The PTO Says My Trademark is Descriptive; Can I Still Use It?

Paul Reidl — Sat, 10 Jul 2010 21:40:00 GMT

A client came to me with a classic trademark problem. She had looked at the PTO web site and had not found a mark identical to hers so she filed the application. But the Examining Attorney rejected it because he thought it was “merely descriptive” of the goods. She asked me what I thought and what it would cost to challenge it.

I took a deep breath and suggested that she save the money because the Examining Attorney was right and the likelihood of overturning the decision was remote. Here’s why:

A descriptive term is one that describes some characteristic of the goods. An example might be “Crunchy Biscuits” for dog food. “Crunchy” describes the texture and “Biscuits” describes the shape or type of the dog food. When you combine the two terms, you have a phrase that merely communicates characteristics about the product to consumers. In this case: “these are dog biscuits that are crunchy.”

Trademark law says that merely descriptive terms such as these do not function as trademarks because they do not signify a single source or origin of the goods. Why? Because any maker of dog biscuits can make crunchy ones. For this reason such terms cannot be registered as trademarks without evidence that the term has “acquired distinctiveness” through use. (We lawyers also call this “secondary meaning.”) The concept is easy to grasp. If the maker of the dog biscuits sells enough of them, does enough advertising over time, and no one else uses the term on these goods in this manner, eventually consumers will identify the dog biscuits called “Crunchy Biscuits” with a single source of goods. Those of you who are gardeners are certainly aware of the fertilizer called “Miracle Gro.” That is a very good example of a descriptive term that has acquired distinctiveness through use and promotion.

The client’s next question was the obvious one from a business standpoint: “Can I still use the ‘trademark’ as the name of my product even if the PTO won’t register it? My labels are printed, and the cartons are packed and ready to load on the truck.”

The answer is: “of course.” She would be taking a risk that a competitor could also start using the term before she acquired distinctiveness in it, in which case she could not stop the competitor from using it because her term has not matured into a distinctive and protectable trademark. But there is nothing in the law that prevents her from using the term and trying to make it distinctive for her goods.

The final question was: “so do I have to give up the application?” In the case of descriptive terms that might become distinctive it is possible to persuade the Examining Attorney to move the application to the Supplemental Register. Although this is called a “registration” and it is assigned a registration number, a registration on the Supplemental Register does not confer any of the rights and privileges of a real registration. It is simply notice to the rest of the world that you are claiming this as your trademark and that the PTO believes that it could acquire distinctiveness at some point.

There is one additional twist: if the client had been using the term for five consecutive years the application would have been entitled to a statutory presumption of acquired distinctiveness. In that event, the filing basis for that application could have been converted to take advantage of the statutory presumption and it might have been registered. And, in fact, trademark owners who have used descriptive terms (or who have them registered on the Supplemental Register) can file a new application after the five year use period and take advantage of the statutory presumption.

There is a catch, however: the statutory presumption applies only to the registration of the term as a trademark. If you were to sue in Federal Court on that registration you would be required to prove acquired distinctiveness (unless your registration got the advantage of another statutory presumption not relevant here.)

Many business people like descriptive terms because they communicate information about the product to the consumer. However, the price you pay for communicating that information is that you may not be able to stop third parties from doing the same thing, and you will not be able to register the term without a great deal of use.

Inverted Business Building - Fulfillment - Sales - Marketing

Alan Tiras — Mon, 21 Dec 2009 02:00:00 GMT

What may seem like a good idea, to get the phone ringing or customers coming in the door as soon as possible, may not be the best way to launch your business.

CenterPoint Blog - Marketing

The PTO Says My Trademark is Descriptive; Can I Still Use It?

Inverted Business Building - Fulfillment - Sales - Marketing