How to Respond to a Trademark Office Action 2(e) Refusal
Principally, the trademark attorney responding to the office action will need to make a case that the mark is not, in fact, descriptive of the goods/services listed in the trademark application. Typically, the response to the office action will argue that while the trademark may seem descriptive, it is in fact only suggestive and therefore is eligible for trademark protection. The difference between a suggestive trademark and a descriptive trademark is rather hazy but centrally, suggestive trademarks require more thought and imagination from the observer of the trademark to hypothesize the goods/services sold while descriptive trademarks require much less imagination. This is a powerful argument indeed if articulated properly.
Even if the trademark is absolutely descriptive, the applicant still has several routes of recourse available to him. The first is claiming that the trademark has obtained secondary meaning, or acquired distinctiveness, under Section 2(f). Here, the response to the trademark office action will concede that the trademark is descriptive however, the argument will suggest that the trademark has been used with such regularity and frequency that this otherwise descriptive mark has accrued secondary meaning. That is to say, the trademark has acquired distinctness in the eyes of the consumer and now serves as a unique source identifier for the company using it. It is not always easy to establish secondary meaning.
Secondly, the applicant also has the option of amending the trademark application to the Supplemental register. The Supplemental register is the second tier Trademark Register (in contrast to the principal register) and is designed to allow descriptive trademarks to be listed that would otherwise not immediately qualify to be listed on the Principal Register. While not as powerful as a trademark listed on the Principal Register, trademarks that are listed in the Supplemental Register still allow the registrant to use the registration symbol ®, bring suit in federal court to stop infringement, use the registration as a preliminary basis for registration in other countries, and protect against the registration of confusingly similar trademarks that would otherwise be barred by the likelihood of confusion test.
Notably, marks that are Generic, or wording and designs that are the common name of the goods/services listed in the application are never eligible for trademark registration and cannot be listed on the supplemental register.
In the event that the USPTO issues a trademark office action based on 2(e), Merely Descriptive grounds and fighting the office action is not an option, it may be prudent to request to amend the trademark application from the Principal Register to the Supplemental Register. The Supplemental Register is admittedly the less desirable of the two Registers and is available for those marks which are not yet sufficiently distinct to qualify for eligibility on the Principal Register.