How Strong is Your Brand? (Descriptive Marks)

In a series of posts, I am discussing the spectrum of distinctiveness, which can be used to evaluate the potential strength of a mark. This post is about marks that are merely descriptive. Recently, I discussed the weakest type of trademark, the generic mark.

Descriptive marks on the distinctiveness spectrum

A mark is descriptive if it describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (from the USPTO Trademark Manual of Examining Procedure, 8th Ed.). For example, “The Children’s Outlet” was found to be descriptive of an applicant’s “retail children’s clothing store services” and “Bed & Breakfast Registry” was descriptive of “lodging reservations services.”

A mark that is merely descriptive can be registered on the Supplemental Register (which means that it is not actually a registered trademark/service mark–yet). After the applicant can assert that a mark has attained special, distinctive meaning (which, in Trademark parlance, is called secondary meaning) in connection with his products/services, the mark can be registered on the Primary Register–in other words, it becomes a registered mark.

An assertion of secondary meaning can be made by submitting an affidavit or declaration to the USPTO along with a showing that the mark has gained distinctiveness through:

  • Use of the mark over an extended length of time;
  • Large scale advertising expenditures;
  • Widespread recognition of the mark as a source indicator; and/or
  • Survey evidence and market research results.

Regarding an “extended length of time,” the USPTO will accept a declaration that the mark has been in continuous use for at least five years as prima facie evidence that the mark has acquired secondary meaning.

Watch for future posts, where I will discuss marks that are inherently stronger than generic or descriptive trademarks: suggestive, arbitrary, and fanciful marks.

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