A Descriptive Mark? Cornering the Market or Just Bad Branding?

by Kathleen Kuznicki, Esq.

A trademark must be more than merely descriptive.If you own a business, you probably understand how important branding is for the success of your company. Although branding, originally, was a way to tell one person’s cattle from another, nowadays, a brand refers to the identity, or the personality of a product, a company, a service, or even an individual.

The American Marketing Association defines brand as the “name, term, design, symbol, or any other feature that identifies one seller’s goods or services as distinct from those of other sellers.”

The goal for most businesses is to develop their brand into something that becomes familiar to customers and something that generates positive feelings. What can be branded? Names of businesses, associated logos, taglines, slogans, names of products, and even product shapes, sounds, smells, and colors can be part of your brand.

Oftentimes, a person will come to me looking to register a trademark that they think comprehensively and accurately describes their business. But, often the trademark is really just a description of the business, albeit a “fancy” or a “trendy” version. Applications for descriptive marks of this type are routinely rejected for registration on the Principal Register by the United States Patent and Trademark Office (USPTO).

According to the USPTO:

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.  Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used, or intended to be used, in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.  (§1209.01(b); case citations removed)

As much I understand that applicants like to think they are unique and would like to be known as “the one and only provider” of a particular product or service, in reality, multiple businesses provide similar products and services. The USPTO does not want to remove common descriptions or industry specific terms from the public domain, because all business owners should be entitled to use the jargon associated with their particular field. Trademark owners tend to think this is unfair and do not like it when their marks are rejected for registration. But really, are marks of this type effective for branding?

A brand should represent the sum of all the valuable qualities of a product or service to the consumer.  For example, Pepperidge Farm® represents good old fashioned baked goods, Disney® represents a magical experience, and Sesame Street® represents an urban neighborhood, similar to the neighborhoods where many children in their target audience live. The marks used by these companies, such as the mill in the Pepperidge Farm® logo and the castle in the Disney® logo, have all been carefully selected to convey a specific message.  Does a mark that “merely describes” your products or services really differentiate you from your competition?

The real value in branding comes from consumer association, perception, education, and expectation. Your brand should:

  • Have characteristics that differentiate it, especially from those who sell similar goods or services.
  • Develop or align the expectations behind the brand experience. For example, a hamburger from McDonalds® in California should taste the same as one from Pennsylvania.
  • Highlight special or unique qualities or characteristics of your goods or services.
  • Embody the good will that you have worked hard to establish.
  • Build trust with your customers.
  • Encourage brand loyalty and advocacy.

So, even though a “merely descriptive” rejection can be frustrating to a trademark owner, perhaps it should be viewed as a sign that it’s time to refocus on a branding strategy and ask, “How can I really distinguish my business from my competition?”

Now, if you truly believe your trademark or (so-called by the USPTO) descriptive mark is really the best reflection of your business, you do have some options. If you have been using the mark for more than five years, if you have substantial evidence of distinctiveness, or if you have both, you can attempt to overcome the USPTO rejection by making the argument that the “merely descriptive” rejection is improper. If you are successful, the mark will be published for opposition and then registered on the Principal Register, as if it were originally allowed.

If it is not accepted, or if you lack an effective distinctiveness argument to overcome a “merely descriptive” rejection, the application may be amended for registration on the Supplemental Register. While registration on the Principal Register provides a trademark owner with the greatest protection; the Supplemental Register does afford some protection – namely, the use of the registered trademark symbol ® and the ability to block a subsequent filer from registering the same mark, or a confusingly similar mark, with the USPTO.

Kathleen Kuznicki is a Patent Attorney with The Lynch Law Group. She assists business owners, entrepreneurs and inventors with all things related to intellectual property and brand protection, including patents, trademarks, copy rights and licensing. She can be reached at Kathleen Kuznicki or (724) 776-8000.
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