What Is A Descriptive Trademark?
Descriptive trademarks mostly show up in trademarks as an adjective or adverb that will describe the functions, characteristics, size, uses, or other elements of a product and/or service. Descriptive trademarks do not satisfy the main function of trademarks, which is to identify the source of the product. Using “Toboggan” for the red sled you intend to sell will be found to be descriptive of the product. But, if you use “Toboggan” to describe the jacket you intend to sell, this will not be descriptive of your product.
When the USPTO is ruling on whether the terms in your trademark are descriptive, the context in which you use those terms can be a big factor in determining whether or not your trademark will be approved on the Principal Register – see trademark registration. The USPTO will look at whether the trademark will immediately convey knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. The USPTO determines this from the perception of the relevant consumers that will be purchasing the product. While typically a descriptive trademark is not awarded federal trademark protection, a descriptive trademark may gain trademark protection when there is consumer acceptance and recognition that the descriptive trademark designates only one source for the product. An example is 5-Hour Energy. This is descriptive of the product — the drink gives you 5 hours of energy. However, the trademark is associated with one source for the product and thus was awarded federal trademark protection.
Abbreviations, Initials, Acronyms and Misspellings are Typically Descriptive Trademarks
Abbreviations, initials, acronyms, and misspellings are typically considered descriptive if the phrase or term they stand for is found descriptive and consumers find them to be “substantially synonymous” with that descriptive wording. The applicant has the burden to show that the initials or abbreviations or acronyms used have a meaning that would make the public aware of their source.
Similarly, using a misspelling or a phonetic spelling of a generic term does not alter this general rule. If the misspelling or a phonetic spelling is used to represent a generic term, that altered spelling will be found to be a generic trademark as well. Thus, SK8 Bored used for a skateboard will be ruled descriptive of the product. Other types of variations, such as changing a word from a noun to a verb or an adjective, as well as foreign language spellings, are also met with the same finding. If it is synonymous with the descriptive word or phrase, it will be found to be descriptive and not protectable through trademark law.
Laudatory Terms are Typically Descriptive Trademarks
Laudatory terms are terms that attribute quality or excellence to the goods or services linked to the trademark, such as “best,” “original,” or “famous.” These type of terms that simply praise the quality of the product are descriptive and not registrable unless the applicant can prove the terms have garnered a secondary meaning. However, there are occasions when even a laudatory term that carries a secondary meaning will not be registrable. “The best beer in America” is an example, and is found to be a laudatory advertising phrase that only describes the goods and does not distinguish the source of the goods.
It is possible that some “puffery” of a product is so extravagant that it will distinguish the source of an individual’s goods and not be descriptive. However, this is unlikely because trademarks that laud the quality of the goods or services are evidence of descriptiveness in the trademark.
