What is a Descriptive Trademark

Jan 31, 2017

The strength and nature of a particular trademark can determine the performance and branding of a business in a market and the scope of legal protection to which the business is entitled. A highly distinctive trademark is a “strong mark” while a trademark that is mearly descriptive is a “weak mark.” The strength of a trademark is relative to the identity of the business in the market and to the recognition established by its consumer base.  A trademark lawyer or USPTO examining attorney may categorize the mark based upon the following definition: 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).   A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966)

Descriptive marks are a type of trademark that are usually composed of a word or words that merely describe a product or that identify the characteristics of a product and are generally considered weak marks. In other words, these are descriptions that could be attributed to the goods or services offered by a business. Generally, such marks are unlikely to be granted registration or protection under trademark law. However, descriptive words may be registered and protected by the law if they acquire “secondary meaning.” This happens when the original or primary meaning of the descriptive words becomes exclusively associated with a particular business.

Because the strength of a trademark is closely related to its identification in the market, entrepreneurs should carefully consider the trademark spectrum of characterizations and should evaluate their options. The stronger the mark is, the easier it is for the mark to be registered and protected from unauthorized use by third parties. Therefore, entrepreneurs could improve their marketing strategies and maximize their financial resources in the long run by avoiding legal pitfalls if they choose a highly distinctive mark. Consulting with a trademark attorney with experience in advising business with respect to trademark law could further ensure that the trademark selected is more likely to be legally enforceable.

By Heliane Fabian