Can You Trademark Descriptive Words?
Not all trademarks are created equal. Some types of trademarks, like those that consist of coined words or phrases, are traditionally considered to be the strongest kinds of trademarks since they are powerful indicators of the source of the goods or services being offered under them. Examples of strong trademarks include Google®, Kodak®, and Orbitz®, all of which are completely made up words that have nothing to do with search engine services, photography products, or travel arrangement services.
On the other hand, trademarks that consist entirely of descriptive words or phrases are considered weak trademarks since they do not tend to identify any particular company. For example, the name “Boston Flower Shop” would be very descriptive because the name merely describes the purpose of the business: to sell flowers in Boston. And no doubt there are many Boston flower shops.
In order to trademark descriptive words one would have to establish “acquired distinctiveness.” This is just a fancy way of saying that people in the marketplace now see the descriptive phrase or words as identifying a particular company or manufacturer, instead of the product or service itself. One way to establish “acquired distinctiveness” is through five years’ substantially exclusive use of the name in question. Therefore, if the “Boston Flower Shop” company has been in business with that name for at least five years, and if they are the only flower shop to be using that name, then getting a federal trademark registration could be well within reach.
As a side note, it is important to keep in mind that there are many successful companies which have thrived on their descriptive trade names, including Bank of America®, Coca-Cola® and New York Life Insurance Company®. Although these companies initially had descriptive trademarks, they were all eventually able to establish that their trademarks had acquired distinctiveness through long and substantially exclusive use of those names.