One of the most challenging obstacles in the trademark registration process is a refusal under Section 2(e)(1), where an examiner determines that a mark is merely descriptive of the associated goods or services. Successfully challenging a merely descriptive refusal can be difficult, particularly when the USPTO has presented substantial evidence that consumers would immediately understand the mark as describing the goods or services. Although historical TTAB decisions demonstrate the challenges associated with these refusals, the outcome of each case depends on the specific trademark, the goods or services involved, and the evidence presented. While every case is unique, there are effective strategies that applicants can employ to increase their chances of success.
Understanding Merely Descriptive Refusals
A mark is considered merely descriptive if it immediately informs consumers about a feature, characteristic, function, or quality of the goods or services. As established in In re Chamber of Commerce of the United States of America, a mark must convey this meaning with specificity. If a mark is found to be descriptive, one path to securing registration on the Principal Register is proving acquired distinctiveness. Acquired distinctiveness under Section 2(f) may be established through evidence demonstrating that consumers recognize the mark as identifying a particular commercial source. Depending on the circumstances, this may include a verified claim of substantially exclusive and continuous use in commerce for the five years preceding the claim, ownership of qualifying prior trademark registrations, or evidence of consumer recognition, advertising, and sales. However, five years of use does not automatically establish acquired distinctiveness, particularly when the proposed mark is highly descriptive. If the available evidence is insufficient, applicants may consider other appropriate strategies, including challenging the descriptiveness refusal or seeking registration on the Supplemental Register when eligible.
Using Double Entendre to Overcome Descriptiveness
A strong argument against a merely descriptive refusal is proving that the mark functions as a double entendre. A double entendre occurs when a mark carries more than one meaning, with at least one interpretation not being merely descriptive. If a mark’s alternative meaning is unrelated to the goods or services, it may be eligible for registration. For instance, in In re Kraft, Inc., the TTAB found that “LIGHT N’ LIVELY” was not merely descriptive for reduced-calorie mayonnaise because “LIGHT” lost its descriptive significance within the full phrase. Wordplay, alliteration, or puns may support an argument against descriptiveness when the mark creates a distinct, non-descriptive commercial impression. However, the alternative meaning must be readily apparent to consumers, and creative wording alone does not guarantee registration.
Demonstrating Incongruity
Another effective approach is highlighting an incongruity in the mark. When two or more terms are combined in a way that creates an unexpected or unusual meaning, the mark may be seen as suggestive rather than descriptive. In In re Dunham, the applicant successfully argued that “BRAND THERAPY” for graphic design consulting was suggestive, as the phrase implied a brand undergoing therapy, requiring an imaginative leap. Similarly, in the nonprecedential decision In re Original Grain, LLC, the TTAB reversed a descriptiveness refusal involving the ORIGINAL GRAIN design mark for restaurant services. The Board concluded that the evidence did not establish that the mark immediately described a principal attraction or specialty of the restaurant, demonstrating the importance of evaluating a mark in the context of the identified services.
Overcoming Descriptive Refusal with Intentional Misspellings
A deliberate misspelling of a descriptive word will not automatically allow a mark to avoid a descriptiveness refusal. However, if the misspelling creates an additional, non-descriptive meaning or a distinctive play on words, it may support an argument that the mark is suggestive rather than merely descriptive. In In re Choice Traders LLC, “ARTIZEN” for essential oils was found to be more than a mere misspelling of “artisan” because it incorporated “zen,” suggesting a distinct commercial impression. Similarly, in In re Tea and Sympathy, Inc., “THE FARMACY” was deemed registrable for a store selling natural products, as it played on both “pharmacy” and “farm.”
Seeking TTAB Trademark Appeals for Descriptive Refusals
If the examining attorney maintains a merely descriptive refusal in a final Office Action, the applicant may seek reconsideration or file an ex parte appeal with the Trademark Trial and Appeal Board (TTAB). An appeal must be filed within the applicable response period. For most applications filed under Sections 1 or 44, this period is three months from the final Office Action, with one additional three-month extension available upon timely request and payment of the required fee. Applications filed under Section 66(a) generally have a six-month response period without that extension option.
A TTAB appeal focuses primarily on the evidence and arguments already included in the trademark application record. Applicants should therefore submit relevant evidence during examination rather than assume that new evidence can be introduced during the appeal. Additional evidence generally requires an appropriate procedural basis, such as a timely request for reconsideration or a request for remand when permitted. Importantly, filing a request for reconsideration does not extend the deadline for filing an appeal. Careful evaluation of the existing record and applicable deadlines is essential before deciding how to proceed.
Conclusion
Overcoming a merely descriptive refusal requires a strategic approach and a deep understanding of trademark law. Whether by proving a double entendre, demonstrating incongruity, or highlighting an intentional misspelling with a secondary meaning, applicants have multiple pathways to argue against a refusal. When necessary, filing a TTAB trademark appeal can provide an additional opportunity for registration. For expert guidance on navigating trademark refusals, seeking professional legal consultation from a Trademark Attorney is highly recommended.
If your trademark application has received a Section 2(e)(1) refusal, understanding the available response strategies is an important first step. Cohn Legal, PLLC assists applicants with descriptiveness refusals, acquired distinctiveness arguments, and other substantive USPTO objections. Learn more about our Trademark Office Action Response Attorneys and how we approach trademark refusals.