Did you just receive a refusal on your trademark application for being Merely Descriptive?


Been Refused? See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. There may be responses that may save your trademark from going abandoned.


Answering Office Actions

Why not just read a textbook or  blog in order to find out the answer to a trademark refusal? General purpose answers on how to answer office actions are not geared to specific trademarks issues. Each registration of a mark is specific to the facts involved. The most common refusals are for a likelihood of confusion with a prior pending or registered mark or descriptiveness refusals (merely descriptive or generic).


Not every office action has an answer that will save the application, some proposed trademark applications just do not comply with U.S. Trademark Law. Once a trademark application is submitted the changes or amendments that can be made are very limited. Sometimes a particular trademark could gain registration if the application had been done right and the only fix would be to start over.  If we review your application and believe that the mark as submitted cannot be saved, we will offer you a discounted price on applying for a new registration where we can tailor your application to avoid the refusals and issue quickly.


Need an affidavit of acquired distinctiveness? We have a large number of affidavits (our own and others) that have been successful in obtaining a Section 2(f) or 2(f) in part claim. Unfortunately someone else’s claim can only be used as an example of how to prove acquired distinctiveness under a certain set of facts but there are similarities for different types of fact patterns that can improve the chances of success. There are also a number of different fact dependent strategies for how and when to submit evidence (with the application or only if the examiner requires it?). The more highly descriptive the matter is, the more difficult it is to show acquired distinctiveness.

If your trademark has value and you want to use our experience in trademark law to your advantage, call us at (651) 500-7590 or email us at info@notjustpatents.com. We suggest using caution in hiring a trademark attorney. Many firms have very poor records for getting marks registered even though they have filed a large number of applications.

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Why is Avoiding A Merely Descriptive Trademark Important?

Merely Descriptive matter is not registerable on the Principal Register without a showing of acquired distinctiveness (red arrow in illustration below). Even with a valid claim of acquired distinctiveness, a descriptive trademark may still be considered weak and given a narrow scope of protection under the law.


Why is a narrow scope of protection bad?

  • A narrow scope of protection translates into Competitor B being able to use a trademark very close to Competitor A and getting away with it even if Competitor A was first. Competitor A has to spend more and more to defend their market (advertising) and name (legal fees). If Competitor A had a stronger mark to begin with, the advertising could be offensive instead of defensive and the defensive legal fees could be avoided and invested in being more innovative or some other long term goal.
  • A narrow scope of protection may mean that USPTO trademark examiners do not refuse new applications from Competitor B and Competitor C that have some similarity to Competitor A. Competitor A has to oppose, cancel or sue in order to defend their rights. (This can be good for the Competitor A attorney’s cash flow to always have some kind of legal proceeding in the works.) Sacrificing investing in growth in order to pay legal fees has long term consequences.
  • A narrow scope of protection may mean that USPTO trademark examiners refuse registration to Competitor A and clearly state the reasons for refusal in the public record for anyone to see. Competitor B has a head start on its defensive strategy if Competitor A ever tries to stop it since the reasons for refusal at the USPTO are derived from federal  statutes, rules, and case law. Merely descriptive matter is supposed to be in the public domain for anyone’s use and a long term strategy  whose foundation stands on a narrow base is easier to topple.



Distinctiveness is the measure of the inherent strength of a mark (is it a weak or strong trademark?). An inherently distinctive trademark [as opposed to a descriptive or generic trademark]  is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-Up Co., 628 F.2d at 1091 (8th Cir.1980).


What is not a Strong Trademark? (What is a Weak Mark?)

If a trademark is not inherently distinctive, such as a mark that is merely descriptive or generic, it is hard to protect from competitive use and may be a weak mark or have no rights at all! The law does not allow trademark owners to take descriptive dictionary words and claim them for exclusive use (including geographically descriptive marks). See Examples of Strong Marks and Weak Marks.

The date when a business obtains common law rights in a trademark (“trade identity rights’) depends on the distinctiveness of the mark. “A business will obtain rights in the mark upon first use only if the mark is inherently distinctive. If the mark is not inherently distinctive, a business may obtain ownership rights in the mark when the mark attains a secondary meaning.”  Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc., 934 F.2d at 1559 (C.A.11 (Ga.), 1991). Even if someone uses something as a trademark, “if it is not distinctive, the user does not have a trademark because he has no existing trademark rights.” Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317 (Fed. Cir. 1981).

At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness (has achieved a secondary meaning) with the proper evidence or on the Supplemental Register. See Comparison  for the advantages of federal registration and the differences between the two registrations.


What is the definition of merely descriptive? A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). See Examples of Merely Descriptive Trademarks.

According to the USPTO (see merely descriptive refusals): The two major reasons for not protecting [allowing registration of] descriptive marks are:  (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).


Is there anything worse than being merely descriptive? Being Generic.

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142. See Merely Descriptive Refusals for a case where a pro se applicant went from first just being merely descriptive to being generic. Sometimes things get worse when you are not sure how to answer a trademark refusal correctly.


Can my unregistered mark be merely descriptive or generic?

Yes, and it may make enforcement difficult. Federal trademark infringement, 15 U.S.C. S 1114, federal unfair competition, 15 U.S.C. S 1125(a)(1)(A), and trademark registration principles are based on the same principles. “To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A&H Sportswear v. Victoria's Secret Stores, 237 F.3d at 210 (3rd Cir., 2000).

Claims for trademark infringement for registered or unregistered marks require findings that the marks owned by plaintiff are either inherently distinctive [rather than descriptive] or have acquired a secondary meaning and are likely to be confused with defendants' marks by members of the relevant public. Duncan Mcintosh Co. v. Newport Dunes Marina LLC, 324 F.Supp.2d 1083-1084 (C.D. Cal., 2004) quoting Int'l Jensen, 4 F.3d at 823; Vision Sports, 888 F.2d at 613; California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.1985).


In addition to distinctiveness, to be a valid mark, a mark applying for registration must be a valid use and must actually function as a trademark.:

Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):

The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.” Trademark Manual of Examining Procedure (TMEP) 1202.


Also, an unregistered mark must actually have been used as a trademark [is a valid mark and functions as a mark] to be protected under trademark law. "[A] plaintiff must show that it has actually used the designation at issue as a trademark"; thus the designation or phrase must be used to "perform[ ] the trademark function of identifying the source of the merchandise to the customers." Microstrategy Incorp. v. Motorola, 245 F.3d at 341 (4th Cir., 2001) quoting Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998). See Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks.


Secondary Meaning

Secondary meaning is when the consuming public has made a link between an alleged mark and the source of the mark.

The factors considered in determining whether a descriptive mark (not inherently distinctive) has achieved secondary meaning include:

(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer as evidenced by survey or direct consumer testimony;

(2) the degree and manner of advertising under the claimed trademark;

(3) the length and manner of use of the claimed trademark; and

(4) whether use of the claimed trademark has been exclusive.

Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985).


Evidence of Secondary Meaning or Acquired Distinctiveness

Evidence of secondary meaning or acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.  The United States Patent and Trademark Office decides each case on its own merits-whether or not the evidence is sufficient to show acquired distinctiveness is dependent of the facts of each registration application.




How can you Avoid Descriptive Trademarks?

Plan for a Strong Trademark Registration (not a filled in form!)

To verify a potential trademark is: NOT MERELY DESCRIPTIVE, is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of words or business names.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!



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