In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive. If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register. So, how do you determine if your mark is descriptive and which register should you seek registration?
The main register for most trademarks in the United States is what is called the “Principal Register”. A trademark that is registered on the Principal Register has certain advantages including using the registration symbol ®, protection against registration of a confusingly similar mark (likelihood of confusion), presumed notice to the public of a claim of ownership of the mark, a legal presumption of ownership of the mark and the exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration, establishing a date of constructive use of the mark as of the filing date of the application, filing suit in federal court to bring an action concerning infringement, preventing importation of infringing foreign goods by filing the registration with the U.S. Customs and Border Protection, incontestability of the registration, and using the registration as a basis to obtain registration in foreign countries.
Trademarks that are merely descriptive cannot be registered on the Principal Register. Under Section 2(e)(1) of the Trademark Act, when a trademark used on or in connection with the goods or services is merely descriptive, the trademark is refused registration on the Principal Register. Under current trademark law, the question of whether or not a term is merely descriptive is determined in relation to the goods or services for which a registration is sought, the context in which the designation is being used on or in connection with the goods or services, and the possible significance the designation would have to the average purchaser of the goods or services as a result of the manner in which it is being used. See In re Bright Crest Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979). A term is merely descriptive pursuant to Section 2(e)(1) if, when applied to the relevant goods/services, it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Abcor Development Corp., 588 F.2d 811, 200 U.S.P.Q. 214, 218 (C.C.P.A. 1978). However, the determination that a mark is merely descriptive is a finding of fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q. 1828, 1831 (Fed. Cir. 2007).
Trademarks may be found merely descriptive where the trademark contains one or more descriptive words of the goods or services. However, if a customer who observes the trademark cannot readily perceive the nature of the goods/services without having to exercise his/her mental imagination, the trademark is suggestive rather than descriptive. Investacorp Inc. V. Arabian Investment Banking Corp., 931 F.2d 1519, 19 U.S.P.Q. 2d 1056, 1059 (11th Cir. 1991).
If there is a doubt regarding registrability under Section 2(e)(1), that doubt is to be resolved in Applicant’s favor. In re Atavio Inc., 25 U.S.P.Q.2d 1361 (T.T.A.B. 1992). In other words, the USPTO has the burden of proof on the issue. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987). Therefore, if there is any doubt as to whether the mark is descriptive or suggestive, the benefit of the doubt is to be given to Applicant and the mark is to be published for opposition and registration on the Principal Register.
One should be mindful of McCarthy’s warning that “lawyers and judges should not deceive themselves into conceiving the descriptive-suggestive dichotomy as some kind of concrete and objective classification system.” McCarthy on Trademarks, Section 11.22. Nevertheless, the rationale of previous decisions provide an appropriate context to the determination of whether the trademark is appropriately viewed as descriptive or suggestive.
The following case helps illuminate the effect of combining two common words into a new, unique, previously non-existent word. For example, in Bausch & Lomb Inc. v. Nevitt Sales Corp., 26 U.S.P.Q.2d 1275 (W.D. N.Y. 1993), the court found:
That the words ‘ray’ and ‘ban’ are descriptive when read separately, does not diminish the distinctiveness of the Ray-Ban (registered) mark read as a whole. A trademark must be viewed in its entirety and not in its component parts. (citations omitted)….In this case, when the two descriptive words ‘Ray’ and ‘Ban’ are joined together by a hyphen, they gain a new meaning, one that is only suggestive of the product the name identifies.”
Beyond the category of two ordinary words which have been combined into a single, novel word, there are a number of cases which place arguably borderline marks in the suggestive category. For example, in Manpower, Inc. v. The Driving Force, Inc., 212 U.S.P.Q. 961, 963 (T.T.A.B. 1981), the Board reasoned that the mark “The Driving Force” used for the service of “supplying leased drivers and goods-handling personnel to business and industry”, was suggestive rather than descriptive. The Board saw “no possibility whatever that “The Driving Force” could immediately convey the characteristics of applicants’ services to potential customers who had not been exposed to literature or oral presentations which further described them. To reach such a conclusion would require a great deal of imagination, indeed.”
If a trademark is refused registration on the Principal Register as being merely descriptive, the trademark may be registered on what is called the “Supplemental Register”. Although not as strong as the Principal Register, the Supplemental Register allows merely descriptive trademarks to be registered. These trademarks are “capable” of eventually becoming a trademark on the Principal Register if they acquire “secondary meaning.” This may occur five years after use of the mark in commerce in the United States. However, during that time period, the Supplemental Register has certain advantages including using the registration symbol ®, protection against registration of a confusingly similar mark (likelihood of confusion), filing a suit for infringement in federal court, and using the registration as a basis to obtain registration in foreign countries.
Based on the above, first try to register your trademark on the Principal Register. If the mark is rejected as being merely descriptive, argue against descriptiveness and emphasize suggestiveness. If you are not successful, convert your application to the Supplemental Register and obtain your registration.