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What Is a “Merely Descriptive” Refusal? Can I Overcome It?

There are many reasons why your trademark application might be rejected.  One of the most common rejections occurs when your mark is merely descriptive of your products/services.  As previously discussed, trademarks have varying levels of distinctiveness.  The more unique/distinctive the trademark, the more protection that trademark receives.  However, the opposite is also true: less distinctive trademarks receive very little or even no protection.  Trademarks that are considered “merely descriptive” will be refused registration by the Trademark Office because they are weak.  However, if you receive this rejection, you may still have some options.

What Is a Merely Descriptive Trademark?

Put simply, a descriptive trademark is exactly what it sounds like: generally, it is a name that describes something about the products/services it is used with.  The trademark may describe a key ingredient, quality, characteristic, function, feature, or purpose of the products/services.  For example, the word CRUNCHY is descriptive when used in connection with potato chips.  Consumers seeing the word CRUNCH in a brand name for potato chips would believe that the chips are just that: crunchy.  You can already see why giving protection for a descriptive term could be problematic, right?  What if only one company could use “crunchy” to describe their chips?  Or SOFT to describe mattresses?

Descriptive terms are not considered “inherently distinctive,” which is just a fancy way of saying that they cannot immediately function as a brand name separate from the products/services they are used with right off the bat.  However, over time a descriptive name can acquire distinctiveness and function as a brand name.  Examples of descriptive trademarks that have acquired distinctiveness include BANK OF AMERICA, SPORTS ILLUSTRATED, and MAJOR LEAGUE BASEBALL.  But it generally takes a good deal of time and spending on marketing in order for a merely descriptive mark to acquire distinctiveness.

What Are Your Options?

If the Trademark Examining Attorney believes that your trademark is merely descriptive, they will issue a refusal under Trademark Act Section 2(e)(1).  If they do not have enough information to make a decision on descriptiveness, they may first ask a few questions.  Once they have issued the refusal, you have a few options:

  1. If you believe the Examining Attorney is wrong, you can argue and try to convince him or her that your trademark is not descriptive.  If you are unsuccessful, you may want consider filing an appeal to the Trademark Trial and Appeal Board;
  2. You may seek registration on the Supplemental Register.  While not as desirable as a registration on the Principal Register, having a registration on the Supplemental Register is certainly better than no registration at all.  Keep in mind that if you filed on an intent to use basis, you will have to show use of your mark in commerce before amending to the Supplemental Register.
  3. You may make a claim of acquired distinctiveness under Section 2(f) if you have been using your trademark for some time.  This is a great option if you are in a position to make the 2(f) claim, because in that case your registration would still be on the Principal Register.
  4. Finally, you can let your application go abandoned.  Obviously this is not a great outcome, because you will not receive any federal protection.

Need Help Determining the Best Course of Action?

If you have received a merely descriptive refusal I would be happy to take a look at your application and explain your options as I see them.  To have me take a look at the office action that you received, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.

Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(314) 479-3668

kevin@yourtrademarkattorney.com

© 2019 Kevin Haynie
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