Descriptive Trademarks

What are Descriptive Marks?

Descriptive trademarks are marks that describe a characteristic, quality, or function of a product or service. Unlike other marks that distinguish the source of a product, a descriptive trademark identifies something inherent about the goods or services themselves. For instance, a descriptive mark such as "Cold and Creamy" for ice cream or "Beefy Burgers" for a burger joint provides information about the nature of the product rather than its origin. US trademark law affords less trademark protection for descriptive marks. It is challenging to register descriptive trademarks because their descriptive nature makes them less distinctive. To gain exclusive rights, these marks must acquire secondary meaning, demonstrating that consumers associate the term with a particular source. Businesses and entrepreneurs should understand the disadvantages and rules associated with descriptive trademarks so that they can make informed decisions in their branding.

Why is a Descriptive Mark Weak?

The rationale for providing less protection for descriptive trademarks stems from the principle that language describing a product or service should remain available for general use by all competitors. Descriptive marks merely convey information about the goods or services, such as size, color, quality, or ingredients, as explained in In re TriVita, Inc. If trademark law granted exclusive rights to descriptive terms, it could unfairly prevent other businesses from using common words necessary to describe their own goods or services.

For instance, allowing a single company to exclusively own a mark like "Cold and Creamy" for ice cream would unfairly restrict competitors from using those ordinary terms to describe their products. By limiting protection for descriptive marks, US trademark law promotes competition and prevents monopolization of common language that consumers rely on to understand the nature of products.

Establishing Secondary Meaning

Descriptive marks can still achieve trademark protection if they acquire distinctiveness or "secondary meaning" in the mind of the consumer, also known as acquired distinctiveness. This means that the public has learned to identify the mark specifically with the company or other source of the goods or services sold under the trademark. Even if a trademark identifies characteristics of the underlying goods or services, legal protection may be achieved by showing that consumers associate the descriptive term with a specific source. To achieve secondary meaning, a business must demonstrate that the public recognizes the mark as more than just a merely descriptive word or phrase. Factors that help establish this include extensive and consistent use, significant advertising, sales success, and media coverage over time. Once acquired distinctiveness is established, the descriptive mark becomes eligible for full trademark protection, granting exclusive rights. The benefits of achieving secondary meaning are significant, as it allows the owner to protect the mark from competitors, ensuring that the descriptive mark is tied to their brand and not simply to the characteristics of their goods and services.

Examples of Descriptive Marks with Secondary Meaning

A famous example of a descriptive mark that has acquired distinctiveness is American Airlines. Every US-based airline is an "American airline", and thus the mark is descriptive. However, American Airlines has been in business for decades and has engaged in extensive advertising that has established its name in the mind of American consumer as a distinctive provider of air travel. Another famous example of a descriptive trademark that has acquired secondary meaning is International Business Machines (IBM). The phrase "international business machines" is descriptive of typewriters, which were the original goods that the company offered. However, with time the brand became a household name and thereby developed secondary meaning and strong trademark rights.

Other Types of Trademarks

There are five categories of trademarks ranging from generic marks to fanciful marks, each with varying levels of protectability. Generic trademarks are not protectable at all, as they refer to the actual name of the goods or services and cannot function as a protectable trademark. For example, "Milk" for, e.g., whole milk is a generic term, and no one can claim exclusive rights to it. See our discussion of generic trademarks here.

As discussed herein, descriptive marks merely describe a characteristic of the product and require proof of acquired distinctiveness or secondary meaning to become protectable.

Suggestive trademarks suggest a characteristic of the goods or services but require a consumer to make a mental leap to understand the connection. For instance, "Coppertone" is a suggestive mark for use on sunscreen, as it hints at a bronzed appearance without directly describing the product, making it more protectable than a descriptive mark.

Arbitrary marks are words with common meanings unrelated to the goods or services offered. A famous example is "Apple" for computers. These marks are inherently distinctive because there is no logical connection between the word and the product.

Finally, fanciful trademarks are entirely invented for the sole purpose of functioning as a trademark. "Xerox" is a coined term for use in connection photocopiers and is a good example of a fanciful trademark. Another example of a fanciful mark is RIVIAN as it is a made up term with no prior meaning or connection to vehicles. Since they have no meaning outside of the brand, fanciful marks are the most inherently distinctive and thus the most protectable. Understanding this spectrum of trademark strength is quite helpful for selecting strong, protectable trademarks and brands.

Registration of Descriptive Marks

The United States Patent and Trademark Office (USPTO) allows descriptive trademarks to be registered either on the Supplemental Register or, if they have acquired secondary meaning, on the Principal Register. Initially, most descriptive marks will not qualify for the Principal Register due to their lack of inherent distinctiveness. However, with proof of continuous and exclusive use or significant advertising over time, a mark may acquire secondary meaning and become eligible for the Principal Register.

Claiming Acquired Distinctiveness

A trademark registration application for a descriptive mark can be filed with a declaration of acquired distinctiveness under Lanham Act Section 2(f) if the mark has been in use for at least five years or there is other evidence of acquired distinctiveness. If a declaration under Section 2(f) cannot be filed, the examining attorney assigned to review the application will likely refuse registration on the principal register based on descriptiveness under Lanham Act Section 2(e)(1). In such a case, the trademark will only be allowed to be registered on the Supplemental Register. The Supplemental Register offers less protection than the Principal Register. See our discussion of the differences between the Principal and Supplemental Registers here. Once the applicant can demonstrate acquiring distinctiveness, the Applicant can re-apply for the Principal Register.

A trademark application for a descriptive trademark must also meet all the other requirements for registration, including being unique and not confusingly similar to any prior registrations or pending applications on file with the trademark office. The examining attorney will also issue a disclaimer requirement for any unregistrable portion of the mark, meaning the applicant cannot claim exclusive rights to that portion. For example, the word "burger" in BURGER KING has to be disclaimed because it is highly descriptive of the food offered by the restaurant.

Role and Importance of Trademark Attorneys

Hiring a trademark attorney is an important step for businesses trying navigate the trademark process, trademark management, and trademark enforcement. US trademark law and practice is complex and there are many issues and subtleties that the uninitiated will likely miss.

Trademark Enforcement

Trademark enforcement is essential to protect your brand from trademark infringement. Actions like sending cease and desist letters, filing lawsuits, and seeking damages when others use your mark without permission should not be attempted without an expert. A trademark attorney is vital in this process, ensuring your rights are properly enforced and your brand remains protected.

Choosing a Stronger Trademark Option

A trademark attorney can assist in choosing a strong trademark. Fanciful marks, arbitrary marks, and suggestive marks are clearly more advantageous than merely descriptive marks. In a perfect world, arbitrary or fanciful marks are ideal because they offer the strongest protection. A trademark attorney can guide you through understanding the strength of your mark and whether it qualifies as inherently distinctive when examined by the USPTO.

Trademark Strategy

Developing a strong trademark strategy is key to preventing infringement in the first place. A well-crafted strategy involves thorough trademark searches to ensure your mark is unique, registering your trademark with the United States Patent and Trademark Office (USPTO), and monitoring for potential conflicts. By engaging a trademark attorney, you can ensure that your business avoids costly legal disputes and that your trademark is properly managed and enforced.

In the long term, a proactive trademark strategy helps safeguard your brand’s identity, allowing you to build a reputation without the risk of unauthorized use by others. An attorney’s expertise can protect your intellectual property and provide peace of mind as your business grows.

Contact Sierra IP Law

If you have a business reputation or brand that deserves protection, contact our office for a free consultation. The attorneys at Sierra IP Law have decades of experience in trademark practice.