (1) the mark mis-describes the goods or services and (2) consumers would be likely to believe the misrepresentation. If the mis-description represented by the mark is material to the decision to purchase the goods or use the services, then the mark must be refused registration under the Trademark Act
A three-part test of deceptiveness was developed under the Trademark Act which states that the mis-description must be material in the sense that it is likely to affect the consumer’s buying decision. The three-part test of deceptiveness is as follows:
For example, if a trademark applicant applied for the mark “Japanese Rubber” for wetsuits made in California, it would be refused on the basis of the mark being deceptively mis-descriptive. Consumers would immediately believe that the wetsuits were made of the best Japanese neoprene thereby affecting purchasing decisions. Another example would be if an applicant applied for the mark “Hawaiian Foam” for surfboards made in Florida. In this hypothetical, the USPTO examining attorney would likely refuse registration on the basis that the mark is deceptively mis-descriptive because purchasers would believe the surfboards were made in Hawaii (giving them a superior quality) when they are in fact made in Florida.
Suggestive Trademarks are Different Than Descriptive Trademarks
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. The Trademark Trial and Appeal Board (TTAB) has described incongruity in a mark as “one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark,” and has noted that the concept of mere descriptiveness “should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause.’” Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning.
A trademark which suggests, but does not directly and immediately describe the goods and/or services, is placed in the suggestive category. The distinction between words that suggest but do not describe can often be a subtle one, but the distinction is critical in determining whether a trademark is registrable. The most popular method to determine whether a trademark is suggestive or descriptive of the products and/or services is the “imagination test.” The more imagination that is required from the consumer, the more likely the trademark will be categorized as suggestive, not descriptive. While a descriptive term directly describes and immediately conveys some information about the ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services, a suggestive term only indirectly hints at these things. In other words, if a consumer needs to make a mental leap to determine the attributes of the product and/or service, the trademark will likely be categorized as suggestive. For example, “Coppertone” for sun tan oil is a great example of a suggestive mark. Here, the consumer would need to make a mental leap to understand that the sun tan oil will make your skin tone copper when used in the sun. “Urban Outfitters” is another good example of a suggestive trademark. Here, the consumer would need to make a mental leap to understand the retail store sells popular apparel suited for people living in bustling towns and cities.
What Are A Few Examples of Descriptive Trademarks?
A few examples of descriptive trademarks that would be refused registration include:
It’s important to note that the merely descriptive marks above are merely illustrative and have not necessarily been refused registration by the USPTO. If you have been issued a merely descriptive trademark refusal by the USPTO, contact our trademark attorneys to see how we can assist!
