When a business submits an application for a trademark, especially without conducting thorough research beforehand, there is a possibility of rejection. According to the United States Patent and Trademark Office (USPTO), strong trademarks must be inherently distinctive, which means that potential customers can easily recognize the source of the goods or services based on the mark. Intellectual property attorneys often advise clients throughout the application process, from initial research through submitting the application to overcoming rejections, if needed. To help ensure that your business’s trademark is strong, consider contacting an experienced Chicago, Illinois, IP attorney with Sullivan & Carter, LLP, by calling (929) 724-7529 to schedule a consultation.

What Is a Merely Descriptive Mark?

A merely descriptive mark is a trademark that simply describes an aspect of the company’s goods or services. A consumer presented with a descriptive mark would not need to utilize his or her imagination to determine the quality, purpose, or particular feature of the product or service. This type of mark does not distinguish the business from other businesses that provide similar goods or services. Trademarks that are merely descriptive can only be registered under certain circumstances. The trademark owner must show proof either that the mark is gaining in distinctiveness or that the mark has a long history of use in commerce.

Why Do Descriptive Marks Get Rejected?

A descriptive mark is one of the weaker types of trademarks, and only with certain exceptions can one be registered. The three acceptable types of trademarks are as follows:

• Fanciful trademarks: These marks are words that the business has invented. They have meaning only in relation to that company’s goods or services. Consumers learn to equate the mark to a particular type of product, sometimes interchanging the registered name with the generic name.
• Arbitrary trademarks: These marks are real words that are not actually associated with the company’s goods or services. Over time, consumers begin to associate an otherwise common word, such as a kind of fruit, with a specific brand.
• Suggestive trademarks: These marks are words that simply allude to some quality of the goods or services without stating that quality. Consumers must use their imagination to connect these trademarks to their products.

How To Avoid Selecting a Merely Descriptive Mark

To maximize the chance of a successful application for trademark registration, business owners should develop marks that consumers can readily associate with their brands. Generic trademarks that simply announce the type of product or service (e.g., “toothpaste” or “cleaning solution”) are routinely rejected because they are not considered trademarks at all. Those that are merely descriptive (e.g., “grape toothpaste” or “foaming floor cleaner”) typically do not fare much better with the USPTO.

By focusing on designing a trademark that is suggestive, arbitrary, or fanciful, business owners put themselves in the position to develop a mark that consumers will associate with their brand more strongly than with related products or services in the marketplace. In other words, developing a strong trademark is good for business as well as for registration.

How To Overcome a Merely Descriptive Rejection

When a trademark owner applies to register a mark but receives a rejection based on the merely descriptive condition of the mark, there may be options to overcome that rejection. A knowledgeable IP attorney from Sullivan & Carter, LLP, may be able to help determine which argument to present and identify evidence that will support that argument.

Argument of Multiple Interpretations

When a selected trademark is considered descriptive, yet has a double meaning, the argument may be made that the secondary meaning is what consumers recognize as distinctive for connecting the business with its goods or services. The secondary meaning must not also be descriptive and must be easily recognized by consumers without additional clues. If consumers need prompting to make the connection, this argument will likely not be accepted.

Argument of Suggestiveness

The argument can be made that the mark is suggestive if it takes a little imagination to understand its meaning. Like a mark with a secondary meaning, a mark that is designed to be suggestive demands some thought for the consumer to make the connection between the mark and the product or service it represents. In this case, however, the suggested meaning is not “deferred” to a secondary interpretation. Instead, the association is between the good or service represented and the primary meaning of the word or symbol used in the mark. The mark may be rejected for being merely descriptive if the consumer can make the connection almost instantly. The distinction between descriptive and suggestive marks can sometimes be difficult to make, so it is important to design a trademark that is more clearly suggestive to avoid this type of rejection.

Argument of Acquired Distinctiveness

According to the USPTO, a trademark owner may submit evidence under section 2(f) that the mark has acquired distinctiveness. This means that when a mark has been extensively used and promoted, consumers can come to associate the mark with the goods or services of a specific brand or company. Evidence for this argument can include advertisements and promotional materials, statements of recognition from consumers or dealers, or other evidence of consumer recognition of the mark.

In some cases, if the service mark or trademark has been used for the services or goods continuously and exclusively for at least the last five years, the trademark owner may make a claim for acquired distinctiveness. However, even with evidence of time used, the USPTO may require additional evidence that the mark stands out among the company’s competitors.

Amend to the Supplemental Register

If none of the above arguments are appropriate for a mark that has been rejected for being merely descriptive, the mark may be eligible for the USPTO’s secondary trademark registry. The Supplemental Register is used for keeping track of nondistinctive trademarks that may become distinctive over time through increased advertising or overall consumer recognition.

Contact an Intellectual Property Attorney for Help Today

Many businesses that are ready to apply for trademark registration seek help from intellectual property attorneys who are familiar with trademark law. They assist their clients with the processes of researching trademarks, applying for registration, and responding to challenges or rejections. If your business is ready to begin the trademark registration process or needs help overcoming a rejection, consider contacting an experienced Illinois-based IP attorney from Sullivan & Carter, LLP, by calling (929) 724-7529 to schedule a consultation today.