By: Eric Perrott, Esq.
Did your company receive an Office Action refusing your trademark registration based on the grounds that it is “merely descriptive” under Section 2(e)(1) of the Lanham Act? Read the article below carefully before accepting the Examiner’s “descriptiveness” decision.
Everyone wants their trademark to be a strong and unique mark, like KODAK, APPLE or NIKE, but product might ultimately fail if its name does not convey enough information for a consumer to consider purchasing it. However, trademark protection is not available for trademarks that are merely descriptive of the trademark owner’s goods and services. As a result, companies spend a lot of time and money trying to find a balance between the strongest, but most abstract marks (i.e. a fanciful, made up word like KODAK or an arbitrary use of a word like APPLE for computers). But what about those trademarks are right on the edge of being “merely descriptive”? This question often comes up when applying to register a trademark with the United States Patent and Trademark Office. The USPTO will refusal to register a trademark on the Principal Register if it is “merely descriptive” of the trademark owner’s goods and services. Once a descriptiveness refusal is issued against an application, the trademark owner has four options: (1) appeal the examiner’s refusal through office action responses and/or an appeal to the Trademark Trial and Appeal Board, (2) accept that the trademark is descriptive and provide evidence that it has “acquired distinctiveness” under Section 2(f) of the Lanham Act, (3) accept registration on the Supplemental Register, or (4) abandon the application. 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.
Appealing a 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, or as an appeal to the Trademark Trial and Appeal Board. An appeal, especially an appeal 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.
An appeal is 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 its 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 words’ absence from the dictionary or that the trademark owner was the first to use the mark.
What if a trademark owner loses an 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. If a trademark owner believes that its trademark is not “merely” descriptive of its goods and services, it should strongly consider appealing the descriptiveness refusal.
Providing Proof of Acquired Distinctiveness – A 2(f) Declaration
In some cases, a trademark owner can accept that its trademark is descriptive and argue that it has “acquired distinctiveness” in the United States for its goods and services. 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 PTO 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 owner’s to claim acquired distinctiveness under this “five-year presumption” with no additional evidence. If the trademark is extremely descriptive or if it hasn’t been in use for five years, the trademark owner can provide evidence of customer affidavits, sales, advertising, earned media and more to show that it has met this threshold. 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 registration 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, it cannot claim that its mark was distinctive and “actual” and “conceptual” strength are two factors that the U.S. courts generally consider when analyzing an infringement claim. This 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.
Amending to the Supplemental Register
A trademark owner also has the option of amending its 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 priority of use nationwide of 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 effects from 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, it 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 above).
Abandoning 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 its trademark application for any reason and file it again later that month, that year, or even in five or ten years. The downsides to this are clear: the trademark owner will have no federal protection for their trademark and will have to rely on their common-law rights, which 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 on How to Respond to a Descriptive Refusal from the USPTO
There any many factors to consider when deciding the best way to deal with a descriptiveness refusal. If a trademark is truly descriptive (i.e. there little to no chance of winning on an appeal), then providing evidence of acquired distinctiveness (if possible) or amending to the supplemental may be the only way to gain any federal rights in the descriptive trademark. 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.
Eric Perrott is an attorney with Gerben Law Firm, a boutique trademark and intellectual property law firm that offers big-firm quality service at reasonable prices. Gerben Law Firm offers free consultations and welcomes your call or your e-mail with any questions. You can reach Eric Perrott directly at 202-780-9191.