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Put A ® On It? Using a Descriptive Trademark

Using a descriptive trademark can have its benefits — consumers likely don’t have to guess at the goods or services you offer if you come right out and describe them in your brand name. But are you familiar with the downside to using a descriptive trademark?

By now, you know the the benefits of registering a trademark, and the importance of a trademark search. You’re ready to bite the bullet, go through the registration process and, ideally, put a ® on it. At some point along the way, though, you’ve been advised that your mark is or could be considered “merely descriptive” — either by your attorney or by an Examining Attorney at the USPTO in the office action he wrote (and, oops, that Examining Attorney initially rejected your trademark application on those grounds).

First, What Is A Descriptive Trademark?

A descriptive trademark is what it sounds like: a trademark that describes a characteristic or element of the goods or services that you offer under that brand name. Examples, please? Some (fictitious) examples might be GREEN & CRUNCHY in connection with a salad restaurant, or BOOKS AND MORE in connection with a book retailer.

Benefits To Using A Descriptive Trademark

From a non-legal standpoint, there are benefits to using a descriptive trademark. Something like NASHVILLE ICE CREAM SHOP isn’t very mysterious and doesn’t force the consumer to guess as to what you’re all about — she knows what she’s getting when she walks in the door. And, it’s sometimes the case that if you’re using a descriptive mark, there are many others using a mark similar to yours. This arms you with the argument that, even though you might not be able to claim exclusive rights to the term, someone else would be hard-pressed to stop you from using it because it’s descriptive and so widely used.

Reasons To Avoid Using A Descriptive Trademark

To provide some understanding as to why using a descriptive mark might not be in your best interest, it’s important to mention the concept of trademark strength. A “strong” trademark is one that’s  on the “very protectable” end of the trademark protection spectrum. It serves as that important link between a product and the association of quality or “good will” that consumers think of when they see that particular mark. (Something like SPOTIFY is a very strong mark — it has no meaning, and there are no other marks like it used in connection with a music streaming service.) While a descriptive mark is good in the sense that your consumers will know exactly what product or service you’re offering under your brand, descriptive marks are “weak” (the opposite of a strong/very protectable mark), that is, they’re difficult to protect. That argument you’d use if someone else were to try and stop you from using your descriptive mark? Someone else could turn around and use it on you if you tried to stop them from using a similar mark.

Additionally, the Trademark Office often initially rejects marks it finds to be “merely descriptive.” The rationale is best described in the following example: If you’re located in Nashville, Tennessee and you’re selling ice cream under the name NASHVILLE ICE CREAM SHOP, allowing you to prevent others from using “Nashville Ice Cream Shop” to describe an ice cream shop located in Nashville would be preposterous.

By the way, descriptive marks are not completely valueless. If you use a descriptive mark for a long time and meet other benchmarks such as spending a certain amount of money on advertising and/or gaining a huge amount of customer recognition, you can develop strength in a descriptive mark (it’s called “acquired distinctiveness” or “secondary meaning.” After all, everyone knows what you mean when you say you’re going to Bed Bath & Beyond, Whole Foods, or Sports Authority.

The Point: Before you get to the point where you’re certain you want to “put a ® on it,” be sure to familiarize yourself with the  advantages and disadvantages of using a descriptive trademark.