Disadvantages of Descriptive Trademarks

Trademarks are categorized along a continuum ranging from marks that are fanciful or highly distinctive to those marks that are highly descriptive (generic marks can not register on the Principal or Supplemental Register). The degree of distinctiveness or the degree of descriptiveness can only be determined by evaluating the trademark in relationship to its goods or services. There are multiple disadvantages of selecting a descriptive trademark.

Trademarks that are highly descriptive or merely descriptive of the goods or services cannot be registered on the Principal Register and hence the applicant loses out on multiple benefits. See our webpage entitled, Filing Your Trademark On The Principal Register And The Supplemental Register, to compare the benefits of the two trademark registers. A mark is considered merely descriptive if it describes an ingredient, quality, function, purpose, feature, characteristic, or use of the specified goods or services. The Supplemental Register is reserved for merely descriptive trademarks. These trademarks only receive some of the benefits of federal registration and fail to acquire the most important ones.

Descriptive marks are weak marks until they are able to develop secondary meaning. See our webpage entitled, What Is Acquired Distinctiveness And Secondary Meaning to understand how a descriptive mark may lose its ordinary meaning over time through marketing and advertising. It typically takes at least five years or more for a descriptive trademark to gain distinctiveness and to possibly register on the Principal Register.

If you are attempting to register a descriptive trademark on the Principal Register, you are going to be fighting an uphill battle. The USPTO Examining Attorney will issue an Office Action refusing registration under Trademark Act Section 2(e)(2) finding that the mark is merely descriptive of the identified goods or services. The Applicant will have to submit substantive argument in the form of a brief to persuade the Examining Attorney that the mark is not merely descriptive. If the Examining Attorney issues a final refusal, the Applicant may have to appeal the decision to the Trademark Trial and Appeal Board. This process can be very costly and in the end, you may not be able to register the mark on the Principal Register.

In order to build an association in the consumers' minds with the source and the trademark, the trademark owner must have a considerable budget for

marketing and advertising. To achieve acquired distinctiveness, the primary significance of the trademark in the minds of the consumers must be the source of the goods or services.

As a trademark owner, if you have to initiate an action or defend one in court, you will be at a disadvantage with a descriptive mark. If you were the owner of a mark on the Principal Register, then the trademark registration would act as prima facie evidence of the validity of the trademark registration, the registrant's ownership of the mark, the exclusive right to use the mark in commerce, and the continued use of the mark since the filing date of the trademark application. As the owner of a trademark on the Supplemental Register, these presumptions do not apply to you and you have to prove these matters in court. This will take considerable time and money. In addition, you will have to demonstrate that the mark has developed secondary meaning.

If you select a common or descriptive term for your trademark, it is likely that the relevant purchaser will not remember your brand. In fact, you may fail at identifying and distinguishing your goods from those manufactured and sold by others. On the other hand, a distinctive mark will make a strong first impression and remain etched in the memory of a consumer. The reasoning is that it will have no other meaning besides the meaning given by your products or services. Examples of distinctive marks are STARBUCKS, ROLEX and EXXON. If there are no other meanings for the term in the marketplace, then upon hearing the trademark the consumer will think only of your goods or services.

We are happy to provide you with a courtesy consultation with respect to the strength or weakness of your proposed trademark. Trademark selection is the most critical step in building a distinctive brand. Please feel free to contact us with any trademark related inquiries.