My clients are often confused about what their options are if their trademark is deemed “merely” descriptive by the trademark examiner.
Key Point #1: “Merely” descriptive is a legal term of art.
One of the reasons your trademark application can be rejected is because the trademark is “merely” descriptive of the goods or services. This is a legal term of art (meaning good legal argument can sometimes avoid such a characterization), but a trademark is deemed to be merely descriptive when it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services that it functions as a trademark for.
Key Point #2: Legal strategies for avoiding this characterization.
Here are a few principles that help you avoid such a characterization, which prevents registration on the principal trademark register.
- For a determination of whether something is merely descriptive, how you define the goods or services is very important (since this determination is dependent upon the identified goods or services, and is thus contextual – not abstract)
- Combining descriptive terms to form a trademark will not typically help you avoid the descriptiveness problem
- You can overcome this characterization by showing “secondary meaning”, i.e. usually that the trademark has been used long enough and/or has been associated with enough advertising ($$$) that you have a pretty compelling argument that the public perceives the trademark as associated with your product or service
Key Point #3: The supplemental register has benefits as well
And if you can’t win an argument that your trademark is distinctive, you can still register your trademark on something called the “Supplemental Register”, which is sort of like purgatory for trademarks. It has a few important benefits, namely:
- You can use the ® symbol for the trademark
- The registration is protected against later registration by another confusingly similar trademark
- You can bring an action for trademark infringement in federal court (although you probably will not have a strong claim)
- The registration affords easier international registration
So it is not all gloom and doom if your trademark gets rejected for descriptiveness, even though a federal trademark registration on the principal register is a lot more valuable than one on the supplemental register. Working with a skilled trademark lawyer – like me – can often make all the difference in this determination as well as what your brand strategy should be.