Trademarks 101 · Descriptiveness
A name that describes isn’t a name yet.
A descriptiveness refusal means the examiner reads your mark as a “mere” description of the goods or services. These protect others who might need the freedom to use the word to describe their offerings. There are generally three ways forward from here.
If you read nothing else
- What it means
- The examiner thinks your mark immediately tells buyers a quality, feature, purpose, or ingredient of what you sell. It’s codified as Section 2(e)(1) of the Trademark Act.
- Descriptive or suggestive?
- If buyers need a moment of thought to connect the name to the product, it’s probably suggestive and can register. If they don’t, it’s descriptive.
- Context decides
- The question is always what the mark means for these goods. The same word can be descriptive for one product and arbitrary or suggestive for another.
- How long you have
- Three months from the office action, with one three-month extension available (for an extra fee).
Words that usually draw it
Describes the product
Says what it is, what’s in it, how it works, or what it’s for.
- A quality: like saying yogurt is “CREAMY”
- A feature or ingredient: like saying “HONEY OAT” for cereal
- A purpose: like saying “QUICK PRINT” for printing services
Praises the product
Puffery describes too, at least as far as the Trademark Office is concerned.
- BEST, PREMIUM, ULTIMATE, and the like
- A plain claim of speed, size, or price
- Two descriptive words together, if the combo adds nothing new
Three ways forward
Argue it’s suggestive
Show that the link to the product takes imagination, with evidence of how the words are used.
Show it has come to mean you
With enough use (often five consecutive years or more) a descriptive mark can register on the Principal Register under Section 2(f).
Take a registration on the Supplemental Register
A lesser registration for marks that aren’t distinctive yet. It still gives you the ® and blocks later look-alikes from registering, but offers less protection overall in the event of a dispute.
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Or see every Trademarks 101 sheet.
This sheet is general information, not legal advice for your situation. Talk to us about yours.