Entries in Descriptive Trademarks (2)

The PTO Says My Mark is Descriptive. What Can I Do?

Trademarks are source identifiers. They tell consumers where a good or service comes from. So when a mark consists of descriptive words, it really doesn’t function as a trademark. It tells consumers about the product — not who sells it.

For this reason, the U.S. Patent and Trademark Office will refuse to register a mark it deems to be “merely descriptive.” That is, a mark that describes a feature or benefit of the product, or the geographic area in which the product is made. “Self-laudatory” (“We’re the best!”) trademarks also fit into this category.

If the PTO objects because it perceives a mark as being descriptive, the trademark owner has a few options. First, it can try to convince the examining attorney that the mark isn’t descriptive, but instead is “suggestive.” The main difference between these categories is how quickly and specifically the mark conveys the information. If the mark leaves nothing to the consumer’s imagination (like SPEEDY AUTO GLASS), then it will be deemed descriptive. But if the consumer needs to use a little imagination to understand the information being communicated or the message is vague (like CHICKEN OF THE SEA), the mark will be classified as “suggestive.” If the mark is suggestive, the PTO will withdraw its objection and the mark can be registered on the Principal Register.

If the owner has used the mark for a long time (at least five years, but longer is better) or spent lots of money advertising the mark (like a million or more dollars), the owner can make a case that an otherwise descriptive mark functions as a source identifier because it has acquired secondary meaning. Secondary meaning means that consumers have come to associate the description with a particular source (like SEATTLE’S BEST COFFEE) and thus it functions as a trademark.

The owner’s last resort in responding to an objection is to amend its application to the Supplemental Register. The Supplemental Register is where descriptive marks without secondary meaning can be registered. The upside is that the owner can use the Circle-R symbol to indicate the mark is registered, and the PTO will cite the registration against future trademark owners applying for federal registration if the PTO deems the later-filer’s mark to cause a likelihood of confusion with the registered mark. The downside is the mark must be in use at the time the application is amended (i.e., there is no intent-to-use filing basis) and the Supplemental Register does not give the registrant the presumption of being the exclusive nationwide use of the mark in connection with the specified services — one of the main benefits of being on the Principal Register.

A trademark owner also can incorporate descriptive words into a new, distinctive trademark, such as a logo. Doing so (which requires a new application) can avoid a descriptiveness objection because the stylized design or other distinctive elements would make the mark more than “merely” descriptive. However, the owner should expect the PTO to require the owner to disclaim exclusive rights in the descriptive words that are included in the logo.

Overcoming a Descriptiveness Objection to Federal Trademark Registration

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.