How Does the USPTO Define a Descriptive Trademark?
Want to learn about descriptive trademarks? Let’s get into it!
When it comes to trademark registrations, the United States Patent and Trademark Office (USPTO) generally has two main purposes. 1.) The USPTO protects applicants who have a distinct name, slogan, or logo from competitors’ brand appropriation. And 2.) The USPTO aims to protect the consuming public from mistakenly buying any goods or services from a company that is using a competitor’s trademark. You may want to avoid descriptive trademarks!
The manner by which the USPTO satisfies these purposes is by only approving registration of definitively distinct trademarks. A trademark is distinct when it is easily recognizable by consumers as associated with a particular good or service. You should certainly familiarize yourself with distinctiveness if you’re seeking to obtain a trademark!
Defining Distinctiveness in the Eyes of the USPTO
If a trademark is not distinct, the USPTO will not grant the protection of registration. What type of mark isn’t considered distinct? Well, namely any mark that is seen as descriptive. The trademark can’t just describe the goods or services! It has to have a sort of uniqueness in and of itself. Not only that, the uniqueness of the mark has to be identified with a particular brand. See this logo, read this slogan, hear this name, know the brand it represents – sorta thing. The trademark has to identify the source of the goods or services. A descriptive trademark doesn’t meet this requirement!
Now, you may be curious as to how the USPTO determines distinctiveness. A crucial inquiry! The USPTO examining attorney assigned to a given petition will evaluate the characteristics of a trademark. How? Based on the type of goods or services the trademark pertains to. They examine the category of distinctiveness and whether that’s appropriate. Any mark considered descriptive won’t be eligible for protection on the Principal Register!
What Exactly Is a Descriptive Trademark?
Many applicants encounter confusion when trying to figure out if their trademark is descriptive. A merely descriptive trademark is one that describes the function of the goods or services in question. The definition extends to anything that also describes any use or quality, components or ingredients. So, if you wish to trademark the word “Smoke” for a cigar company, the USPTO wouldn’t deem that eligible. Why? Because the mark describes the quality of the product sold and the USPTO can’t allow just one company in such a large industry with lots of competitors to prevent others from using it.
What about “secondary meaning?” If consumers don’t see simply a product but know, by way of the trademark, the source or creator of the product – you’ve got secondary meaning. When customers associate a mark – logo, name, or slogan – with a product, it has secondary meaning. How is this achieved? Principally, through advertising. Advertising is arguably the best way to prove that a given mark has secondary meaning. An example? Consider the brown that UPS uses for its trucks and uniforms. The color is specifically “Pullman brown.” When you see the truck or the uniform, or even that shade of brown, you instantly, maybe even unconsciously, think UPS. This is a rare thing.
Establishing secondary meaning can take decades and enormous amounts of expenditure on advertising. The USPTO assesses the potential secondary meaning of a descriptive trademark using a few criteria. They will look at how much the mark was advertised, the duration of the mark’s use in commerce, and how consumers understand the trademark in association with the goods or services.
Any trademark that is descriptive and which doesn’t have secondary meaning won’t be registered on the Principal Register!
Any applicant who tries to register a descriptive trademark without secondary meaning with the USPTO will face a rejection. The examining attorney will issue a response in the form of an Office Action. The response will essentially state that the mark submitted for trademark registration is refused because it’s descriptive.
Principal Register vs. Supplemental Register
Is the Principal Register the only option? No, it is not! Of course, applicants desire to get their mark registered on the Principal because it affords the greatest amount of protection. It’s suited for any marks that are distinctive or possess a legitimate secondary meaning. On the other hand, the Supplemental Register exists to protect marks that are non-distinctive, or, marks that could be potentially distinctive in the future. If you’ve got a descriptive trademark that you aim to imbue with secondary meaning by way of aggressive advertising and so forth, the Supplemental Register may be a good option. Although, compared to the Principal, the Supplemental doesn’t guarantee the same kind of ownership and enforcement jurisdictions. So, if there’s any infringement on a trademark on the Supplemental Register, the options for legal action against the infringer are more limited.
Have you submitted an application to the USPTO and received an Office Action? Not to worry! You are entitled to respond to the notice issued by the examining attorney. In your response to a descriptive trademark refusal, you’ll need to present an argument that the examiner incorrectly determined that the mark is descriptive. Conversely, an applicant can state that they accept the descriptiveness determination and request to register the mark on the Supplemental Register until further notice.
Need help registering your trademark? Contact our team today! We can map out the most effective strategy for filing during a free consultation.
Up next we will be discussing Trademark Cancellation Proceedings.
