Descriptiveness

§ 2(e)(1) refusals

A descriptiveness refusal is basically a refusal to register the mark because the mark itself describes the nature and quality of the goods or services. In essence, one does not need to use any imagination when confronted with the mark to ascertain what it is or where it comes from.

Descriptiveness rejections (§ 2(e)(1) refusals) can typically be overcome in several ways, including: 1) demonstrate that the mark has “acquired distinctiveness” through the presentment of evidence including the length of time that the mark has been in use, the type and extent of advertising, and applicant’s efforts in promoting its mark; or 2) amend the application to the Supplemental Register. An application can only be amended to the Supplemental Register if the mark is in use. If the application is filed on the basis of intent to use, then use must commence, and allegation of use must be filed before the application can be amended to the Supplemental Register.

Note, that if the examiner believes that the mark is generic, but is not initially making that determination, the examiner will indicate that the mark is descriptive and refuse registration. If the examiner makes reference to possible registration on the Supplemental Register, this is a positive sign that the mark may be registrable and is not generic. If the examiner actually states that the mark may be generic, there is little likelihood of overcoming the refusal.

To submit arguments, it is necessary to understand how trademarks are evaluated. In ascending order, the degree to which trademarks are eligible for trademark protection are: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. Under the Lanham Act generic marks are not registrable because they are not marks, the descriptive marks require proof of distinctiveness to be registrable and the latter three categories are considered inherently distinctive and therefore registrable.

Various tests have been established to assist determining if a mark is suggestive or descriptive. These tests can be reduced to four primary tests of evaluation, namely:

  • The Dictionary Test: What is the dictionary definition of the term;
  • The Imagination Test: What amount of or degree of imagination, thought and perception is required to reach a conclusion as to the nature of the products;
  • The Competitor Need Test: Do competitors need to use the mark to describe their product; and,
  • The Competitor Use Test: Do competitors use the mark to describe their products.

Evidence must be submitted to prove each of these tests. This is a high burden and often difficult to overcome

The foregoing is a general discussion of confusingly similar objections and possible ways to overcome them. For specific details on your situation, we can discuss this further.