As you might already know by now, registering a trademark with the United States Patent & Trademark Office (USPTO) is one of the best ways—if not the best way—to protect your trademark rights within the United States. However, the USPTO does not approve all trademark applications. Sometimes, the proposed marks are not strong enough, so the USPTO will not give them protection. An example is one that is descriptive. Successfully registering descriptive marks is unlikely.
What Won’t the USPTO Protect?
When it comes to descriptive marks, according to Title 15, Section 1052 of the U.S. Code, the USPTO will refuse registration for marks that are “merely descriptive.” Additionally, within that same section of the Code, we learn that the USPTO will not offer protection for marks that are, among other things, misdescriptive of their related goods or services, are geographically descriptive or misdescriptive, or are surnames. Let us take these in turn.
Merely Descriptive Marks
According to the USPTO, a mark is merely descriptive if it simply describes the goods, services, or certain attributes to those goods or services, such as ingredients or qualities. For instance, if somebody was interested in registering the mark SOUR in relation to a company that sells lemons, there is a high chance that the USPTO will deny that application.
If a mark is a word that is unrelated to the good or service, then it is misdescriptive. That is not necessarily a bad thing—in fact, sometimes, such a mark is considered arbitrary, such as APPLE for electronic products. However, if the mark is falsely describing the service or product, and that misdescription is plausible, then the mark is deceptive. A good example illustrating this is the case of In re Budge Mfg. Co., Inc. where a party wanted to protect the mark LOVEE LAMB in relation to automotive seat covers. However, the court concluded that it would be deceptively misdescriptive because consumers might think that the seat covers were made of lamb or sheep products, as opposed to the synthetic material they used.
Similarly, if a person includes a geographic region or area within the mark and subsequently applies for trademark protection, there is a high likelihood that the USPTO will reject the application. This is especially true if the geographic region is descriptive. For instance, if the mark is related to ice cream, the ice cream comes from Ontario, and the requested mark is ONTARIO ICE CREAM. That is extremely descriptive—and partially generic—of the goods behind the mark.
Similar to how a person should not use a geographic term descriptively, the term should not be deceptively misdescriptive either.
The USPTO also refuses to offer protection to surnames—i.e. last names. So, going back to the ice cream example, if somebody tried to register SMITH’S ICE CREAM, it likely would not work.
One Step Higher: Suggestive Marks
Instead of trying to register a descriptive mark—whether descriptive in terms of regular words, geographical terms, or surnames—a person should consider altering the initially proposed mark to make it suggestive. A suggestive mark is one that hints at what the product or service behind the mark is. An example of a suggestive mark is GREYHOUND for the bus transportation company. The mark hints that the busses run fast and the service is fast; greyhounds are known as fast dogs. Greyhounds have nothing to do with the busses and are not otherwise involved in providing the bus services. The only connection is the hint to the company’s speed in transportation.
That is what makes the mark suggestive and gives it a better chance at trademark protection with the USPTO.
There is Always an Exception
Although by now, you have read and have formed the impression that descriptive marks cannot obtain registration protection, there are always exceptions. For instance, if a descriptive mark has what is known as “acquired distinctiveness,” then it has a better chance of obtaining registration. Additionally, something known as the “Supplemental Register,” as opposed to the USPTO’s Primary Register, is something that an applicant might want to consider.
With such exceptions and variances in trademark law, the best thing you can do is make sure to work with an experienced trademark attorney that has numerous examples of all kinds of marks in the past and knows what the USPTO will and will not protect. Make sure to reach out to one in your area today.