How to Respond to Descriptiveness Refusal on a Trademark Application
Did you receive an Office Action from the USPTO refusing your trademark registration due to “merely descriptive” grounds under Section 2(e)(1) of the Lanham Act? Before accepting the descriptiveness refusal, read on to explore your options.
Understanding trademark descriptiveness
Every business owner wants a strong, unique trademark, something like KODAK, APPLE, or NIKE, that sets their brand apart. However, choosing a name that’s too abstract might make it difficult for consumers to understand what you offer.
On the other side, trademarks that are “merely descriptive,” meaning they directly describe the product or service, are not eligible for full federal protection. This puts companies in a tricky spot: how do you strike the right balance between a brand name that’s clear and informative but not so descriptive that it gets refused by the USPTO?
When the USPTO issues a trademark descriptiveness refusal, you have four potential options:
- Appeal the refusal through Office Action responses and/or an appeal to the Trademark Trial and Appeal Board (TTAB).
- Prove acquired distinctiveness (also known as a Section 2(f) declaration).
- Amend your application to the Supplemental Register.
- Abandon your application and consider reapplying later.
The decision on which of these options is best depends on the descriptiveness of the trademark, the length of use, the past sales and marketing, and the trademark owner’s budget. However, each of these has its hidden weaknesses that a trademark owner should know before making their decision.
Response Option 1: Appeal the descriptiveness refusal of your trademark
If a trademark owner believes that their trademark is not “merely” descriptive of its goods and services, they should strongly consider appealing the descriptiveness refusal.
An appeal to a descriptiveness refusal can come as:
- a response to an office action
- a request for Reconsideration of a final office action
- an appeal to the Trademark Trial and Appeal Board (TTAB)
Appealing to the TTAB, can be the most expensive and time-consuming way to respond to a descriptiveness refusal, but, if successful, it has the greatest benefits. If a trademark owner is successful in overturning the descriptiveness refusal, it may obtain a registration on the Principal Register as a distinctive trademark.
Appeals are particularly time-consuming because of the type of evidence that is required, namely, proof that the average consumer would not find a trademark descriptive for goods and services.
In its refusal, the Examining Attorney will provide evidence of the term being used descriptively, usually in the form of 40-50 pages of internet screen captures of anything from news articles to corporate websites. The trademark owner will need to rebut this evidence and provide their own evidence that the mark is distinctive.
For example, in In re Colonial Stores Inc., the predecessor court to the Federal Circuit held that SUGAR AND SPICE was not descriptive of bakery products because of the double meaning of the phrase and its use in a well-known nursery rhyme. Evidence can also include the absence of the word from the dictionary or that the trademark owner was the first to use the mark.
What if a trademark owner loses their appeal?
Generally, a trademark owner can choose either of the other two options while its trademark application is still pending. The further along in the process, the more procedurally difficult it can become to amend to the Supplemental Register or file proof of acquired distinctiveness, but it can usually be done.
Response Option 2: Provide proof of acquired distinctiveness (a 2(f) declaration)
In some cases, a trademark owner can accept that their trademark is descriptive and argue that it has “acquired distinctiveness” for its goods and services in the United States.
This means that, through the trademark owner’s use and promotion of the descriptive phrase, customers now see the descriptive words as a trademark for those goods and services.
For example, the trademark TASTY GREENS for lettuce would likely be descriptive, but if the owner of that mark spends a significant amount of time and money associating the name with its product, then it may claim “acquired distinctiveness.”
The Lanham Act allows the USPTO to “presume” that trademark owners who have been using their trademark “exclusively” for five years have acquired distinctiveness. Unless the trademark is extremely descriptive, then the USPTO will generally allow trademark owners to claim acquired distinctiveness under this “five-year presumption” with no additional evidence.
If the trademark is extremely descriptive or if it has not been in use for five years, the trademark owner can provide evidence to show that it has met this threshold. Evidence can include: sales, customer affidavits, earned media, advertising, and more.
While submitting an affidavit attesting to five years of use is easy and inexpensive, providing actual proof of acquired distinctiveness can be time-consuming and expensive.
However, there is a bigger reason why a claim of acquired distinctiveness may be damaging to the long-term protection of that trademark:
Registering a trademark based on acquired distinctiveness is an admission that the trademark is descriptive.
This means that, in the future, if the trademark owner is trying to sue a third party for trademark infringement, they cannot claim that their mark was distinctive. This is important because “actual” and “conceptual” strength are two factors that the U.S. courts generally consider when analyzing an infringement claim.
An acquired distinctiveness registration can reduce the overall scope of protection of a trademark. Another factor is that some services, like Google AdWords, will not extend automatic protection for phrases that are not “inherently distinctive.”
If a trademark owner makes a 2(f) claim, then, under Google’s current AdWords policy, Google will not automatically prevent competitors from buying the trademark in keyword advertising unless under a court order.
Response Option 3: Amend trademark to the Supplemental Register
A trademark owner also has the option of amending their application to the Supplemental Register. This route is often the least expensive, but it also affords the weakest protection.
Unlike the Principal Register, a trademark on the Supplemental Register does not give the mark nationwide constructive notice in the registrant’s claim of ownership of the registered mark. It also does not give nationwide priority to the registered mark effective from the filing date of the federal application and does not give the owner any evidentiary presumptions in Federal Court.
It will, however, be cited against similar trademarks for similar goods and services and may provide some deterrent to those seeking to register or use similar trademarks.
Registration on the Supplemental Register is not an admission that the trademark is descriptive, however, it will likely be a strong indicator that a trademark is weak.
In addition, there is no way to “transfer” a mark from the Supplemental to the Principal Register. If a trademark owner eventually wants a registration on the Principal Register, they will need to re-apply, go through the examination process again, and either argue that the mark was distinctive all along or file proof of acquired distinctiveness (see option 1).
Response Option 4: Abandon the trademark application
While this may seem obvious, it is important to note that a trademark application may be withdrawn without prejudice at any time before it is adjudicated before the TTAB (through option 1).
This means that a trademark owner may abandon their trademark application for any reason and file it again later that month, that year, or even in five or ten years.
The drawback to this approach? The trademark owner will not have federal protection for their trademark and will have to rely on their common-law rights. Common law trademark rights only apply to the geographic area where a trademark owner can show it has trademark recognition of its mark.
This will make enforcement of the trademark difficult and expensive, as, for example, many online marketplaces make it difficult to enforce non-registered trademarks and may refuse to do so without a court order.
It will also be public record that the application was abandoned. This will not be a legal admission of any kind but could provide an opposing party with additional ammunition in a legal dispute.
Final thoughts
There are many factors to consider when deciding the best way to deal with a descriptiveness refusal.
If a trademark is truly descriptive (meaning that it is unlikely to win on appeal) then the trademark applicant is limited in the ways they may gain federal rights in their trademark. The applicant’s only options are to provide evidence of acquired distinctiveness (if possible) or to amend the mark to the Supplemental Register.
However, for a company faced with this decision, it is always important to consider the long-term consequences. Remember that every huge company was once a startup facing similar decisions about their trademarks and a trademark registration is only as valuable as its owner’s ability to enforce it against potential infringers.
A trademark owner should consider all of the options before making a decision that could affect the long-term strength and scope of their trademark.
If your trademark has received a Section 2(e)(1) office action from the USPTO, the experienced trademark attorneys at Gerben IP can assist with your response to the merely descriptive refusal.
Eric Perrott, Esq.
Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: [email protected]. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
Do you need assistance with a trademark matter?
Contact an Attorney Today