When you apply for a trademark, you want your mark to be as strong as possible. Having a strong and unique mark can make it likelier that your trademark application will be approved. The strongest marks are words or phrases that are unique and that have been created or coined by the businesses that use them. These types of marks are strong because they clearly indicate the source of the services or goods that are being offered to potential customers. By contrast, descriptive marks, which are words or phrases that merely describe the product or service being offered instead of its source, are considered to be weaker. It is more difficult to secure the approval of a descriptive mark from the U.S. Trademark and Patent Office, but it is possible in some cases.
What is a Descriptive Mark?
Descriptive marks describe the characteristics of the covered services or products. As such, they only describe the product or service itself instead of its origin. Descriptive marks are akin to adjectives because they describe products or services in a similar way that adjectives describe nouns. An example of a descriptive mark could be something like “comfy chair” if you use it to describe a particularly plush chair. While this describes the characteristics of the chair, it would be unlikely to qualify for a trademark because it is not distinctive and could describe thousands of other chairs.
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. If you are unsure whether your mark is a descriptive mark, ask yourself whether the mark describes aspects of your service or product. If it does, it is likely a descriptive mark.
The Types of Marks
To qualify for a trademark, a mark must be distinctive. Distinctive marks are words or phrases that distinguish your services or goods from those of your competitors. Non-distinctive marks describe aspects or qualities of services or goods and do not distinguish them from others in the same class. Measuring the distinctiveness of a mark can be difficult. To test the strength of a mark, courts rely on the Abercrombie Formulation, which is a spectrum of five categories of marks that was developed by the U.S. Court of Appeals for the Second Circuit in the case of Abercrombie & Fitch v. Hunting World, Inc., 537 F.2d 4 (1976).
The five categories of marks from the Abercrombie spectrum include the following:
- Generic marks
- Descriptive marks
- Fanciful marks
- Arbitrary marks
- Suggestive marks
Generic marks are not able to receive trademarks. They are words that fully identify the product and are not distinctive. They are common nouns that cannot be registered because other sellers would not be able to describe their own products if trademarks were approved. An example of a generic mark might include the word “eggs” for eggs that you sell. Since many other businesses also sell eggs, you would not be granted a trademark for the word “eggs.”
In most cases, you will not be able to register a descriptive mark. If your business has a small advertising budget, a descriptive mark can still be beneficial. It is possible for a descriptive mark to acquire distinctiveness over time so that it can be registered, which we will discuss further below.
Fanciful marks do not suggest or describe anything about a product. They normally consist of random letters that create words that have no meaning other than the businesses’ services or products. These words are new, requiring the companies to advertise in order for the public to associate the marks with the companies and their products. An example of a fanciful mark is Kodak for its film and cameras. Fanciful marks hold up well in the trademark process.
Arbitrary marks also do not suggest or describe anything about a product. Instead of newly created words, however, they are common words that a business might use to describe a service or product that has no connection to the word’s regular definition. This means that the companies must advertise so that the public associates the word with the product or service. Companies that use arbitrary marks are normally granted 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. 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. These marks are capable of holding up fairly well in court. An example of an arbitrary trademark is Apple for its computers and smartphones.
Suggestive marks give the public a suggestion of a service or product but do not specifically describe it. It requires people to infer a link between the mark and the product or service, but there is still a relationship between the two. Suggestive marks generally are granted trademarks. Some examples of suggestive trademarks include Pathfinder for Nissan’s SUV since it suggests a product that is comfortable to drive off of the road or Titleist for golf balls since the word suggests championship equipment for sports.
Problems with Descriptive Marks
There are some problems with descriptive marks. Since they only describe characteristics of products or services, they are not entitled to be registered as trademarks on the USPTO’s Principal Register under the Lanham Act. Instead, they are sent to the Supplemental Register. The Supplemental Register does not allow you to claim the exclusive use rights to the mark in connection with your services or products. The supplemental register also doesn’t allow you to recover statutory damages and attorney’s fees in a trademark lawsuit. Here are some reasons why you should avoid descriptive phrases or words for your mark:
- They are weak and difficult to enforce;
- Because they are weak, they are expensive to defend;
- It costs more money and time to register descriptive marks; and
- They do not have a high value if you decide to license or sell your business or trademark.
When Can You Register Descriptive Marks?
While you are able to place a descriptive mark on the Supplemental Register, doing so grants you substantially less protection. After you have continuously used your descriptive mark for five or more years, a descriptive mark can be determined to have acquired distinctiveness, which can allow you to register it. This would allow you to move your mark to the USPTO’s Principal Register. You can establish acquired distinctiveness of your mark in one of the following ways:
- Using the mark continuously for a long period of time
- Heavily advertising your mark with substantial reach and substantial cost
If your mark has acquired a secondary meaning, it will likely be entitled to trademark protection. You can determine whether your mark has acquired distinctiveness by conducting surveys of consumers. If you have continuously used the descriptive mark for five or more years, however, you will not need to conduct surveys for it to qualify for registration and for placement in the Principal Register.
Descriptive marks are difficult to register as trademarks because they only describe the characteristics of the products or services that are being offered. It is better to use a mark that is suggestive, arbitrary or fanciful so that it can be registered. However, if you have used a descriptive mark continuously for five or more years, you may be able to register it.