Many entrepreneurs are surprised when the USPTO sends an Office Action explaining that their trademark is considered descriptive. It feels personal, especially when you have spent time and energy crafting a brand you believe in. A descriptiveness refusal simply means the examiner believes your mark describes the goods or services too directly. Although this can slow the application process, it is something that can be addressed with a thoughtful strategy.

At Cohn Legal, PLLC, we help founders and brand owners navigate refusals like these every day. Your trademark is a core part of your business identity, and understanding how descriptiveness works can help you overcome the objection with confidence.

What a Descriptiveness Refusal Really Means

A descriptiveness refusal occurs when the USPTO believes your trademark tells consumers exactly what you offer without giving them a reason to view the mark as a unique source identifier. A trademark needs to function as a brand name that sets your business apart. If the wording simply describes a feature, purpose, or characteristic of your product, the USPTO views it as a term that competitors should also be free to use.

For example, a name like “Fresh Veggie Delivery” directly explains the service rather than creating a distinct brand identity. A consumer does not need to think or interpret anything. The description is immediate. When a mark falls into that category, the USPTO pauses the registration process and requests clarification or a stronger argument as to why the mark should still be protected.

Why Distinctiveness Matters for Your Trademark

Trademarks are meant to help consumers recognize the origin of goods or services. The more distinctive the mark, the easier it becomes for the public to associate it with one business. Descriptive terms sit near the weaker end of the distinctiveness scale, which means they do not automatically receive federal protection. On the opposite side of the spectrum are creative or unexpected names that are instantly unique. These stronger marks move through the USPTO process more smoothly because their purpose as brand identifiers is clear.

Understanding this scale can help you shape your brand strategy. If your current mark leans toward description rather than creativity, it will need additional support or argument to successfully move forward.

Strategies for Overcoming a Descriptiveness Refusal

A descriptiveness refusal is not the end of your application. It is simply the USPTO asking for more information before deciding whether the mark can function as a trademark. There are several paths you can take in your response.

One way to challenge the refusal is to explain why your trademark is not truly descriptive. Some marks appear descriptive at first glance but require interpretation or mental effort from the consumer. These are known as suggestive marks. If your name hints at the qualities of your product rather than stating them outright, it can qualify as inherently distinctive. The key is showing that the consumer must make a connection rather than receiving a direct explanation.

Another approach is to demonstrate that your mark has acquired distinctiveness through real-world use. If your brand has gained recognition, customer loyalty, media attention, or substantial marketplace presence, you may be able to show that consumers already associate the name with your business. This type of evidence supports what is called secondary meaning. While it takes time and documentation to prove it, acquired distinctiveness can turn a descriptive name into a protectable trademark.

A third option is to move your application to the Supplemental Register. Although the Supplemental Register does not offer all of the advantages of the Principal Register, it still provides meaningful protection. It allows you to use the federal registration symbol, helps deter copycats, and gives you a stronger starting point to later seek Principal Register status once the mark becomes more distinctive through use.

Strengthening Your Trademark Before You File

One of the best ways to avoid a descriptiveness refusal is to start with a brand name that has built-in distinctiveness. Names that require imagination, use common words in unexpected ways, or are entirely invented tend to perform better at the USPTO. These kinds of marks stand out immediately and are easier to defend in both the application phase and any potential enforcement action later.

Entrepreneurs often gravitate toward names that describe exactly what they sell because they feel practical or straightforward. However, descriptive names rarely age well in the trademark world. Investing time in choosing a mark that sets your brand apart can save years of frustration down the road.

Before you file a trademark application, it is helpful to conduct an in-depth clearance search and evaluate the strength of your proposed mark. A trademark attorney can help you understand how the USPTO will likely view your application so you can avoid potential refusals.

Why Legal Guidance Matters

Responding to a descriptiveness refusal involves legal reasoning, strategic arguments, and sometimes evidence drawn from your business history. The USPTO expects responses that are well organized and supported, which means a simple explanation usually is not enough. Without a strong reply, you risk receiving a final refusal that becomes much harder to overcome.

Trademark attorneys know how examiners evaluate distinctiveness and can craft a response that gives your application the best chance of moving forward. Whether you want to argue that your mark is suggestive or pursue acquired distinctiveness, having an experienced legal partner helps protect both your brand and your filing timeline.

At Cohn Legal, PLLC, we guide founders through the entire registration process. Your trademark is a foundation of your business growth, and our team helps ensure that each step is handled with clarity, confidence, and care.

Closing Thoughts

A descriptiveness refusal is not a sign that your brand is weak or unworthy of protection. It simply signals that the USPTO needs a stronger basis for granting registration. With the right legal strategy, a descriptive mark can still become eligible for federal protection. Whether that involves arguing for suggestiveness, demonstrating acquired distinctiveness, or using the Supplemental Register as a stepping stone, you have multiple options available.

Your brand deserves the strongest possible foundation. If you are navigating a USPTO refusal or want guidance before filing, we are here to help you move forward with confidence.