descriptive trademark

A descriptive trademark presents challenges in this regard because some may see the trademark as merely describing the goods. So what does this mean for trademark registration? They are expensive to defend, because they are weak. See also [wex:service mark], [wex:collective mark], [wex:certification mark], [wex:trade name]. 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. A geographically descriptive mark may acquire distinctiveness when the consuming public recognizes the mark as identify the source of a product or service. Near the top of the list of possible trademark rejections is mere descriptiveness. The differences between "merely descriptive" and "generic" and between "merely descriptive" and "suggestive" is narrow. 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. Interestingly enough, one of the most famous international trademarks was originally descriptive. This source indicator feature of a mark is also known as secondary meaning. The graphical element should be able to leave a lasting impression. Our second level of strength of trademarks is known as the descriptive trademark here to tell us more is our good friend, trademark attorney Christopher Roden. 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 A descriptive trademark is one that describes the goods or services with which the mark is used. Other companies think that being creative is the key. Disagreement Between Marketers and Legal Departments. 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. Abe is committed to his client's success. 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. This field is for validation purposes and should be left unchanged. On the other hand, it does have implications from a trademark perspective. 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). 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. There are ways, however, that such a brand identifier can graduate to the principal register. Registering your trademark correctly from the start is important. 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. International Business Machines (sells business machines internationally). New York (212) 203 0957 | Boston (617) 616 5761. 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.. A descriptive trademark is typically a weak trademark because it describes the goods and services being offered by the brand owner. 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. You could amend your application for the Supplemental Register, but youll miss out on many benefits by doing so. [1] " Generic" terms are used to refer to the product or service itself and cannot be used as trademarks. The first is the Principal Register - this is the best of the best. Western Digital (located in California and sells tech products). Were here to field your questions and concerns. The trademark Cold and Creamy, for instance, features verbiage that can describe any product created by ice cream making companies. Usually you find out through consumer surveys. Affidavits and depositions (from consumers, experts, owners, etc. The word doesn't mean anything until it's related to the company's product or service. Acquired distinctiveness can occur before or after an application is submitted. How to Search TESS like a Trademark Examiner. If you go the former route and your trademark isnt eligible due to mere descriptiveness, you can amend your submission for the supplemental register. Trademark Act Section 2(e)(1), 15 U.S.C. 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. 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. These descriptive words, phrases or designs do not distinguish the source of the products or services and do not function as a trademark. Because merely descriptive trademarks do not perform the essential purpose of a trademark which is identifying the source of the good/service. In this case, the mark can be moved to the Principal Register. However, there's no need for a proof. For example, consider a company, which sells distilled drinking water and applies for the trademark, "Clean". 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. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. Taglines are short descriptive phrases that can be placed on marketing material. In the second circuit, nominative fair use is considered as a factor in determining the likelihood of confusion when evaluating . Of course not. 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. For example, descriptive trademarks tend to be more valuable from a marketing perspective because consumers generally know immediately what you are selling. However, when creating a trademark it is best to aim for strong trademarks instead. By continuing to use this website, you agree to the use of cookies. We also act as lead litigation counsel for trademark infringement cases across the world. 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. After five years of continuous use, though, a mark that was deemed descriptive can acquire protection by achieving the status of "acquired distinctiveness." This ensures stronger levels of protection and fewer hurdles to registration. Merely descriptive trademarks cannot be registered to the principal register but they can achieve registration on the supplemental register. 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. 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. We want to know. 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. Descriptive trademarks are words, phrases or designs that describe the characteristics, functions, ingredient, quality, size, uses, or other elements of the product or service. Most commonly, we might debate between generic and descriptive, or between descriptive and suggestive. You can use images in a variety of marketing materials with your trademark place on the image or nearby. A descriptive trademark is one that describes the goods or services with which the mark is used. 10. A suggestive trademark is a trademark that has some association to the product or service at issue but it is not immediately clear. Still not sure? Would consumers purchasing decisions likely be affected by the misdescription? 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. A distinct mark sets the mark's goods or services apart from those of others. 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. 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. 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. Learn more in this article or contact us for more information. . This latter difference is why companies opt for descriptive words where possible, as it helps consumers making the connection between the mark and product. 1. These are essentially random marks, therefore most courts will grant them protection. Descriptive trademarks are the most common marks which new companies and startup companies seem to gravitate towards. 2022 Kevin Haynie 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. They are nouns pertaining to common language, so they can't be registered. An example might be "Cold and Creamy" for ice cream, or "Crystal Clear" for a brand of televisions. So when it comes to trademarks, we know what we are doing. Generic verbiage or designs do less than describing a product they simply present the name of the product. Keep Reading to Find Out, Trademark Search Trademark Monitoring TM Office Action. 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. Developers or Coders for software developers. The words GRILLED and CHICKEN aregeneric, because it literally says what the product is. Trademark Law FundamentalsLearn Trademarks, Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter. Contact aTrademark Lawyertoday. In other words, these are descriptions that could be attributed to the goods or services offered by a business. We use cookies to improve your experience on our website. 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. Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable. 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. However, 'Apple' was able to be trademarked in terms . 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. If the verbiage or design in question creates a distinct commercial impression separate from its individual elements, though, a disclaimer may not be necessary. Zatarains, Inc. v. Oak Grove Smokehouse, Inc. Why Is Branding Important For A Business? This is a personal choice that each company needs to make. An example would be deep bowl. This often occurs with identifiers that are plays on words. This ensures stronger levels of protection and fewer hurdles to registration. Resist your temptation to choose a descriptive word or phrase for your trademark or even a descriptive domain name. If this change has yet to take place, though, the brand identifier will need to first be listed on the Supplemental Register. (3) a relevant consumer viewing the . Some descriptive mark examples are: 104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive. Descriptive trademark as business name. American Airlines (provides flight services in America). You should look for another attorney. 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. How Can a Descriptive Trademark Be Protected? This status, however, grants the mark much less protection. It may be unfair to grant a single brand the exclusive rights over such a term. A distinctive mark distinguishes a company's goods and services from the goods and services of competitors. There are about 10,000 supplemental trademark registrations granted each year. The owner of a descriptive mark can show, usually through consumer pools, that the mark has acquired a secondary meaning and register it. Here, the mark would be deemed descriptive because it quite literally describes the quality of the Water being sold. "A picture paints a thousand words", they say. 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. I look forward to speaking with you. It is certainly true that no one knows who you are when you 1st start out as a small start-up business. If you feel your brand has already succeeded in this endeavor, you can file an application for trademark registration to the principal register. 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. 21 June 2022. If you decide to utilize a descriptive trademark regardless, then you should know the upside and downside. The word which has descriptive quality should only describe one major feature of that . These words don't function as a trademark, as they fully describe a product by identifying it. Thinking long-term about your mark is vital. Answer this question: "Does this word describe the product or service?" Unique brand identifiers are meant to help consumers differentiate between your products or services and those from others. They must remain for five years before seeking to be released. But they can still be registered as long as a descriptive mark is capable of identifying the source of the goods or services. However, you can also argue that BUOYANT is suggestive because it describes the way a person might feel after the therapy. You are also invited to review the free information on our website. This occurs when a descriptive identifier gains secondary meaning in the minds of consumers. 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 can't be registered, but they could still be the best choice for your business, especially if you have a low advertising budget. The Top 10 IP and Trademark Blog Posts of 2022. That trademark is now, of course, a uniquely recognized trademark . Cir. The public needs a certain degree of imagination in order to understand what product is advertised. Descriptive trademarks can only obtain protection once a sufficient amount of goodwill related to the trademark has been developed. A descriptive trademark that has acquired "secondary meaning" (e.g., that the trademark has become recognized by the relevant consumer pool as a brand of specific goods and services from a single source) may gain protection and be registered by the United States Patent and Trademark Office. 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). They are often placed close to a trademark. 8. The Importance of Trademarks for NonProfit Organizations, 5 Legal Considerations for trademark rebranding, Trademark Cease and Desist Dos and Donts, Conducting a Trademark Availability Search, Protecting Your Trademark from Infringement. While every trademark aspires to register on the Principal register, USPTO also has another register reserved to Descriptive trademarks called, the Supplemental Register. No need to spend hours finding a lawyer, post a job and get custom quotes from experienced lawyers instantly. 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 . That means that consumers no longer think of your mark as a description of products/services. 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. The USPTO office will decline any applications that fall . 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. "Descriptive" marks must acquire distinctiveness through secondary meaningconsumers have come to recognize the mark as a source indicatorto be protectable. 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. 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. To be deceptively misdescriptive a trademark must rst be found to be descriptive and then be found to mislead the public as to the character or quality of the goods or services. The only brand identifiers weaker than descriptive trademarks are generic trademarks. 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. 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. What is a descriptive mark? Here's an example of a trademark that was recently found non . 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 . 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. Whether this is your initial submission or a five-year follow-up to listing in the Supplemental Register, the USPTO examining attorney will decide whether your documentation proves that a secondary meaning in the minds of consumers has been established. A descriptive trademark is a word that identifies the characteristics of the product or service to which the mark pertains. The USPTO may restrict registration of these terms or only allow them to be registered to the supplemental register. 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. 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. Well, if you have a descriptive trademark and apply to register it with the U.S. Patent & Trademark Office, you will receive a rejection. Coca-Cola (made with ingredients from coca leaves). 2005) (citing Estate of P.D. 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 . Speak with an internet lawyer from our law firm today for more information. When attempting to register a descriptive term, a disclaimer is common. Due to current volume we are unable to offer free consultation. 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. To get a descriptive trademark on the principal register, evidence of acquired distinctiveness must be submitted. b) the conditions of production of the goods or services. How To Decide the Right Mark For Your Business. Secondary Meaning is achieved when the consumer no longer merely sees a product but instead understands who created that product. Hendershot Cowart P.C. In fact, you can only register a descriptive mark onthe supplemental register. There are several benefits to a supplemental registration: Your USPTO application can be geared towards placement on the Principal or Supplemental Register. SoftHide for belts containing no leather). Descriptive trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. The USPTO typically refuses registration of a mark that is deemed "merely descriptive," thereby limiting enforcement and protection of the mark. It's possible that a descriptive mark could be disguised as a suggestive mark, but there is a difference. See our webpage entitled, Filing Your Trademark On The Principal Register And The . So long as a descriptive mark is capable of being a source identifier (i.e. The second option, though, would require a bit of imagination on the part of the consumer. The U.S. Patent Office is now rejecting that initial application, saying the term is primarily geographically descriptive. A descriptive mark is considered the weakest of protectable trademarks. 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. Power Computing (first company to create MAC computer clones). 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. Placed near a trademark, they describe a product or service concisely. 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. A company can't register a descriptive mark on the Principal Register under the Lanham Act but can place it on the Supplemental Register. 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. So while generic and descriptive trademarks tend to be weaker trademarks, the following are stronger: Each of these trademark types may be inherently distinctive. A merely descriptive trademark is one whose dictionary definition is synonymous with a quality of the good or service. However, the Trademark Office may let you amend to try and get your mark on the Supplemental Register. 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 time and money involved to register a descriptive mark (if you succeed) is high. While a descriptive trademark sounds like a good idea, it really wont be over the long term. 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 kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultationtoday. Descriptive marks can be trademarks when there has been a secondary meaning established; otherwise they aren't protected. Descriptive trademarks are a close second when it comes to the lower end of the trademark strength continuum. While the Supplemental Register does not give you the rights of a regular registration, it can be cited against other applications to prevent their registration. 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. Claims of trademark infringement can put a lot on the line. These are the stronger trademarks and much easier to protect from infringement. Once your descriptive trademark has been in use at least five years, there is a presumption that you have acquired distinctiveness. Secondary meaning in trademark law refers to a way that a seemingly non-trademark-able term or phrase can be trademarked. A merely descriptive trademark isn't eligible for trademark protection and added benefits. Many people request that I prepare applications for trademarks that are considered 'merely descriptive'. 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. 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. 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. No one could legally use the word anymore, which would result in a silly number of infringements in everyday occurrences. 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. For example, lets look at the trademark registration for KENTUCKY GRILLED CHICKEN, which is owned by KFC Corporation. Should I File a Multi-Class Federal Trademark Application? The trademark is not considered in a vacuum. Instead, it is considered in the context of the relevant goods or services. What constitutes a trademark first use in commerce? Our trademark litigation attorneys have record verdicts in federal courts across the United States in trademark infringement cases. Part of this registration, which is for cooked chicken, is generic and part 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. The test applied is whether an ordinary consumer in Canada would be misled concerning the goods or services with which the trademark is associated. First, lets look at the least (or not at all) distinctive marks: generic trademarks. After years of continuous use, though, the consumers have started to identify the mark with the specific car rental provider. They want to pick a domain name which describes their products and services. A non-distinctive mark simply describes and names a trait or quality of goods or services. 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. Four thoughts before a Trademark Infringement lawsuit. Want High Quality, Transparent, and Affordable Legal Services? What a descriptive trademark is one which not only likely makes sense to you but to other competitors in your industry. 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. The trademark may describe a key ingredient, quality, characteristic, function, feature, or purpose of the products/services. In particular, they wouldnt be entitled to registration on the principal register of the United States Patent and Trademark Office. You'll also need the descriptive portion "disclaimed" in order to be registered. Was this document helpful? Here are some examples: Some (fictitious) examples might be GREEN & CRUNCHY in connection with a salad restaurant, or BOOKS AND MORE in connection with a book retailer. 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. Beckwith, Inc. v. Commr of Patents , 252 U.S. 538, 543 (1920)). Descriptive brand identifiers are weaker than other trademarks which is likely to lead repeated. Is the quality, composition, character or function of the good misdescriptive? 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. Drawing the line between descriptive and suggestive trademarks can also be quite difficult. This means an identifying term or design misdescribes some characteristic of the product (e.g. Learn more about trademark law in our free . The trademark described a carbonated beverage that had, as its main ingredients, flavoring from the kola nut and coca leaves: COCA-COLA. Suggestive marks may lead to litigation but are better than descriptive and general marks. Brian Hall - January 11, 2012 - Trademark Basics, Trademark Law. If you are unsure whether your mark is a descriptive mark, ask yourself whether the mark describes aspects of your service or product. How does the USPTO achieve this objective? 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. 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. Disclaimer: The information on this website is for general information purposes only. Disclaimer | Website by JB, Trademark Value: How Your Brand Translates to Bucks, New Amazon Brand Registry Requires Trademark Registration. Chances are, other businesses have chosen the same or similar descriptive mark name for their goods and services. They're only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years. Otherwise a supplemental registration is very similar to a principal registration. 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. 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. 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]. 104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive. 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 This doesnt mean, however, that descriptive trademarks cant be useful. Our leading internet law firm has lawyers and law offices in the following locations. A descriptive mark can range from highly descriptive to lowly descriptive. Descriptive trademarks can only receive trademark protection in the U.S. if they achieve something called "secondary meaning." Acquired distinctiveness can be established via: A long period of continued use of the mark, Heavy advertising in terms of reach and expenditure. Why? Pulling this off, however, does take dedication to establishing a secondary meaning. One of the more important factors to keep in mind is that the trademark needs to be distinctive. This means a consumer wouldnt necessarily recognize a term or design element as a source identifier upon its initial use. However, just because a mark is deemed . 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. 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. Any good trademark registration attorney will encourage you to avoid descriptive trademarks and pick something more creative and arbitrary. The latter five examples show that acquiring distinctiveness is not an impossible task. This includes terms like "best" and "high quality." 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. They instead use terms or designs that suggest specific qualities and traits. By only granting trademarks to those names/logos/slogans that are sufficiently distinct vis--vis the goods/services sold under the trademark. 1052(e)(1); see TMEP 1209.01(b), 1209.03 et seq. Mastering TESS will provide you with unparalleled trademark searches that you can use to identify potential risks that may . For any issues related to descriptive trademarks, please feel free to contact us. 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 . These distinctions are very important from a trademark rights standpoint. 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. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. 11 News spoke with a local trademark lawyer about what this means. Descriptive Trademarks. Blue jeans, computers and motorcycles would all constitute generic trademarks. In fact, an image helps describe your product. 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. Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration. A descriptive trademark is capable of being registered with the U.S. Patent and Trademark Office and functioning as a source of goods. When you want to pick a brand and trademark which comes to mean something special and only designates you in the market. The difference between these two types of trademark can be contentious. 5. For instance, a term like "best" quality describes the product or the service. The fictional brand Texadomes Delicious Burgers, for instance, contains fanciful, descriptive and generic words. These are words that give an idea of the product or service but don't describe it specifically. 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. Example: The word "trademark" can't be trademarked; otherwise trademark attorneys wouldn't be able to talk about their businesses anymore. Trademarks that are deceptively misdescriptive, generally cannot be registered. 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. See 15 U.S.C. Some examples of descriptive trademark s include: If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive. 2. What Is the Issue With Descriptive Trademarks? 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. 3. Nothing on this site should be taken as legal advice for any individual case or situation. It is similar to an adjective. 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. One possible of showing acquired distinctiveness is the continuous use of the mark for at least five years. However, that is not the proper test. Imagine youre the examining attorney and submit the amount of documentation that you would find convincing. Their use decreases the chances of a likelihood of confusion occurring. 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. 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. Some examples of descriptive trademarks are: However, when creating a trademark it is best to aim for strong trademarks instead. 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. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. Youve been listening to Trademark Law Radio. To further illustrate what a descriptive trademark is, lets differentiate it from the two groups of marks closest in terms of distinctiveness. Obviously that does not happen overnight, which is why a suggestive or more distinctive mark is usually a better starting point. In theory, an imaginative trademark is stronger than an expressive trademark, so it has more standing in the court system. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. 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. Hire the top business lawyers and save up to 60% on legal fees. Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. If the answer is yes, the mark is probably descriptive. Reasons Why You Usually Can't Protect Descriptive Trademarks, 7. TMEP 1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. 1127. . Customer loyalty and awareness help a business maintain its market share. They both describe characteristics of a product or service, but the latter does so directly. 6. Descriptive marks are the next level and are afforded more protection - with a catch. Examples are the Sichuan High Court's appeal decision in the "green prickleyash ( . It is harder to distinguish your brand from competitors. Cir. Youll need to file trademark maintenance documents about five years after being listed on the Supplemental Register. More specifically, it may describe the qualities, characteristics, feature, purpose, or function of those goods or services. 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. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Trademarks help your business grow by creating customer loyalty and awareness of your products and services. Only then can you determine whether the mark describes something that is important or significantabout the goods or services. The rehab center is known as the Supplemental Register, where descriptive trademarks wait in punishment and suffering until they can be cleansed, purified, and . Suggestive mark examples: Greyhound (bus), Citibank (financial services), Playboy (magazine). 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. There are multiple disadvantages of selecting a descriptive trademark. 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. Unlike more distinctive types of trademarks, you cannot receive protection for descriptive trademarks once you start using them in commerce. What Is a Merely Descriptive Trademark? Competitors may not be prevented or discouraged from using your trademark. The thinking is that if they pick a descriptive word for their company name they will get more business. Buoyant has a second definition that means cheerful or optimistic which does not directly describe the service. A trademark that's entirely descriptive cannot be protected. Namely, whether its on the principal register with all the super benefits that go along with that or on the supplemental register. ). Have a question? Descriptive. Any confusingly similar applications will be rejected. Educating the public doesn't happen overnight either. 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. If the trademark examiner believes the word is still descriptive, the owner will need to prove to them it is now suggestive. It should have a secondary meaning, as the USPTO will decline applications for these trademarks if they lack this aspect. How Can Marks Be Categorized? 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. 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. Examples of Famous Descriptive Trademarks. Descriptive trademarks are a type of more generic trademark that describe the underlying good or service. Higher costs in advertising and marketing are required to gain recognition. The determination is not based on research into or critical analysis of the meaning of the words. Descriptive trademarks like these examples, which only include words based on aspects, highlights, end results, or product uses won't qualify for a trademark. More Details About the Different Marks. Why Is Picking A Strong Mark Important? You can use taglines to briefly describe the product or service that you are offering. Even though they dont truly describe the traits of a good, these applications are still treated the same as descriptive trademark applications. Instead, your descriptive trademark must gain acquired distinctiveness (sometimes referred to as secondary meaning). 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. 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. 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. 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. A descriptive trademark is capable of being registered with the U.S. Patent and Trademark Office and functioning as a source of goods. The key with taglines is to make them short; the shorter the better but usually less than eight words. They want to pick a domain name which describes their products and services. 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. This can only be determined by assessing the mark in question in relation to its goods or services. 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. But, what exactly is a merely descriptive trademark? DefamationBusiness LawEmployment LawCopyrightTrademarkPatentInternet LawReal EstateCorporate and SecuritiesPersonal InjuryOther. Cir. 10,000 supplemental trademark registrations. Cannabis or Weed for legal marijuana businesses. When a new company is entering a market, choosing the perfect mark to represent the business isn't easy. However, learning to search TESS is challenging. 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. c) the persons employed in the production of the goods or services, or. If the trademark is not descriptive, the company will need to set aside a big marketing budget. 11, 2017. If you think the USPTO is wrong in its initial action, a persuasive response must be filed. For example, take the mark BUOYANT used in connection with float therapy services. 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). Critically, Secondary Meaning does not happen overnight and may take years and many dollars spent in marketing to develop. 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. When submitting proof that your descriptive trademark has earned the secondary meaning, try to be as thorough as possible. Contents 1 The spectrum of distinctiveness 1.1 Fanciful marks 1.2 Arbitrary marks Trademarks are governed by both state and federal law. 1052 (e) (1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark that's achieved a secondary meaning is usually entitled to the protections granted to suggestive, arbitrary and fanciful marks. You could look at adding a description to a mark somehow, although this will weaken the trademark. 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? This is because they do not identify and distinguish the source of products or services. 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. 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