When it comes to choosing a trademark, there are opposing forces at play. Your marketing person wants an easy to remember trademark that quickly conveys the selling points of the product or services. On the other hand, your trademark attorney wants a unique trademark or seemingly random, unrelated word that has nothing to do with the product or services. What to do? Knowing that even descriptive word marks can be protected and registered with the U.S. Patent and Trademark Office (“USPTO”) may help with the decision.
What is a descriptive trademark?
Trademarks can be classified by their distinctiveness into five categories: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. Generic marks cannot act as a source identifier and therefore cannot be protected as a trademark (e.g. PEN for pens). On the other end of the spectrum, suggestive (e.g. SPEEDIBAKE for frozen dough), arbitrary (e.g. APPLE for computers), and fanciful (e.g. CLOROX for bleach) marks are considered inherently distinctive and are protectable as a trademark.
A descriptive mark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” A descriptive mark is considered the weakest of protectable trademarks. So long as a descriptive mark is capable of being a source identifier (i.e. has secondary meaning, or has come to identify the source of the goods or services in the minds of consumers), it is registrable with the USPTO if there are no other conflicting marks. Some examples include:
|Trademark||Goods / Services||Registration No.|
|AMERICAN AIRLINES||Air transport of passengers and freight||512294|
|PREMIUM QUALITY GIFT WRAP||Gift wrap paper||5597910|
|THE DRESS WAREHOUSE||On-line retail store services featuring clothing and dresses||5823648|
|PLUMBER’S SOAP||Bar soap; non-medicated hand soaps; non-medicated handmade soap bars; skin soap||5823795|
Principal Register (for marks that have acquired distinctiveness)
For a descriptive mark that has acquired distinctiveness (i.e. has gained secondary meaning through use), it may be registrable on the Principal Register. In order to register a descriptive word mark on the Principal Register, an applicant will have to assert acquired distinctiveness with a Section 2(f) claim of “substantially exclusive and continuous use” of the mark. If the mark has been in use for the past five (5) years, it is prima facie evidence of acquired distinctiveness. Even so, an examiner may require additional evidence to support acquired distinctiveness, such as advertising and promotional materials, dollar figures for advertising, dealer and consumer statements, and other evidence showing consumer recognition of the mark as a trademark of the applicant’s goods or services. Some examples includes:
|Trademark||Goods / Services||Registration No.|
|BEST OF THE BEST||Series of on-fiction books in the field of cooking and recipes; book publishing||5762507|
|1 MINUTE FACELIFT||Cosmetic preparations; skin moisturizer masks; facial moisturizers; neck moisturizers; massage apparatus; massage apparatus and instruments; massage apparatus for eyes; massaging apparatus for personal use; aesthetician services; cosmetic skin care services; holistic health services; hygienic and beauty care; medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies; skin care salon services; skin care salons||5798416|
|WET BRUSH||Hair brushes||4330506|
|MINISCRAPER||Hand tools, namely, a razor scraper||5472950|
Supplemental Register (for marks with minimal use)
The USPTO maintains a second register, Supplemental Register, for trademarks that are capable of distinguishing an applicant’s goods or services, but not registrable on the Principal Register. A descriptive mark with minimal use (e.g. less than five years of use or does not have sufficient evidence to show acquired distinctiveness) can be registered on the Supplemental Register. Note that the mark must actually be in use in order to be registered on the Supplemental Register.
Marks registered on the Supplemental Register enjoy some of the same important benefits as marks registered on the Principal Register, such as:
- nationwide notice to third parties;
- can use the registered trademark symbol ®;
- form the basis of likelihood of confusion rejection of later filed trademark applications; and
- bring an action concerning the mark in the federal court.
However, unlike marks registered on the Principal Register, marks on the Supplemental Register differ, at least, in that:
- there is no presumption of ownership, validity or exclusivity of the mark;
- they cannot be recorded the with U.S. Customs to prevent importation of goods;
- they do not benefit from a constructive use date (i.e. cannot rely on an earlier filing date);
- they do not become incontestable; and
- they are not published for opposition.
In view of the above, having a trademark registered on a Supplemental Register is better than not having any registered trademark in the U.S.
Once a mark has been in use or registered on the Supplemental Register for five years, an applicant can file a new application seeking to register the same mark on the Principal Register. Unfortunately, there is no means to convert an existing registration on the Supplemental Register to the Principal Register. There is also no guarantee that such an application on the Principal Register will be successful. Note that both the registration on the Supplemental Register and the registration on the Principal Register can co-exist and be maintained. Below are some examples of marks that were originally registered on the Supplemental Register and later successfully registered on the Principal Register with a Section 2(f) claim:
|Trademark||Goods or Services||Registration No.|
|IN-PRINT-FOREVER||Publication of books||5812929|
|CORPORATE & INCENTIVE TRAVEL||Magazines featuring business travel; printed periodicals in the field of business travel||5530033|
|POLICE OFFICER’S RIGHT TO SUE||Downloadable electronic newsletters in the field of police officer’s rights in line-of-duty injury; newsletter in the field of police officer’s rights in line-of-duty injury; providing a website featuring articles and postings in the field of legal information about police officer’s rights in line-of-duty injury; litigation services; attorney services||5669021|
|SUPER-CUSHION||Air springs used in suspending heavy industrial machinery; air springs used in suspending heavy vehicles||1152146|
Although a word mark typically provides the broadest protection, a descriptive word mark that is on the Supplemental Register provides limited protection as mentioned above. For additional protection, an applicant may consider seeking protection on the Principal Register of a stylized word mark or a logo mark. While such marks that incorporate a design element may also be considered descriptive, there are additional arguments against a descriptiveness refusal.
Although descriptive word marks are protectable in the U.S., foreign protection is not always available. For example, registration of a descriptive word mark based on acquired distinctiveness in Canada requires substantial evidence of use. Further, it is nearly impossible to register a descriptive mark (even one with a design element) in the European Union. To establish acquired distinctiveness of a trademark to become eligible for registration in the European Union requires substantial evidence of use of the mark in each of the 28 countries in the European Union. One option is to seek protection of descriptive marks in individual European countries. Some European countries have less stringent view of what is considered a descriptive trademark, and if necessary, the amount of evidence to show acquired distinctiveness would be limited to the one country and less voluminous.
A final note is that Amazon Brand Registry currently does not enroll marks registered on the Supplemental Register.
Even if a descriptive word mark is not able to be registered on the Principal Register now, there are still many benefits in filing for and securing a trademark registration on the Supplemental Register. With sufficient usage, even a mark on a Supplemental Register may eventually be registered on the Principal Register. Understanding all the benefits and limitations will help on your next decision in coming up with an appropriate trademark for your goods or services.
 15 U.S.C. §1052(f).
 15 U.S.C. §1091.