What’s in a name? Well, Juliet, in the world of trademarks, quite a lot. A mark’s distinctiveness places it on a spectrum somewhere between “inherently distinctive” and “generic.” From most to least distinctive, a mark is labeled as either: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, or (5) generic. Marks falling into camps 1-3 are granted protection. Those in camps 4 or 5 are not; however, there is an important exception that grants protection to certain descriptive marks. I will explain this exception and hopefully arm you with the knowledge to help your business avoid some headache and heartache down the road.
Before getting to the exception, it is important to understand how distinctiveness is evaluated and what makes a particular mark “descriptive.” Distinctiveness is evaluated through the eyes of the consumer–what do buyers think or do when they see or hear a mark on a product or service? Trademark law presumes that a mark is more distinctive, and therefore entitled to greater protection, if it has little or no relation with the goods or services offered. This is because the less related and more unique a mark is with its goods or services, the easier it is for consumers to identify the source company. The policy principle is that a diverse and distinguishable spectrum of potential marks helps consumers identify specific goods or services with a specific source. Perhaps you see why trademark law is skeptical of rewarding descriptive marks. A descriptive mark is one that merely describes the goods or services for which the mark is used–it describes some character, quality, nature, ingredient, or origin of the goods or services. This does not help the consumer identify the mark with its source because the characteristic or quality describes the actual goods or services and is necessarily shared with any business that offers those same goods or services. For example, the words “red” or “juicy” for a mark on apples could describe all apples, not just those from the company using the mark. From this perspective, choosing a descriptive mark is also a poor business decision because it does little to distinguish your business’ products or services from those of your competitors. However, businesses continue to choose and seek protection for descriptive marks since they directly advertise a business’ goods or services to potential consumers. Through a lot of work, effort, and money, some of these descriptive marks can be granted trademark protection.
A descriptive mark will be granted trademark protection if it has “acquired distinctiveness,” that is to say, the mark has a “secondary meaning” in the minds of the consumer. So, while the mark may be descriptive, the general consuming public has come to identify that descriptive mark with a particular company and product–which is what trademark law tries to protect and reward. Some examples of descriptive marks that have acquired distinctiveness are SHARP for televisions and WINDOWS for computers.
How does a company show that its descriptive mark has acquired distinctiveness? There are several ways: (1) prior registrations, (2) long-term use in the marketplace, or (3) other evidence such as marketing, advertising, and surveys. The key to all of these is showing that the mark has come to identify not only the goods or services but also the source of those goods and services.
- Prior Registrations. Sometimes a company owns a similar mark or marks on the Principal Register. When applying for a later registration, the company may be able to show that the mark identified in the application is similar enough to the company’s existing marks that the new mark already has secondary meaning in the minds of consumers. For example, just this year, Nike attempted to trademark its new “NIKE+ TRAINING CLUB APP,” which is an app that monitors a user’s fitness training. The mark consists of the Nike swoosh with a little “+” next to it and then the letters “NTC” below that. Nike references three of its previously registered “swoosh” marks in its application; however, because “training club” is just a description of the primary function of the app, the examiner issued a preliminary rejection. It will be interesting to see if Nike claims secondary meaning based on a strong “family of marks” in its attempt to overcome the examiner’s objection.
- Long-Term Use. This is the most common route to proving acquired distinctiveness. If a company can show exclusive and continuous use of the mark in interstate commerce for five years in its application for registration, then the USPTO will find that the mark has acquired distinctiveness as a matter of law. One way to document exclusive and continuous use is to register a descriptive mark on the “Supplemental Register.” The Supplemental Register was created to allow registration of trademarks that are ineligible for registration on the Primary Register, such as descriptive marks, and grant those marks some protection. In most cases, the USPTO will assume a mark has acquired secondary meaning after five years on the Supplemental Register. For more on this topic see the post titled “Trademark Registration and Strategy.”
- Other Evidence. When applying for registration, the company can use other evidence, such as the extent of its marketing and advertising, or use consumer surveys to establish that the descriptive mark has acquired a secondary meaning in the minds of the consuming public.
Even after presenting evidence in one or more of these categories there is no guarantee that the USPTO will agree and register the mark. Part of our job is to evaluate your descriptive mark and then have an honest discussion about your registration options. That discussion may involve alternatives, such as state registration, registration on the Supplemental Register, or rebranding. In some situations a mark is so descriptive, or there are too many other problems to overcome at the application stage, that the best option is to choose another mark. That, of course, will depend on how much time, money, and effort your business has already invested in the mark, and how flexible your brand is.