One of the most common trademark rejections is that of the merely descriptive refusal. After a merely descriptive rejection, the Trademark Trial and Appeal Board affirms as many as 90 percent of these initial refusals. However, applicants can overcome a merely descriptive refusal. Consider visiting with an experienced and dedicated intellectual property attorney that is familiar with how to overcome a merely descriptive rejection on trademarks. Contact our legal team at Polymath Legal PC today at 833-931-6418 to schedule your confidential consultation.
Understanding a Merely Descriptive Refusal
The United States Patent and Trademark Office (USPTO) assigns a trademark if a logo or name is distinctive. More specifically, there are five categories of distinctiveness:
- Fanciful: Exxon, Xerox, Kodak, and other such names are meaningless except as trademarks. Many examiners will approve such marks.
- Arbitrary: Lotus software and Apple computers are arbitrary names. Lotus and Apple have nothing to do with software or computers. Arbitrary applications are almost as strong as fanciful applications. On the downside, neither category promotes the product, unless the owner spends considerable time and money promoting the product.
- Suggestive: Most trademark names are suggestive names. Such applications are almost as strong as the first two, and they also tie the mark to a product in customers’ minds. Netscape and Microsoft are suggestive names.
- Descriptive: Suggestive marks require some customer thought, imagination, or perception to reach conclusions about the nature of the goods. Descriptive marks, such as 104-Key Keyboards, require no thought, imagination, or perception
- Personal Names: A person cannot trademark a name like Bill’s Barber Shop because these names are too generic, unless they have secondary meaning, such as Wendy’s or McDonald’s.
- Generic: Cellophane and aspirin are generic. Generally, such names are entitled to no protection. Interestingly, Major League Baseball, Windows, and Sharp are generic names, but they have trademark protection, because they have secondary meaning.
If your company has the ability to create intellectual property that is higher on the distinctiveness ladder, the Board may approve even the most generic name.
Options To Overturn a Merely Descriptive Rejection
There is no right or best way to overturn a merely descriptive rejection. Several options are available, and they each have some pros and cons:
Double Meaning
Frequently, double meaning applications that have catchy expressions or rhyming patterns are more likely to succeed. Therefore, a slight name tweaking could be the difference between registration and denial.
In 2020, Your Home in the Cloud, a construction/real estate data storage firm, applied for a trademark and received it from the USPTO. “Home” has a double meaning. A home could be a physical structure. It could also be a place where people feel safe and secure. That first interpretation did not describe the Applicant’s product. In this case, YHITD was a safe and secure storage vehicle, as opposed to a physical structure.
A similar application for The Greatest Bar, a Boston saloon, was not awarded a trademark. The owners argued that “greatest” had a double meaning. The bar’s décor focused on famous Boston residents. However, the USPTO did not issue a trademark as they indicated that not enough of the public would understand the double meaning.
Acquired Distinction
If the trademark applicant produces evidence that a run-of-the-mill name has acquired special distinction, the USPTO will probably approve the application. This evidence usually includes:
- Promotional or advertising material pushing the name as a distinct symbol,
- Amount of money the applicant has spent on such campaigns,
- Testimony from consumers, dealers, and other individuals which indicate the name has become distinctive, and
- Any other similar evidence.
Usually, this option is only available to applicants who have used a name for several months, or several years, and want to trademark it after the fact.
Intentional Misspelling
In trademark applications, a word or two could make a big difference. A letter or two could make a big difference as well.
Urban Housing vs Urban Houzing is a good example. The Appeal Board rejected the first name, as it is obviously common and merely descriptive. However, the Appeal Board approved the second name. “Zing” could refer to the company’s attitude about housing matters and imply that it handled these applications speedily and enthusiastically.
Farmacy and Pharmacy is another example of misspelling names and trademark applications. Farmacy implies that the company uses environmentally friendly policies when it packages and dispenses its products. This distinction gives the company a greater chance of potentially obtaining a trademark.
Supplemental Register
Registration on the principle register fully protects the trademarked name. This protection includes nationwide applicability and presumptive ownership. These protections also include the inability of another company to trademark a confusingly similar name.
Supplemental registration, which is relatively easy even for descriptive trademarks, does not include exclusive rights to the name. However, it does include protection against confusingly similar registrations. Additionally, after five years, a name can move from the supplemental register to the principal register.
Consider Meeting with an Experienced California Intellectual Property Attorney Today
Our legal team can help you try to overcome a merely descriptive rejection. Our experienced and dedicated intellectual property attorneys can explain your legal options and ensure that your financial and intellectual property rights remain protected. For a confidential consultation, reach out to Polymath Legal PC by calling 833-931-6418. We handle trademark applications on a nationwide basis.