Descriptive Trademarks: what to know.
What is a descriptive trademark?
Descriptive trademarks are marks that describe the products. Instead of being distinct from the product the descriptive trademark is only telling the consumer what the product is and does not distinguish the source of the product well.
A descriptive trademark is not quite a generalization but so close to how the product normally is that the trademark brings that generalization to mind. Consider a grove farmer trademarking their oranges as “Fresh & Juicy.” That may sound nice and clear about what they are selling, but it describes any orange from any producer. One major goal of a trademark is to show the producer, so consumers are not confused.
A merely descriptive mark is considered a weak mark on the Spectrum of Distinctiveness and will be refused entry to the Principal Register.
The marks are graded on this sliding scale:
The Spectrum of Distinctiveness
General > Descriptive > Suggestive > Arbitrary > Fanciful
Trademarks are not meant to describe the product but to stand for the producer, and the more fanciful or arbitrary the mark is, the better. Think of Apple computers: Who would have associated apples with computers before this trademark? An apple is in no way connected with electronics and so the trademark is distinctive of the product it stands for, perfect. Apple is an arbitrary trademark which is strong on the Spectrum of Distinctiveness and offered the best protection in the Principal Register.
Options if refused for mere descriptiveness?
When applying to the Principal Register mere descriptiveness is one of the top reasons for a refusal. If refused there are three options to consider: argue that the mark is suggestive, or that it has acquired distinctiveness or change the application to the Supplemental Register.
Going back to the Spectrum of Distinctiveness we see that a suggestive mark is stronger than a descriptive mark. A suggestive mark does not describe a characteristic intrinsic to the product but allows the consumer to reach the conclusion. Just like perfume, the suggestive trademark in relation to the product should be discovered not announced.
Argue the mark is suggestive:
When arguing that the mark is suggestive the courts use ‘tests’ to decide. One is the “imagination test” which asks if the consumer would need to take an extra imaginative step to gather the nature of the product when seeing the mark. Asking simply if describing the mark to someone else would conjure the product to their mind at once is a quick imagination test example.
Another test the courts use is the “third-party use” test, applying the question of if someone competing in the same market would need to use the mark in describing their products. When a mark describes its goods too well, then it is not distinct from any other product that matches the description.
If USPTO agrees that the mark is suggestive, then it may be registered on the Principal Register.
Argue the mark has acquired distinctiveness:
A descriptive mark must ‘acquired distinctiveness’ to make it onto the Principal Register. This means that the mark has gained a second meaning to consumers. Whether the mark has this secondary meaning is decided by a few factors, for instance:
The amount of time the mark has been used—five years of use can be evidence of acquired distinctiveness.
If the mark has preexisting registrations.
The nature of the use, and if it was used exclusively.
How many sales were made with the mark.
How advertising was made for the mark and how much.
How the mark was used in publications.
Evidence from consumer surveys.
Evidence from consumer testimonies.
The USPTO will review the evidence and discern if there is a secondary meaning to the mark. If they agree the mark has acquired distinctiveness it may make it to the Principal Register.
Keep in mind that just because a descriptive trademark is on the Principal Register that does not make the trademark strong on the Spectrum. Because a descriptive mark is not intrinsically distinct it is harder to enforce infringement rights when others use the same descriptions.
Switch to the Supplemental Register:
One strategy is to register the mark on the Supplemental Register first. This helps supply some evidence of acquired distinctiveness (as in the listed in the factors above) when applying to the Principal Register. If registered on the Supplemental Registry this will also allow the mark to use the ® symbol, prevent confusingly similar marks from entering the register, and help the foundation of international trademark acquisition if that is the goal.