What is a Descriptive Trademark?

September 4, 2015 — Leave a comment

We’ve mentioned before on this blog that you can’t protect a descriptive term. In it’s simplest form, that means if you operate a coffee shop called Mighty Coffee Shop, the USPTO might allow you to protect “Mighty” with respect to the sale of coffee, but you couldn’t protect “Coffee Shop” because it is descriptive of the product you sell: coffee.

In this post we will look a bit more at the framework behind descriptive marks and what you can and cannot protect.

In General

The USPTO makes it clear that an examining attorney will “refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” As a result, these phrases shouldn’t even be called a trademark because they are not capable of serving as a source identifier. That is, the consuming public is unlikely to associate the phrase itself with a particular provider of the good or service because the phrase merely describes the good or service. Examples include “Holiday Inn” for a hotel/inn and “Vision Center” for eye and optical services.

Similarly, the USPTO says that “a  mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.”

Secondary Meaning

One exception to the above rule is the doctrine of “secondary meaning.” Under this doctrine, a descriptive term can obtain trademark protection if, after some period of time, consumers begin to recognize your mark as a source identifier. That means that when the public sees that term, they think of your company. That’s fairly hard to achieve.

However, as we described in our post “Can a Fashion Designer Trademark its Apparel?,” it can be done. For example, the famous shoe designer Christian Louboutin obtained protection for his use of bright red soles on the bottom of shoes.

The Supplemental Register

Even though you can’t register a descriptive term on the principal register, you might be able to make use of the supplemental register. Obtaining a registration on the supplemental register simply provides notice to the world that you are using the term in commerce, but it is also an acknowledgement that your mark is weak. We covered this more in this post.

What You Should Do

First, when selecting your business name, don’t use a descriptive term. At a minimum, you should pick a term that is suggestive and, even better, you should pick a name that is arbitrary. Further, you should perform a trademark search to make sure no one else is using your preferred name.

And if you have any questions, feel free to contact us to discuss your ability to protect your name.


Image: Adobe/RTimages
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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