THE TWO OBJECTIVES OF EVERY TRADEMARK REGISTRATION
In issuing trademark registrations, the United States Patent and Trademark Office (USPTO) has two fundamental objectives: protecting an applicant who has developed a sufficiently distinct name/logo/slogan from brand-appropriation by competitors AND as a corollary, protecting consumers from mistakenly purchasing a good/service by a company trafficking in the trademark of a competitor.
How does the USPTO achieve this objective? By only granting trademarks to those names/logos/slogans that are sufficiently distinct vis-à-vis the goods/services sold under the trademark.
While the USPTO wants to protect marks that are sufficiently distinct, it simultaneously wants to ensure that it does not confer protection to those marks, which are not sufficiently distinct. Indeed, in the event that a prospective mark is “Merely Descriptive” of the goods/services sold under the trademark, the mark will not be afforded protection. Why? Because merely descriptive trademarks do not perform the essential purpose of a trademark which is identifying the source of the good/service.
THE SPECTRUM OF DISTINCTIVENESS
The distinctiveness of a given trademark exists along a continuum, called the Spectrum of Distinctiveness, and runs the gamut from fanciful and highly distinctive to Generic, or not distinctive at all. Examining attorneys at the United States Patent and Trademark Office (USPTO) assess a proposed trademark’s characteristics in relation to the goods/services sold under the mark and must decide what “category of distinctiveness” is appropriate, given the goods/services sold. Principally, Descriptive trademarks are weak, ineligible for protection on the Principal Register (without secondary meaning), and are much more difficult to enforce.
HOW DO I KNOW IF MY TRADEMARK IS DESCRIPTIVE?
A Merely Descriptive trademark describes the purpose or function of the good/service, its components or ingredients, its use or quality – rendering the trademark ineligible for including in the Principal Register (more on this later). For example, consider a company, which sells distilled drinking water and applies for the trademark, “Clean”. Here, the mark would be deemed descriptive because it quite literally describes the quality of the Water being sold. Would it be fair for the USPTO to box out the rest of the distilled water industry and only let this one company use the word “Clean” in its name? Of course not.
USPTO PRINCIPAL AND SUPPLEMENTAL REGISTERS
While every trademark aspires to register on the Principal register, USPTO also has another register reserved to Descriptive trademarks called, the Supplemental Register. The Supplemental Register, grants registration of those marks (like “Clean” in our aforementioned example), which would otherwise be ineligible for registration in the Principal Register because of the indistinct quality of the proposed mark. The Supplemental Register is powerful because it allows a descriptive mark to maintain a certain level of protection while it establishes Secondary Meaning, or Commercial Recognition in the Market, but does not provide nearly the same guarantees as the Principal Register. Trademark Registration on the Principal Register grants presumptions of validity and ownership and provides for more robust protection and enforcement measures against infringing and potentially infringing marks.
DESCRIPTIVE TRADEMARKS AND SECONDARY MEANING
Remember, the crux of trademark law is to award protection to those companies, which have developed a mark that identifies the source-company of the mark. Therefore, even in instances where a trademark may prima facie be too descriptive to warrant trademark protection, it the mark becomes so well known through market acquisition and branding ubiquity, it can achieve Secondary Meaning, propelling it to the Principal Register. Secondary Meaning is achieved when the consumer no longer merely sees a product but instead understands who created that product. Critically, Secondary Meaning does not happen overnight and may take years and many dollars spent in marketing to develop. In the seminal Zatarains, Inc. v. Oak Grove Smokehouse, Inc. case, the court established a series of factors that may determine whether or not a mark has achieved Secondary Meaning:
- The extent to which the mark has been advertised
- The length of time the trademark has been used in commerce
- The extent to which consumers view and associate the trademark with its goods/services
If the mark has not achieved Secondary Meaning AND it is Descriptive, it cannot register on the Principal Register.
SECONDARY 2(e) TRADEMARK REFUSALS BASED ON DESCRIPTIVENESS
In the event an applicant attempts to register a trademark with the USPTO that is considered “Descriptive”, the examining attorney will refuse the mark and respond with an Office Action. Typically, the Office Action will say something to the effect of:
Registration is refused because the applied-for mark merely describes a quality, characteristic or feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents , 252 U.S. 538, 543 (1920)).
Here is a screenshot of a portion of an Office Action a client of mine has recently received:
HOW TO RESPOND TO A DESCRIPTIVENESS OFFICE ACTION
To respond to a Section 2(e) Refusal, an applicant must demonstrate that the mark is not Merely Descriptive of the goods/services sold under the mark. A powerful way to do this is to argue that the Examining Attorney has not demonstrated a sufficiently clear nexus between the mark and the goods/services; in another words, while the mark may appear to describe the goods/services, it in fact does not. Conversely, an applicant may accept that the mark is Descriptive and instead petition the Examining Attorney to allow the mark to register on the Supplemental Register while it accrues secondary meaning for eventual registration on the Principal Register.
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