Overcoming a Rejection Based on Descriptiveness
The U.S. Patent and Trademark Office (“USPTO”) may refuse to register an applicant’s mark if the applicant’s mark is merely descriptive. Under Section 2(f) of the Lanham Act, a mark must be distinctive to be registered as a trademark on the USPTO’s Principal Register. A distinctive mark is one capable of distinguishing the goods and service it is used upon from the goods and services of others.
There are five (5) categories on the distinctiveness spectrum, and an applicant’s mark will fall into one of the five. The applicant’s ability to register their mark will depend on the nature of the mark and where it lies on the spectrum. The categories are (in order from most to least distinct): fanciful, arbitrary, suggestive, descriptive (including surnames), and generic. If the mark is highly distinctive, it is considered a “strong” mark in legal sense and is registrable. A strong mark is one that an applicant or trademark holder can most likely prevent others from using. Fanciful, coined, and arbitrary marks are considered the strongest.
For example, APPLE (the computer company) is a strong mark because the mark does not describe or have anything to do with computers. Conversely, the weaker marks, which include descriptive, generic, and some suggestive marks are more difficult and expensive to protect. For example, in the context of the fruit industry, APPLE is a generic term that would not be protectable on its own.
When a mark simply describes or names characteristics associated with the goods of services upon which it is used, it is considered descriptive, and thus non-distinctive and not registrable as a trademark. Examples of merely descriptive marks include COLD and CREAMY for ice cream. However, even if the mark is initially descriptive, it may nonetheless become protectable as a trademark on the Principal Register if the applicant can show that the mark has acquired distinctiveness or secondary meaning over time.
A mark obtains secondary meaning where is not only identifies the goods or services, but their source. This may happen where the mark is exclusively used for several years. An example of a descriptive mark that has acquired secondary meaning over time is SHARP for televisions.
Overcoming a Rejection Based on Descriptiveness
Applicants can provide convincing arguments that the mark is not descriptive. As examples, Applicants can show that the dictionary meaning of the words in the proposed mark is different from the features, functions, or characteristics of the goods or services. Applicants can also show that competitors do not use the proposed mark in describing similar competing goods or services. Alternatively, applicants can offer evidence that the mark has acquired distinctiveness or secondary meaning and thus is registrable in their response to the Office Action. Evidence of secondary meaning accepted by the USPTO under Section 2(f) includes:
- A claim of ownership of prior registrations on the Principal Register for an identical mark for goods or services that are either identical or similar to the mark listed in the pending application;
- A statement verified by the applicant that the mark has become distinctive following the substantially exclusive and continuous use for five (5) years prior to the date where the claim of distinctiveness was made;
- Actual evidence that the mark has acquired distinctiveness.
The applicant may submit any combination of the above evidence, however, if the USPTO determines that prongs (1) or (2) are insufficient to establish acquired distinctiveness, the applicant may submit actual evidence of acquired distinctiveness. Further, long-term use alone is generally insufficient to show acquired distinctiveness.
Actual evidence of acquired distinctiveness may include advertising and promotional materials showing the use of the mark as a source-identifier, the amount of money used for these promotions, statements from consumers, and any other evidence showing consumers associate the mark with the applicant’s goods. If the applicant successfully establishes that the mark has acquired secondary meaning, the mark becomes registrable on the Principal Register under Section 2(f) of the Lanham Act.
If an applicant is unable to provide convincing arguments against descriptiveness or to demonstrate that the mark has acquired secondary meaning, the other option is to register the proposed mark on the Supplemental Register, which is a secondary register of trademarks maintained by the USPTO. The owner of a mark on the Supplemental Register will still be able to put others on notice of their trademark and file infringement cases in federal court; however, a Supplemental Registration does not convey the presumptions, ownership, and the exclusive right to use the trademark provided by registration on the Principal Register.
If you are facing a descriptiveness rejection and need assistance in overcoming the rejection, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies, some of whom have over a hundred trademark applications and registrations in the US and worldwide.