Written by Mark Terry
When marketing a product or service, brand recognition is a key component to success. The goal is to keep consumers coming back for your company’s brand name because they recognize it as identifying the goods or services your company provides. Companies often opt for a trademark that tends to be descriptive of the product provided so that consumers will quickly and easily identify the trademark with the product. This article discusses the test for merely descriptive rejections from the United States Patent and Trademark Office (“PTO”), options for responding to an Office Action from PTO that asserts a merely descriptive rejection under 15 U.S.C. § 1052(e)(1) (also known as a Section 2(e)(1) refusal), and a situation in which a descriptive term may work in your favor. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872 (Fed. Cir. 2015); TMEP 1209.01(b).
Nonetheless, there are several options that have proven successful in defeating a merely descriptive rejection by the PTO. The first option in responding to a 2(e)(1) refusal is to show that the mark is suggestive, rather than descriptive, and thus is entitled to immediate trademark protection. “A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. N.Y. 1976). For instance, Coppertone suggests that the product will give your skin a copper tone, however it takes some imagination to come to that conclusion. Therefore, Coppertone is suggestive, and entitled to immediate trademark protection. The second option in responding to the PTO is to claim the mark is arbitrary in relation to the product it identifies.
For example, the public would immediately identify the mark, Chocolate Fudge, with Chocolate flavored Fudge. Used in this way, the mark is generic and would have no protection. However, if the mark, Chocolate Fudge, was used for clothing, it may be able to have immediate protection because it is no longer descriptive, but arbitrary as related to clothing. Factual proof, such as dictionary definitions and industry related news articles, are often useful to show how the public perceives the word. Arbitrary marks are also entitled to immediate trademark protection. Third, if the mark is truly descriptive, it will need to attain “secondary meaning” by acquiring distinctiveness as related to the product it identifies, typically after five (5) years. However, secondary meaning can be difficult to attain and costly to prove.
Therefore, it is generally in a company’s best interest to argue against a merely descriptive rejection from the PTO to have the best chance of trademark protection. On the other hand, there are times when having a descriptive or suggestive word in part of a mark is advantageous. For instance, an arbitrary word combined with a suggestive word, may be able to avoid a likelihood of confusion rejection compared to a mark consisting only of a suggestive word. In Knight Textile Corp. v. Jones Investment Co., there was no likelihood of confusion between Norton McNaughton Essentials and Essentials where the evidence demonstrated that “Essentials” was a highly suggestive term. 75 USPQ2d 1313 (TTAB 2005). Overall, when responding to a Section 2(e)(1) refusal issued from the PTO, there are many options and arguments to be made. The trademark attorneys at The Plus IP Firm have experience in responding to merely descriptive rejections and have obtained numerous trademark registrations on behalf of their clients.