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 United States Patent and Trademark Office (UPSTO), 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 terms 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.
Are Descriptive Marks Difficult to Trademark?
Trademark registrations for descriptive marks require significant evidence that the mark has acquired a unique meaning in the minds of consumers. This evidence, often presented by the applicant, can include marketing materials that showcase how the action of branding has led to the descriptive term being directly associated with the trademark owner’s goods or services.
For companies looking to secure trademarks for suggestive marks or arbitrary trademarks, the application process might involve providing additional evidence to demonstrate how these marks, while not inherently descriptive, uniquely identify the company’s products or services.
Suggestive trademarks hint at the nature or quality of the goods or services without directly describing them, requiring a leap of imagination to connect the mark with the product. Arbitrary trademarks, such as ‘Apple’ for computers, use common words in an unrelated context, offering strong trademark protection due to their inherent distinctiveness and lack of relation to the product or service being offered.
Consulting a trademark attorney or trademark lawyer early in the application process can help identify if a descriptive term has the potential to become a protectable trademark. These professionals can provide insights into how a descriptive mark might resonate in the minds of consumers and become distinguishable over time.
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.
Fanciful trademarks are an example of a type of trademark that is inherently distinctive and does not require evidence of secondary meaning to qualify for federal trademark registration and legal protection. Generic marks, on the other hand, are words that directly name a product or service and cannot be trademarked because they fail to distinguish the goods or services of one company from those of another.
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. Examples of marks that courts rely on to test the strength of a mark include 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).
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.
For a descriptive mark to transition to a protectable trademark on the USPTO’s Principal Register, the trademark applicant must demonstrate through marketing efforts and consumer recognition that the mark has acquired distinctiveness in the minds of consumers.
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 the 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 become a distinctive identifier in the minds of consumers, it will likely be entitled to trademark protection as a federal trademark.
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 and can provide evidence of its acquired distinctiveness, you may be able to register it as a protectable trademark.
If you need any help figuring out whether the mark you have in mind is descriptive and likely to gain a trademark, please get in touch and we will be able to happily help you in this matter.
