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. How To Decide the Right Mark For Your Business. Answer this question: "Does this word describe the product or service?" 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. Therefore, we will not be contacting you. This is because a descriptive trademark identifies a characteristic of the product or service in some way. How Can Marks Be Categorized? This is because they do not identify and distinguish the source of products or services. 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 trademarks can only obtain protection once a sufficient amount of goodwill related to the trademark has been developed. The graphical element should be able to leave a lasting impression. However, that is not the proper test. You could amend your application for the Supplemental Register, but youll miss out on many benefits by doing so. How does the USPTO achieve this objective? 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. 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. If the mark owner has kept the mark in continuous and exclusive use for five years, the mark qualifies for registration on the Principal Register. 9. Developers or Coders for software developers. Originally, state common law provided the main source of protection for trademarks. 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]. Other companies think that being creative is the key. Is the quality, composition, character or function of the good misdescriptive? So while generic and descriptive trademarks tend to be weaker trademarks, the following are stronger: Each of these trademark types may be inherently distinctive. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. 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. In fact, you can only register a descriptive mark onthe supplemental register. Descriptive marks that only include words that describe the characteristics of products or services or that are based on end results or highlights generally do not qualify for trademarks. What a descriptive trademark is one which not only likely makes sense to you but to other competitors in your industry. One possible of showing acquired distinctiveness is the continuous use of the mark for at least five years. 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. The rehab center is known as the Supplemental Register, where descriptive trademarks wait in punishment and suffering until they can be cleansed, purified, and . Imagine youre the examining attorney and submit the amount of documentation that you would find convincing. 10. While every trademark aspires to register on the Principal register, USPTO also has another register reserved to Descriptive trademarks called, the Supplemental Register. Unlike descriptive trademark fair use, which is a statutory defense to trademark infringement, nominative fair use is a judge-made defense and federal circuits differ in how they apply the nominative fair use defense. Zatarains, Inc. v. Oak Grove Smokehouse, Inc. Why Is Branding Important For A Business? The former would likely be considered descriptive since its essentially listing characteristics of sunblock. If you've been using a descriptive trademark for at least five consecutive years, you can try to get that trademark on the Principal Register by arguing the mark has a secondary . A descriptive mark simply describes the nature or a particular characteristic of a product or service. 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 are a company able to pay a reasonable legal fee each month, please contact us today. See our webpage entitled, Filing Your Trademark On The Principal Register And The . You'll also need the descriptive portion "disclaimed" in order to be registered. This ensures stronger levels of protection and fewer hurdles to registration. So, once again, this has been Brian Hall answering your question: What is a descriptive trademark? To further illustrate what a descriptive trademark is, lets differentiate it from the two groups of marks closest in terms of distinctiveness. 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. This is Brian Hall, an attorney with Traverse Legal, PLC, a law firm that represents trademark applicants, trademark registrants, and those facing trademark infringement issues throughout the United States and the world. This ensures stronger levels of protection and fewer hurdles to registration. It seems that new businesses really like their company name to describe what they do. Hendershot Cowart P.C. 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. The trademark Cold and Creamy, for instance, features verbiage that can describe any product created by ice cream making companies. Thus a trademark application was filed with the Patent and Trademark Office (PTO). 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. 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. Here's an example of a trademark that was recently found non . Otherwise a supplemental registration is very similar to a principal registration. There are several benefits to a supplemental registration: Your USPTO application can be geared towards placement on the Principal or Supplemental Register. Arbitrary marks are words of common knowledge in English that are used to describe a product that doesn't have any connection to the common definition. A trademark attorney can help you understand the strength of potential marks and what level of distinctiveness they have when handed over to the USPTO. The word which has descriptive quality should only describe one major feature of that . Distinctiveness can be tough to measure; it's usually broken into five categories across a spectrum known as the Abercrombie spectrum. However, 'Apple' was able to be trademarked in terms . Descriptive brand identifiers are weaker than other trademarks which is likely to lead repeated. Imagine a single sun block product with two potential names: SunStop and Solar Goo. Fair State Brewing Cooperative throws an annual party celebrating wild, sour, and mixed fermentation beers entitled "Mixed Culture," a name they wanted to make sure was protected. This means a consumer wouldnt necessarily recognize a term or design element as a source identifier upon its initial use. Suggestive product identifiers do not directly describe a quality or characteristic of a company, product or service. What Is a Descriptive Trademark? Trademark Registration on the Principal Register grants presumptions of validity and ownership and provides for more robust protection and enforcement measures against infringing and potentially infringing marks. The trademark may describe a key ingredient, quality, characteristic, function, feature, or purpose of the products/services. An example would be deep bowl. There are about 10,000 supplemental trademark registrations granted each year. Affidavits and depositions (from consumers, experts, owners, etc. What constitutes a trademark first use in commerce? 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. 11, 2017. 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. 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. 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. 8. The owner of a descriptive mark can show, usually through consumer pools, that the mark has acquired a secondary meaning and register it. This includes terms like "best" and "high quality." The USPTO may restrict registration of these terms or only allow them to be registered to the supplemental register. Principally, Descriptive trademarks are weak, ineligible for protection on the Principal Register (without secondary meaning), and are much more difficult to enforce. 1052 (e) (1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. In this case, the mark can be moved to the Principal Register. A non-distinctive mark simply describes and names a trait or quality of goods or services. There are multiple disadvantages of selecting a descriptive trademark. If the answer is yes, the mark is probably descriptive. A company can't register a descriptive mark on the Principal Register under the Lanham Act but can place it on the Supplemental Register. We also act as lead litigation counsel for trademark infringement cases across the world. Typically, the Office Action will say something to the effect of: Registration is refused because the applied-for mark merely describes a quality, characteristic or feature of applicants services. That trademark is now, of course, a uniquely recognized trademark . 3. 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. A descriptive mark can range from highly descriptive to lowly descriptive. Near the top of the list of possible trademark rejections is mere descriptiveness. In other words, these are descriptions that could be attributed to the goods or services offered by a business. 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. After five years of continuous use, though, a mark that was deemed descriptive can acquire protection by achieving the status of "acquired distinctiveness." The Top 10 IP and Trademark Blog Posts of 2022. 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. Descriptive Trademarks. It is certainly true that no one knows who you are when you 1st start out as a small start-up business. They are nouns pertaining to common language, so they can't be registered. For any issues related to descriptive trademarks, please feel free to contact us. Higher costs in advertising and marketing are required to gain recognition. Because merely descriptive trademarks do not perform the essential purpose of a trademark which is identifying the source of the good/service. The determination is not based on research into or critical analysis of the meaning of the words. 2022 Kevin Haynie It's possible that a descriptive mark could be disguised as a suggestive mark, but there is a difference. The only brand identifiers weaker than descriptive trademarks are generic trademarks. 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. They want to pick a domain name which describes their products and services. It should have a secondary meaning, as the USPTO will decline applications for these trademarks if they lack this aspect. Have a question? 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? Power Computing (first company to create MAC computer clones). That means that consumers no longer think of your mark as a description of products/services. Its also possible for a descriptive trademark to earn acquired distinctiveness. Taglines are short descriptive phrases that can be placed on marketing material. Your product or service needs to be differentiated from your competitors' by the mark (name, logo or phrase). Youll need to file trademark maintenance documents about five years after being listed on the Supplemental Register. If this change has yet to take place, though, the brand identifier will need to first be listed on the Supplemental Register. 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. They want to pick a domain name which describes their products and services. However, only the inherently distinctive aspects of the brand identifier will be protected. Trademarks that are deceptively misdescriptive, generally cannot be registered. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Coincidentally, you can also use five years of continued and substantially exclusive use as evidence of acquired distinctiveness which may get you to the principal register. Descriptive trademarks are a close second when it comes to the lower end of the trademark strength continuum. You can make an argument that it is descriptive because participants in float therapy are buoyant because they are floating. A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. Examples, please? Some examples of descriptive trademark s include: If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive. Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration. Nothing on this site should be taken as legal advice for any individual case or situation. The time and money involved to register a descriptive mark (if you succeed) is high. Descriptive trademarks are those which consist exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services. Still not sure? Many companies assume that the trademark a business uses (names, logos, slogans and/or jingles) should educate the audience rather than be creative, but this could lead to consumers having no idea what you're selling. Some (fictitious) examples might be GREEN & CRUNCHY in connection with a salad restaurant, or BOOKS AND MORE in connection with a book retailer. If you feel your brand has already succeeded in this endeavor, you can file an application for trademark registration to the principal register. However, you can also argue that BUOYANT is suggestive because it describes the way a person might feel after the therapy. Generic devices will never be a trademark whereas devices that are fanciful, arbitrary, or suggestive aredistinctive, and therefore they can function as trademarks. Cir. Obviously that does not happen overnight, which is why a suggestive or more distinctive mark is usually a better starting point. This source indicator feature of a mark is also known as secondary meaning. Potentially gaining rights involves far more work than typical registration. Educating the public doesn't happen overnight either. We want to know. For example, an orange seller cannot trademark the term 'orange' as it is a generic word, or 'juicy' as it is merely a descriptive term for an orange. If you decide to go for a fanciful or arbitrary mark, there are tools you can use to educate the consumers right away: These are short phrases (fewer than eight words is best) placed on your marketing materials to educate consumers. On the other hand, it does have implications from a trademark perspective. In the second circuit, nominative fair use is considered as a factor in determining the likelihood of confusion when evaluating . Even though they dont truly describe the traits of a good, these applications are still treated the same as descriptive trademark applications. This field is for validation purposes and should be left unchanged. The latter five examples show that acquiring distinctiveness is not an impossible task. This must be done in the following format: No claim is made to the exclusive right to use delicious burgers apart from the mark as shown.. You are also invited to review the free information on our website. These are words that give an idea of the product or service but don't describe it specifically. 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. Unlike more distinctive types of trademarks, you cannot receive protection for descriptive trademarks once you start using them in commerce. 2021 Traverse Legal, PLC. If you're looking to get on the register of the US Patent and Trademark Office, a descriptive mark isn't a wise choice. A descriptive trademark is one that describes the goods or services with which the mark is used. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state . It is harder to distinguish your brand from competitors. There are ways, however, that such a brand identifier can graduate to the principal register. 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. Abe is committed to his client's success. A good slogan will have a call to action, humor where appropriate, create an image and generate emotion. 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. 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 . Why? 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 For example, consider a company, which sells distilled drinking water and applies for the trademark, "Clean". When they see your mark, they actually think of you/your business. You can use images in a variety of marketing materials with your trademark place on the image or nearby. 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. Why Is Picking A Strong Mark Important? 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. 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 These words don't function as a trademark, as they fully describe a product by identifying it. Our leading internet law firm has lawyers and law offices in the following locations. In order to do so, you accomplish something more than a descriptive trademark by acquiring whats known as an acquired distinctiveness. How to Search TESS like a Trademark Examiner. 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. However, learning to search TESS is challenging. Pulling this off, however, does take dedication to establishing a secondary meaning. 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. This is a personal choice that each company needs to make. Any good trademark registration attorney will encourage you to avoid descriptive trademarks and pick something more creative and arbitrary. They instead use terms or designs that suggest specific qualities and traits. 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. In fact, an image helps describe your product. Cannabis or Weed for legal marijuana businesses. 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. The U.S. Patent Office is now rejecting that initial application, saying the term is primarily geographically descriptive. However, the Trademark Office may let you amend to try and get your mark on the Supplemental Register. Descriptive trademarks can only receive trademark protection in the U.S. if they achieve something called "secondary meaning." American Airlines (provides flight services in America). Almost like taglines, they're less descriptive but can be trademarks themselves as they often involve suggestive traits. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. Legal departments view trademarks as helping to identify the first creator of a good or service, so they usually don't want to use descriptive words due to the problems addressed above. A descriptive trademark is one that describes the goods or services with which the mark is used. For example, consider a company, which sells distilled drinking water and applies for the trademark, Clean. In theory, an imaginative trademark is stronger than an expressive trademark, so it has more standing in the court system. Disagreement Between Marketers and Legal Departments. Some examples of descriptive trademarks are: By getting a federal trademark, you have exclusive rights in your industry to a name, logo, and slogan. 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). The thinking is that if they pick a descriptive word for their company name they will get more business. They are expensive to defend, because they are weak. Cir. 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. To get a descriptive trademark on the principal register, evidence of acquired distinctiveness must be submitted. What is a descriptive mark? Brian Hall - January 11, 2012 - Trademark Basics, Trademark Law. Descriptive trademarks are a type of more generic trademark that describe the underlying good or service. If thats the mark you used to describe a spoon with a deep bowl for scooping, it is whats known as a descriptive trademark. 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 Trademark Vs. Suggestive Trademark Issues: Mixed Culture Jul. Traverse Legals trademark attorneys handle hundreds of trademark infringement matters for clients like you each year, and manage over 1,000 trademarks globally. 1127. If you think the USPTO is wrong in its initial action, a persuasive response must be filed. A descriptive trademark presents challenges in this regard because some may see the trademark as merely describing the goods. Cold and creamy: a potential mark for ice cream, but since it describes one of the characteristics of the product, it isn't likely to qualify as trademark. Of course you can see how one might come to either conclusion. 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. 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). Were here to help. Descriptive marks are those trademarks or service marks that only describe the products or services to which they are applied. A suggestive mark, on the other hand, is something that alludes to its purpose but doesn't explicitly state it. Trademarks that are highly descriptive or merely descriptive of the goods or services cannot be registered on the Principal Register and hence the applicant loses out on multiple benefits. The second option, though, would require a bit of imagination on the part of the consumer. Marketers love describing their products, so that they can sell as may products as possible. This status, however, grants the mark much less protection. Our trademark litigation attorneys have record verdicts in federal courts across the United States in trademark infringement cases. 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 mark may fall into a gray area between descriptive and another level on the spectrum of trademark distinctiveness. Similarly, an optics store known as Vision Center would also be deemed merely descriptive and not entitled to exclusive trademark protection. Someone walking by a hamburger stand whose sign read Hot and Juicy Burgers, for instance, may understandably think the business had no name at all. If the trademark is not descriptive, the company will need to set aside a big marketing budget. These are the stronger trademarks and much easier to protect from infringement. The line can sometimes become blurry. Were here to field your questions and concerns. Fanciful trademark example: Kodak (cameras and film). and Camel (cigarettes). ). 104 Key Computers (104 Key is a category of keyboards). Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable. DefinitionA trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. Trademarks are governed by both state and federal law. Contents 1 The spectrum of distinctiveness 1.1 Fanciful marks 1.2 Arbitrary marks This grants protection for a trademark but not to the unregistrable portion. The public needs a certain degree of imagination in order to understand what product is advertised. 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. A merely descriptive trademark is one whose dictionary definition is synonymous with a quality of the good or service. Many people request that I prepare applications for trademarks that are considered 'merely descriptive'. One of the more important factors to keep in mind is that the trademark needs to be distinctive. 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. Descriptive trademarks like these examples, which only include words based on aspects, highlights, end results, or product uses won't qualify for a trademark. A descriptive trademark is capable of being registered with the U.S. Patent and Trademark Office and functioning as a source of goods. 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. Descriptive marks can be trademarks when there has been a secondary meaning established; otherwise they aren't protected. Secondary meaning in trademark law refers to a way that a seemingly non-trademark-able term or phrase can be trademarked. You can use taglines to briefly describe the product or service that you are offering. The words GRILLED and CHICKEN aregeneric, because it literally says what the product is. However, when creating a trademark it is best to aim for strong trademarks instead. Put simply, a descriptive trademark is exactly what it sounds like: generally, it is a name that describes something about the products/services it is used with. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. New York (212) 203 0957 | Boston (617) 616 5761. By including such a disclaimer, its possible to have descriptive portions of a trademark listed on the Principal Register. Youve been listening to Trademark Law Radio. They both describe characteristics of a product or service, but the latter does so directly. A mark that's achieved a secondary meaning is usually entitled to the protections granted to suggestive, arbitrary and fanciful marks. Cir. Descriptive trademarks are words, phrases or designs that describe the characteristics, functions, ingredient, quality, size, uses, or other elements of the product or service. The key with taglines is to make them short; the shorter the better but usually less than eight words. Some descriptive mark examples are: 104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive. Are customers likely to believe that the misdescription describes real product characteristics? The distinctiveness of a given trademark exists along a continuum, called the Spectrum of Distinctiveness, and runs the gamut from fanciful and highly distinctive to Generic, or not distinctive at all. Descriptive marks are the next level and are afforded more protection - with a catch. 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. This latter difference is why companies opt for descriptive words where possible, as it helps consumers making the connection between the mark and product. They usually consist of a random assortment of letters to create a word. Only then can you determine whether the mark describes something that is important or significantabout the goods or services. However, there's no need for a proof. A descriptive trademarkidentifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. 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. By continuing to use this website, you agree to the use of cookies. Disclaimer | Website by JB, Trademark Value: How Your Brand Translates to Bucks, New Amazon Brand Registry Requires Trademark Registration. When submitting proof that your descriptive trademark has earned the secondary meaning, try to be as thorough as possible. But, what exactly is a merely descriptive trademark? These marks are capable of holding up fairly well in court. There are countless descriptive trademark examples out there, but some famous brands have also managed to establish acquired distinctiveness with their identifiers. Merely descriptive trademarks cannot be registered to the principal register but they can achieve registration on the supplemental register. Note: The word only needs to describe one major aspect of the product, not everything about it. Would consumers purchasing decisions likely be affected by the misdescription? 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. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. In a perfect world, an arbitrary or fanciful mark is best, as they are protected. 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. Customer loyalty and awareness help a business maintain its market share. A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. When applying for a descriptive trademark, contact an experienced lawyer through UpCounsel for any questions and legal guidance. 2005) (citing Estate of P.D. Should I File a Multi-Class Federal Trademark Application? The fictional brand Texadomes Delicious Burgers, for instance, contains fanciful, descriptive and generic words. Of course not. Descriptive trademarks that are refused registration on Principal Register are given the opportunity to go to rehab. The Federal Circuit attempted to simplify this distinction stating that descriptive trademarks impart information directly whereas suggestive trademarks require some mental pause. This often occurs with identifiers that are plays on words. Austin, Texas Office 600 Congress Ave, 14th Floor Austin TX 78701 (866) 936-7447, Detroit, Michigan Office 1001 Woodward Ave, Suite 500 Detroit MI 48226 (866) 936-7447, Los Angeles, California Office 301 E. Colorado Blvd, Pasadena, CA 91101 (213) 531-0029, Traverse City, Michigan Office 810 Cottageview Drive, G20, Traverse City, MI 49684 (231) 932-0411. 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 United States Patent and Trademark Office (USPTO) maintains two registers for trademarks. Acquired distinctiveness can occur before or after an application is submitted. A geographically descriptive mark may acquire distinctiveness when the consuming public recognizes the mark as identify the source of a product or service. They're only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years. A suggestive trademark is one stop up from a descriptive trademark. Here are some examples: The USPTO's TESS database offers powerful and free trademark searching. If your products and services are good, people will quickly come to know you as your brand and went consumers say your brand name, everyone will know they are talking about you. 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 . 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. The first is the Principal Register - this is the best of the best. A distinctive mark distinguishes a company's goods and services from the goods and services of competitors. More specifically, it may describe the qualities, characteristics, feature, purpose, or function of those goods or services. Specifically, a trademark is unregistrable if it is clearly descriptive or deceptively misdescriptive of: a) the character or quality of the goods or services with which it is associated. The trademark described a carbonated beverage that had, as its main ingredients, flavoring from the kola nut and coca leaves: COCA-COLA. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions. Claims of trademark infringement can put a lot on the line. See also [wex:service mark], [wex:collective mark], [wex:certification mark], [wex:trade name]. Examples are the Sichuan High Court's appeal decision in the "green prickleyash ( . A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. Disclaimer: The information on this website is for general information purposes only. A trademark is considered "merely descriptive" if the mark itself describes a quality or characteristic of the mark's goods or services. So, when youre deciding what mark to use for your particular goods or services, it is a balancing act because, on the one hand, you want to have a mark that in some way, shape or form gives the consuming public an idea of what youre selling. 2. That means that if you file a new application, you may be allowed registration on the Principal Register. See 15 U.S.C. 21 June 2022. This doesnt mean, however, that descriptive trademarks cant be useful. What Are the Alternatives to Descriptive Trademarks? Who should I identify as the owner of my trademark registration? After years of continuous use, though, the consumers have started to identify the mark with the specific car rental provider. Competitors may not be prevented or discouraged from using your trademark. Hire the top business lawyers and save up to 60% on legal fees. When you want to pick a brand and trademark which comes to mean something special and only designates you in the market. Marks that are merely descriptive are not protected or accorded trademark rights. Descriptive. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. A distinct mark sets the mark's goods or services apart from those of others. 1052(e)(1); see TMEP 1209.01(b), 1209.03 et seq. Generic verbiage or designs do less than describing a product they simply present the name of the product. If a mark describes the characteristic, function, quality, (ingredient and so on) of the goods or services, the mark will usually be considered as a descriptive mark. The test for determining whether a term is primarily geographically descriptive is whether: 1) the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public, 2) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or . Here, the mark would be deemed descriptive because it quite literally describes the quality of the Water being sold. Descriptive trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. Due to current volume we are unable to offer free consultation. The differences between "merely descriptive" and "generic" and between "merely descriptive" and "suggestive" is narrow. Learn more in this article or contact us for more information. Namely, whether its on the principal register with all the super benefits that go along with that or on the supplemental register. I look forward to speaking with you. So when it comes to trademarks, we know what we are doing. For example, descriptive trademarks tend to be more valuable from a marketing perspective because consumers generally know immediately what you are selling. For instance, a term like "best" quality describes the product or the service. 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. Was this document helpful? More Details About the Different Marks. A merely descriptive trademark isn't eligible for trademark protection and added benefits. In other words, these are descriptions that could be attributed to the goods or services offered by a business. If youve already invested time and money in these identifiers for your brand, there are upsides as well. 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. 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. Suggestive marks may lead to litigation but are better than descriptive and general marks. Well, if you have a descriptive trademark and apply to register it with the U.S. Patent & Trademark Office, you will receive a rejection. Speak with an internet lawyer from our law firm today for more information. Instead, your descriptive trademark must gain acquired distinctiveness (sometimes referred to as secondary meaning). 6. So what does this mean for trademark registration? Descriptive marks don't have a high sale value if you decide to sell/license the trademark or business. 1. 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. 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. A trademark must be distinctive to be registered on the Principal Register. A descriptive trademark is what it sounds like: a trademark that describes a characteristic or element of the goods or services that you offer under that brand name. An example might be "Cold and Creamy" for ice cream, or "Crystal Clear" for a brand of televisions. You should look for another attorney. All Rights Reserved. The USPTO typically refuses registration of a mark that is deemed "merely descriptive," thereby limiting enforcement and protection of the mark. You could look at adding a description to a mark somehow, although this will weaken the trademark. [1] " Generic" terms are used to refer to the product or service itself and cannot be used as trademarks. explains common defenses and how they help strategize with clients facing civil lawsuits. Descriptive marks (what the "Supreme" mark is) are generally adjectives that describe the product or its functions, and only receive slightly more protection than generic marks. Blue jeans, computers and motorcycles would all constitute generic trademarks. We use cookies to improve your experience on our website. What Is a Merely Descriptive Trademark? The only way a mark, whether a word or logo, qualifies as trademark is if it's distinctive. The Supplemental Register is powerful because it allows a descriptive mark to maintain a certain level of protection while it establishes Secondary Meaning, or Commercial Recognition in the Market, but does not provide nearly the same guarantees as the Principal Register. How Can a Descriptive Trademark Be Protected? A logo can describe a piece of your product. Keep Reading to Find Out, Trademark Search Trademark Monitoring TM Office Action. It is similar to an adjective. When I tell them that the mark is 'merely descriptive' and will be difficult to register Want High Quality, Transparent, and Affordable Legal Services? 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. After all, if your company name doesnt describe what you do, a consumer may keep going to the next listing. Registering your trademark correctly from the start is important. This occurs when a descriptive identifier gains secondary meaning in the minds of consumers. Trademark Infringement, Milwaukee, Wisconsin, Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan, Indianapolis, IndianaBoard Meeting (Hartford, Connecticut). The Principal Register is the main register at the USPTO and having a mark registered thereon provides the trademark owner with valuable statutory rights for protecting and enforcing the mark. Part of this registration, which is for cooked chicken, is generic and part is descriptive. If the verbiage or design in question creates a distinct commercial impression separate from its individual elements, though, a disclaimer may not be necessary. Thinking long-term about your mark is vital. While a descriptive trademark sounds like a good idea, it really wont be over the long term. Acquired distinctiveness can be established via: A long period of continued use of the mark, Heavy advertising in terms of reach and expenditure. Unique brand identifiers are meant to help consumers differentiate between your products or services and those from others. Indeed, in the event that a prospective mark is Merely Descriptive of the goods/services sold under the trademark, the mark will not be afforded protection. 11 News spoke with a local trademark lawyer about what this means. The U.S. Patent and Trademark Office (the "USPTO") has provided some examples that are useful to consider when trying to understand when a mark is merely descriptive. 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. Resist your temptation to choose a descriptive word or phrase for your trademark or even a descriptive domain name. . A descriptive trademark is capable of being registered with the U.S. Patent and Trademark Office and functioning as a source of goods. b) the conditions of production of the goods or services. Examples of Famous Descriptive Trademarks. Mastering TESS will provide you with unparalleled trademark searches that you can use to identify potential risks that may . TMEP 1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Any confusingly similar applications will be rejected. Descriptive trademark as business name. Suggestive mark examples: Greyhound (bus), Citibank (financial services), Playboy (magazine). "A picture paints a thousand words", they say. It may be unfair to grant a single brand the exclusive rights over such a term. Reasons Why You Usually Can't Protect Descriptive Trademarks, 7. . This means an identifying term or design misdescribes some characteristic of the product (e.g. A descriptive mark is considered the weakest of protectable trademarks. No one could legally use the word anymore, which would result in a silly number of infringements in everyday occurrences. The trademark is not considered in a vacuum. Instead, it is considered in the context of the relevant goods or services. Western Digital (located in California and sells tech products). Critically, Secondary Meaning does not happen overnight and may take years and many dollars spent in marketing to develop. Would you like to do a search? We serve the following localities: Los Angeles County, Long Beach, Los Angeles, Pasadena, Santa Monica, Beverly Hills, Burbank, Glendale, Malibu, Manhattan Beach, North Hollywood, Pacific Palisades, Redondo Beach, Whittier, Orange County, Laguna Niguel, Lake Forest, Anaheim, Costa Mesa, Huntington Beach, Irvine, Mission Viejo, Newport Beach, Santa Ana, San Diego County, Carlsbad, Encinitas, La Jolla, Oceanside, and San Diego. For example, take the mark BUOYANT used in connection with float therapy services. Interestingly enough, one of the most famous international trademarks was originally descriptive. The extent to which the mark has been advertised, The length of time the trademark has been used in commerce, The extent to which consumers view and associate the trademark with its goods/services. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. The test applied is whether an ordinary consumer in Canada would be misled concerning the goods or services with which the trademark is associated. 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. So long as a descriptive mark is capable of being a source identifier (i.e. Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. 5. It tells the consumer that the chicken is Kentucky style or that it originates from Kentucky. SoftHide for belts containing no leather). However, just because a mark is deemed . 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) ]. 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. Understanding the Strength of Trademarks, 4. 10,000 supplemental trademark registrations. 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. These are terms that describe the goods or services to which the mark is applied, or a characteristic of those products. 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. 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. Placed near a trademark, they describe a product or service concisely. These distinctions are very important from a trademark rights standpoint. DefamationBusiness LawEmployment LawCopyrightTrademarkPatentInternet LawReal EstateCorporate and SecuritiesPersonal InjuryOther. Inexperienced trademark registration attorney can help you pick a name for your company, good or service which has the potential to achieve strong trademark rights from early in your business model. Trademark Act Section 2(e)(1), 15 U.S.C. Once your descriptive trademark has been in use at least five years, there is a presumption that you have acquired distinctiveness. In addition to difficulty with registration, descriptive trademarks have a variety of other disadvantages: The big issue with descriptive trademarks is that theyre not inherently distinctive. If you are unsure whether your mark is a descriptive mark, ask yourself whether the mark describes aspects of your service or product. Usually you find out through consumer surveys. 104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive. Suggestive brand identifiers require imagination on the part of the consumer. In particular, they wouldnt be entitled to registration on the principal register of the United States Patent and Trademark Office. Descriptive Trademarks have had similar problems in whether they can be registered as a Trademark, especially since it would be hard to prove in a passing off case as with Character Merchandising. So, again, to differentiate, a merely descriptive trademark is not entitled to protection. But they can still be registered as long as a descriptive mark is capable of identifying the source of the goods or services. When a new company is entering a market, choosing the perfect mark to represent the business isn't easy. 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 . Listed below are some fictitious companies whose trademarks would qualify as descriptive along with a few real-life companies that have developed secondary meaning. Christopher Roden: So a descriptive mark is something that has the capability of functioning as the origin of a set of goods or the set of services, but for the most part what the mark . 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. Arbitrary mark examples: Apple (computers etc.) 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. Learn more about trademark law in our free . If you decide to utilize a descriptive trademark regardless, then you should know the upside and downside. How do you know a mark has acquired a distinctiveness? They must remain for five years before seeking to be released. Drawing the line between descriptive and suggestive trademarks can also be quite difficult. The USPTO office will decline any applications that fall . When attempting to register a descriptive term, a disclaimer is common. (3) a relevant consumer viewing the . 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. Terms of Use, Disclaimer & Privacy Policy. Because your Trademark is Everything. Descriptive trademarks are the most common marks which new companies and startup companies seem to gravitate towards. 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. Share it with your network! 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. Their use decreases the chances of a likelihood of confusion occurring. 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 [email protected], or complete the contact form found on this page to schedule your free initial consultationtoday. By only granting trademarks to those names/logos/slogans that are sufficiently distinct vis--vis the goods/services sold under the trademark. 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. First, lets look at the least (or not at all) distinctive marks: generic trademarks. Conversely, an applicant may accept that the mark is Descriptive and instead petition the Examining Attorney to allow the mark to register on the Supplemental Register while it accrues secondary meaning for eventual registration on the Principal Register. A trademark that's entirely descriptive cannot be protected. Chances are, other businesses have chosen the same or similar descriptive mark name for their goods and services. If the trademark examiner believes the word is still descriptive, the owner will need to prove to them it is now suggestive. These descriptive words, phrases or designs do not distinguish the source of the products or services and do not function as a trademark. 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. 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. Beckwith, Inc. v. Commr of Patents , 252 U.S. 538, 543 (1920)). 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). The difference between these two types of trademark can be contentious. Contact aTrademark Lawyertoday. 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. "Descriptive" marks must acquire distinctiveness through secondary meaningconsumers have come to recognize the mark as a source indicatorto be protectable. Trademark Law FundamentalsLearn Trademarks, Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter. 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