Overcoming a Descriptiveness Refusal From the USPTO

It’s always wise to register a trademark for your business. It’s an advisable move that can help establish your brand’s place within the industry or as a trusted, premier provider of a specific product or service in a niche marketplace. It also provides crucial protection. However, in the event your trademark application is rejected, you may need to find a way of overcoming a descriptiveness refusal from the USPTO. Trademark law offers protection to business owners.

The protection the USPTO (United States Patent and Trademark Office) provides includes keeping brands within the same line of business as your company from using the same name or other distinct attributes in your brand’s marketing. Another conflict in registering trademarks is that any marks that are deemed merely descriptive or overly general cannot be approved for registration.

What Is a Descriptiveness Refusal in Trademark Law?

In trademark law, competing businesses register trademarks for their brand, so competitors are barred from using any similar names, symbols, icons, words, etc., that are determined to be too similar or general, negatively impacting business operations. If, after submitting a trademark proposal, you receive a “descriptive” refusal, your application was rejected because the mark’s words merely describe an attribute or quality of the goods or services your brand offers.

A registered trademark cannot simply describe an aspect of a brand’s goods or services because generic, descriptive language must be accessible to competitors in order to describe their own goods or services when explaining their business to consumers. If common, descriptive words or phrases were registered as a trademark and thus protected, competitors within the same trade would be greatly restricted in operating their business for fear of trademark infringement claims.

Determining that a trademark is only descriptive in nature can be a frequent point of contention in many instances. This is because there is a subtle distinction between a descriptive mark and one that is only suggestive; suggestive marks are lawful and allow trademarks to be approved for registration. A suggestive mark is close to describing the actual product or service but is only somewhat connected to the good/service, making the mark indirect in the description.

Overcoming a Descriptiveness Refusal

After getting a descriptiveness refusal, your written response to the USPTO may include an argument explaining exactly why you don’t believe the wording and/or overall design of your trademark is not merely descriptive. Along with factual points, you should also submit any applicable evidence to support your opposing argument. You may also choose to clarify your brand’s industry and describe your specific product or service area.

Your circumstances may instead necessitate that you amend your trademark application to the Supplemental Register if you agree your trademark is descriptive or lacks sufficient evidence to prove otherwise. The Supplemental Register does not have the same benefits as the Principal Register. You may also alter your trademark in some way, amending your application to include a Section 2(f) claim that provides evidence that your mark has acquired distinctiveness.

Another option is to limit your goods or services so that your brand caters to a certain area within the marketplace or industry related to your business. By narrowing a mark’s potential use, the conflict of descriptiveness may be overcome. Cases will vary, so it’s usually beneficial to consult with a trademark registration lawyer to discuss the available options.

FAQs

Q: What Is a Trademark Descriptiveness Refusal?

A: A descriptiveness refusal following a trademark application is a rejection on the grounds that the mark is too generic or merely descriptive of the goods or services provided. Thus, it would limit competitors from using common, descriptive language if registered. Trademarks that are merely descriptive cannot be approved for registration. Descriptiveness is one of several types of refusals a trademark application may receive due to conflict with a previously registered mark.

Q: Why Can’t a Trademark Be Descriptive?

A: A trademark can be descriptive, but it cannot be solely descriptive without other distinguishing qualities. Registering trademarks that simply describe an aspect of a product or service is barred because competitor brands must be allowed to use relevant words and phrases when describing their business to the public without the threat of trademark infringement.

Q: Can a Company Obtain Approval for a Trademark That Is Descriptive?

A: Under certain circumstances, a company can obtain approval for a descriptive trademark. The mark can be registered with the Supplemental Register but with less protection from competitors using similar trademarks. You can transfer the mark to the Principal Register if it has been on the Supplemental Register for five or more years (among other ways), establishing that it has obtained distinctiveness.

Otherwise, registering descriptive marks is difficult, and registering a trademark that is instead suggestive, arbitrary, or fanciful is ideal.

Q: How Is a Trademark Determined to Be Merely Descriptive?

A: Determining whether a trademark is merely descriptive is often challenging. Your trademark proposal may be rejected on descriptiveness-based grounds if the USPTO anticipated conflict upon the trademark being registered.

It’s possible for your established trademark to be accused of infringement because another mark is overly general or for you to accuse a brand’s trademark of unlawfully restricting your business operations. Whatever the case, the defendant’s attorney is likely to argue that the mark is instead only suggestive, which is legal.

Q: What Is Secondary Meaning in Trademark Law?

A: Secondary meaning is when a word or phrase that is otherwise merely descriptive has acquired a secondary significance, either through common usage or another manner, in the eyes of public consumers to the degree that it’s regarded as a trademark despite being unregistered. For instance, the adjective “American” cannot be trademarked, but “American Airlines” evokes a specific company in the consumer’s mind.

Qualified Legal Counsel for All Your Trademark Needs

Contact the team at Four Reasons Legal if your trademark application has been rejected based on descriptiveness reasons, alleged likelihood of confusion, or another form of refusal. We can also assist you in enforcing the protection of your registered trademarks by filing an infringement claim against competitors participating in unlawful conduct.