What’s a trademark owner to do if the PTO denies an application for federal trademark registration because it finds the mark is “merely descriptive”?
A mark is merely descrptive under U.S. trademark law if it immediately conveys information about the good or service being sold in connection with the mark. In such cases, the mark does not function as a trademark because it only tells consumers about what’s being sold, rather than who is selling it. The latter message is what a trademark needs to convey.
That means descriptive brand names like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE are not registrable on the PTO’s Principal Register — that is, until they achieve “secondary meaning.” Secondary meaning occurs when the mark has become linked in consumers’ minds with the trademark owner, rather than the trademark owner’s goods. In other words, the primary, descriptive message has been subverted by the secondary meaning that identifies the source of the goods or services.
Proving secondary meaning is what’s needed to overcome the PTO’s objection. This is first shown through longstanding use. The statute sets the usual minimum benchmark at five years, but the PTO often requires more evidence of secondary meaning than that. Even ten or fifteen years’ use may not be enough.
So what else proves secondary meaning? Evidence of what one might expect to indicate that consumers have come to associate the brand with the owner: dollar sales under the mark, advertising figures, samples of advertising, and consumer or dealer statements that the mark is recognized as referring to the trademark owner. Generally, the most persuasive evidence shows the owner’s longstanding use of the mark, lots of money spent on advertising, and lots of sales made. This includes evidence of advertising on TV, radio, in print, on the web, and any other evidence that shows that consumers understand descriptive marks like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE point to a specific source, rather than a description of goods or services.
If an owner doesn’t have this evidence, or the PTO finds the offered evidence isn’t enough, the owner can still obtain registration by amending its application for registration on the Supplemental Register. Doing so loses the benefits of registration on the Principal Register — including the presumption that the owner is the exclusive nationwide user of the mark in connection with the specified goods or services — but it still entitles the owner to use the Circle-R symbol that indicates its mark is registered. It’s not a result an applicant generally hopes for, but it is better than nothing.