Factors to Be Considered When Determining if a Mark is Descriptive

The descriptiveness of a trademark is determined only after an evaluation of the mark relative to the goods or services, not in the abstract. One must consider the possible significance the mark would have to the average consumer of those goods or services. If the average purchaser would recognize the trademark as describing an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services, then the mark would be refused on the Principal Register of the United States Patent & Trademark Office as merely descriptive.

Examining Attorneys will look to the dictionary meanings as one factor to consider when determining if a trademark is descriptive. However, the lack of a meaning is not dispositive, if the Examiner can show that the term has an understood and recognized meaning. Moreover, an applicant must not rely on third-party registrations as conclusive evidence on the issue of descriptiveness. It could be that at the time the applicant applied for the mark, there wasn’t enough evidence to support a finding of descriptiveness, but several years later there is ample evidence to show a certain mark is descriptive of specific goods. See In re Styleclick.com Inc. 59 U.S.P.Q.2d 1084, 2001 WL 461279 (TTAB 2001), where prior registrations for the term VIRTUAL for internet related services existed, however the mark VIRTUAL FASHION was refused as merely descriptive of the services due to the current understanding of the term “VIRTUAL”.

Just because an applicant is the first or only user of a descriptive term will not justify registration if the term is used in a descriptive manner.

An image of the goods or of an article that is a significant feature of the goods or services will be found to be merely descriptive of the goods or services. See In re Underwater Connections, Inc., 221 U.S.P.Q. 95, 1983 WL 51838 (TTAB 1983), where a visual representation of a compressed air gas tank was held merely descriptive of travel tour services that offered underwater diving activities.

If the English word is descriptive, then the foreign equivalent will not be able to register on the Principal Register. The reasoning is that words from modern foreign languages are generally translated into English to determine descriptiveness. See In re Geo. A. Hormel & Company, 227 U.S.P.Q. 813, 1985 WL 71942 (TTAB 1985), where it was held that the mark SAPORITO, an Italian word meaning “tasty” was held to be merely descriptive of the applicant’s food products because it described a characteristic of applicant’s sausage.

Acronyms will be considered to be descriptive of the goods or services, if the wording it stands for is also merely descriptive of the goods or services. The acronym would have to be commonly understood by the average consumer to mean the same as the wording it represents. See In re Yacht Exchange Inc., 214 U.S.P.Q. 406, 1982 WL 50446 (TTAB 1982), where the Board held that MLS was descriptive for multiple listing services for yachts and boats.

A trademark that identifies the group to whom the applicant will sell his goods or services is merely descriptive. Also, if the mark identifies the provider of the goods or services, this too will be considered merely descriptive.

If the term is attributing quality or excellence to the goods or services this will generally be considered merely descriptive. Words like “BEST”, “ULTIMATE”, “PREMIER” or “SUPREME” are often held to be merely descriptive if used in connection with other descriptive terms. An example would be “The Best Beer In America”.

Slogans that function to convey an advertising message or simply convey information and do not indicate source will be refused on the Principal Register. In order for a slogan to be registered, it must create a separate commercial impression apart from the rest of the text on the label. Some slogans will be allowed to register on the Principal Register, others only on the Supplemental Register, while some will not be allowed to register at all. The mark “The Best Beer In America” was held to be so highly laudatory and descriptive as applied to beer that it was incapable of acquiring distinctiveness. At the Law Offices of Nikki Siesel PLLC we counsel our clients to avoid using merely descriptive trademarks and to create inherently distinctive marks. Each mark must be evaluated in relationship to the goods or services and the relevant industry. Please feel free to contact one of our NY trademark lawyers for a courtesy consultation.