One of the goals for this blog is to encourage discussion of the substantive process of registering trademarks and copyrights. This entry focuses on the refusal of trademark registration for terms deemed “merely descriptive.”
It is a fundamental concept of trademark law that, as a general rule, trademark protection will be denied to terms that are “merely descriptive” of the goods or services to which they are applied. Lanham Act Section 2(e)(1) codifies and applies this long-held principle to the federal trademark registration process.
The idea behind this refusal to register descriptive terms is fairly simple: in order to be registrable, a mark must be distinctive of the goods (that is, in the minds of consumers it must identify a single source for those goods.) Descriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source. Moreover, public policy dictates that all competitors should be free to make use descriptive terms to describe their goods. Giving individual parties the exclusive right to use descriptive terms would “impoverish the lexicon of commerce” and put competitors at an unfair disadvantage.
It is possible to register a formerly descriptive term, provided the would-be registrant demonstrates “secondary meaning” or “acquired distinctiveness” in the term. This amounts to a showing that the applicant has used the term on a basis so long-term, exclusive, and widespread in scope that in consumers’ minds it no longer merely describes the goods in question, but instead functions as a trademark by identifying and distinguishing the applicant’s goods from those of others. Again, Section 2(f) of the Lanham Act codifies and applies these principles to the federal trademark registration process.
The ease or difficulty of demonstrating distinctiveness under Section 2(f) depends upon how descriptive the term was at the outset. Simply put, the more descriptive the term was to begin with, the more evidence of distinctiveness will be required before a registration will be granted. From this it can be reasoned that at the furthest reaches of the descriptiveness spectrum – presumably, near the point where “descriptive” terms begin to bleed into the category of “generic” terms – there may be descriptive terms for which it would be impossible to demonstrate acquired distinctiveness.
The USPTO is set up as the gatekeeper for federal trademark registrations, and thus it is the enforcer of these principles. The USPTO is charged with rejecting applications in which the mark is merely descriptive.
My experience across over twenty-two years of dealing with trademark applications has been that USPTO Examining Attorneys have always been enthusiastic about rejecting applications where they perceive the marks to be merely descriptive.
In recent years, however, this “Section 2(e)(1)” enthusiasm has grown to near fever-pitch. Lately it seems (to this reporter at least) that if any possible interpretation of an applied-for mark can be construed as having even a vaguely descriptive bent, then a descriptiveness rejection is almost certain to follow.
Examining Attorneys often argue forcefully that if there is any significance of the mark (not merely its primary significance) that can be viewed as descriptive, then the mark cannot be registered. Sometimes a reasoned response crafted by a skilled advocate can persuade the Examining Attorney to withdraw the refusal. Sometimes (again, it seems with increasing frequency lately) the Examining Attorney refuses to be persuaded and issues a final refusal, in effect daring the applicant to appeal the matter to the Trademark Trial and Appeal Board.
As we will see in my next entry, however, this process is not always applied on an entirely consistent basis.
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