Many people request that I prepare applications for trademarks that are considered ‘merely descriptive’. When I tell them that the mark is ‘merely descriptive’ and will be difficult to register, they are dismayed and disappointed.
To be eligible for a trademark registration through the United States Patent and Trademark Office and receive the associated legal protections, a trademark should be strong and not just describe the goods or services being sold.
This makes sense, since the purpose of a trademark is to help consumers distinguish your goods or services from those of others. If consumers have trouble making the distinction, then your trademark may not be serving its purpose.
Think of a trademark as a source identifier. When a consumer looks at the trademark, it tells them the company that produced the goods or services associated with that mark.
A trademark application may be rejected by the United States Patent and Trademark Office with the explanation that the trademark was considered ‘merely descriptive’. But what does that term really mean? And is it possible to fight back against this determination?
Understanding the Strength of a Trademark
To understand the term “merely descriptive”, you first need to know how the strength of a trademark is legally determined. There are five official categories, from strongest to weakest:
- Merely Descriptive
Fanciful marks are literally made up words. They have no other inherent meaning. Xerox® and Kodak® are good examples. These tend to make the strongest trademarks since they are, by nature, unique.
Arbitrary marks do have meaning outside the trademark, but that meaning is incredibly different from how the business is using them, like Apple® as a computer company or Camel® for cigarettes. These also tend to be quite strong as trademarks.
Suggestive marks serve to suggest the meaning of the mark without acting as a direct description. Some examples include Playboy®, Coppertone®, and Microsoft®. These are moderately strong and tend to be the most common. Businesses like to make their marks evocative of what they are offering while still remaining unique enough to stand out.
Generic marks are just that – generic, like “Auto Mechanics,” “Bikes,” or “Shoes”. These are words that are so widely used and non-specific that anyone selling similar products or services should be able to use them; therefore, they cannot become registered trademarks.
And then there are merely descriptive marks. Falling somewhere between generic and suggestive, descriptive marks are those that describe “an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant services” or products in a literal, straightforward way. Such as “Creamy” for yogurt. Or Coastal Winery for varietal wines. Even marks using a surname usually fall into this category, such as “Smith’s Pawn Shop”.
There is, however, an exception. If a merely descriptive mark attains a “secondary meaning,” or has acquired distinctiveness in the marketplace it can be registered by the USPTO.
Understanding “Secondary Meaning” Marks and How to Get Your Mark There
Secondary meaning is achieved when a specific merely descriptive mark becomes so associated with a particular brand or product that it attains a meaning beyond the original definition.
Let’s look at a couple of examples – Sharp® and Windows®.
When used in reference to televisions, sharp should make you think about technical specifications. The picture – and maybe even the sound – are sharp. They are clear. You do not have to worry about any fuzziness.
However, when you capitalize the word – Sharp® – you know that we are talking about a specific brand. The word has achieved secondary meaning within the world of TVs and consumer electronics in general.
A similar thing happened with windows as a way of describing computer software that used windowing. Despite the fact that iOS and other operating systems use windowing features, no one thinks of that when they hear the word windows in reference to software.
They think of Microsoft Windows®. Because just like with Sharp®, the word windows attained a secondary meaning in the computer world. It is not a way that operating system software works, but a specific product created by Microsoft.
How did these merely descriptive marks attain secondary meaning? The same way anything else might: publicity and long-term use.
In other words, so many people see the trademark associated with a particular brand or product that the mark immediately calls that brand or product to mind. The word comes to mean that brand or product.
Is It Good to Have a Merely Descriptive Mark?
Generally speaking, no, you do not want to have a merely descriptive mark.
Ideally, you want a mark that is at least suggestive, and preferably you want one that is arbitrary or fanciful. Because those are easier to protect.
However, if you are the holder of a merely descriptive mark that has been refused registration by the USPTO, it is possible to obtain registration by arguing that the mark has achieved secondary meaning or acquired distinctiveness.
The trademark applicant has to provide evidence that the mark has achieved a secondary meaning by submitting the following:
- A statement that the mark has become a distinctive indicator of the source for the goods or services through the applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of the statement;
- Proof of how long the mark has been used in commerce;
- Affidavits from customers, dealers, and/or wholesalers;
- The type and amount of advertising of the mark which may include the amount of money spent on advertising;
- The numbers of sales of products and services under the mark; and
- Surveys of consumers designed to show that consumers associate the mark with your brand or product.
Remember, most businesses get to that point through long-term use and publicity. Unless your business and mark have been around for years or have a large advertising budget devoted to raising the public consciousness about your mark, battling it out with the USPTO over a merely descriptive mark can be an uphill slog. Even after submitting all of the affidavits, financials, and survey results, the USPTO may still determine the mark is merely descriptive.
If you would like to learn more about merely descriptive marks and secondary meaning or acquired distinctiveness, do not hesitate to get in touch with the Marks Gray Intellectual Property team.