By Daniel H. Bliss
Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark describes an ingredient, quality, feature, function, characteristic, or purpose of your goods/services? Can your trademark be too descriptive to obtain a registration from the U.S. Patent and Trademark Office? The answer is YES! if the mark is highly descriptive and has not acquired distinctiveness.
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), prohibits registration on the Principal Register of a mark that “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.” See T.M.E.P. §1209.01(b). A term is “merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the United States, 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004) (citing Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 543 (1920)).
There are categories of descriptive marks ranging from slightly descriptive to highly descriptive. Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 972 (Fed. Cir. 2018) (quoting 2 J. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 11:25 (5th ed. 2018)). Whether a mark is descriptive is a question of fact, Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1364 (Fed. Cir. 2018), as is whether a mark is highly descriptive, Real Foods, 906 F.3d at 972 (“Placement of a term on the fanciful-suggestive-descriptive-generic continuum is a question of fact.” (quoting DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012))).
What kind of marks have been found to be merely descriptive? Examples of such marks include NOPALEA for dietary and nutritional supplements, PATENTS.COM for computer software for managing a records database and tracking status of the records, BED & BREAKFAST REGISTRY for lodging reservations services, and MALE-P.A.P. TEST for clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer. What kind of marks have been found to be highly descriptive? Examples of such marks include “corn thins” for crispbread slices predominantly of corn, namely popped corn cakes and “rice thins” for crispbread slices primarily made of rice, namely rice cakes. Real Foods, 906 F.3d at 973-33.; see also In re Hikari Sales USA, Inc., 2019 WL 1453259, at *17 (T.T.A.B. 2019) (“In this case, we find that the designation ‘Algae Wafers’ is highly descriptive of fish food.”)
If your mark is descriptive, what are your options for registration? Under Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), nothing prevents the registration of a mark used by the applicant which has become distinctive of the goods/services in commerce. In other words, if your mark has obtained acquired distinctiveness, you may be able to still obtain a registration on the Principal Register. However, acquired distinctiveness is more difficult to establish for a highly descriptive mark. Royal Crown, 892 F.3d at 1368–69; In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1336 (Fed. Cir. 2015); In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005); In re Bongrain International (American) Corp., 894 F.2d 1316, 1317 n.4 (Fed. Cir. 1990).
If your mark is merely descriptive and has not acquired distinctiveness, Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091–1096, provide for registration on the Supplemental Register unless your mark is incapable of distinguishing your goods/services. For example, if the mark is a generic name for your goods/services, it may be refused registration on the Supplemental Register based on Sections 23(c) and 45 of the Trademark Act. See 15 U.S.C. §§1091(c), 1127.
What if you have common law trademark rights in your mark and want to oppose someone else’s registration of a mark? Can your mark be too descriptive and not have obtained acquired distinctiveness to oppose the registration? In the recent case of Heritage Alliance, AFA Action, Inc. v. The American Policy Roundtabble, 2024-1155 (Decided: April 9, 2025), Heritage Alliance, AFA Action, Inc. (collectively
“Heritage”) filed a trademark opposition proceeding against American Policy Roundtable (“APR”), who filed for registration of the marks “iVoters” and “iVoters.com.” Heritage claimed to have common law trademark rights through the use of the names “iVoterGuide” and “iVoterGuide.com” for voter guides. Heritage claimed that APR’s marks would likely be confused with Heritage’s marks based on priority of or senior use of the marks. See 15 U.S.C. § 1052(d) (providing for refusal of registration on such grounds).
The Trademark Trial and Appeal Board (“Board”) found that Heritage’s prior-use marks were not themselves protectable because Heritage’s “iVoterGuide” and “iVoterGuide.com” marks were highly descriptive and had not acquired distinctiveness, and dismissed the opposition. Heritage Alliance v. American Policy Roundtable, Opposition No. 91249712, 2023 WL 6442587, at *1, *9, *13 (Sept. 29, 2023) (Board Decision).
The Board found that the marks were not just descriptive but “highly descriptive,” because the entire mark clearly described the service of providing a voter guide on the Internet. See id. at *7–9. The Board determined that “i” stood for Internet, “VoterGuide” was descriptive of the service, and “.com” had “no source-identifying significance,” and the combination did not convey “any distinctive source-identifying impression.” Id. at *8–9. The Board also found that Heritage’s marks had not acquired distinctiveness. Id. at *10–12. The Board reviewed Heritage’s evidence, in particular the length of time Heritage had used the mark and declarations from three of Heritage’s volunteers, and found it insufficient to show acquired distinctiveness. See id. at *10–12. After the Board dismissed Heritage’s opposition, Heritage appealed to the Court of Appeals for the Federal Circuit (“CAFC”).
The CAFC determined whether there was acquired distinctiveness of the mark based on the facts in the entire record. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1581 (Fed. Cir. 1988). The court considered six factors for determining acquired distinctive, without deeming all factors always relevant or the list exhaustive, as follows:
(1) association of the trade dress with a particular source by actual purchasers (typically measured by consumer surveys);
(2) length, degree, and exclusivity of use;
(3) amount and manner of advertising;
(4) amount of sales and number of customers;
(5) intentional copying; and
(6) unsolicited media coverage of the product embodying the mark.
Converse, Inc. v. International Trade Commission, 909 F.3d 1110, 1120 (Fed. Cir. 2018).
The CAFC found that that the Board was correct is finding that the prefix “i” generally refers to something Internet-based and “VoterGuide” and “.com” were not distinctive, and the Board considered the marks as a whole in its descriptiveness analysis. The CAFC did not find a reason to disturb the Board’s finding that the iVoterGuide marks were highly descriptive and that the marks had not acquired distinctiveness based on Heritage only having evidence as to the first two factors and not any of the other factors. Thus, the CAFC affirmed the dismissal of the trademark opposition by the Board.
Trademarks can be descriptive ranging from slightly descriptive to highly descriptive of your goods/services. If your trademark is deemed merely descriptive, registration can be denied on the Principal Register. However, you can attempt to register your trademark on the Supplemental Register or assert a claim of acquired distinctiveness for registration on the Principal Register. It is still possible to assert trademark rights in a descriptive mark to oppose registration of a third party mark once the application is published for opposition unless your mark is highly descriptive and has not acquired distinctiveness.