L.A. TECH & MEDIA LAW FIRM – Intellectual Property & Technology Law

How To Avoid Descriptive Trademarks

Subway is a non-descriptive trademark - LA Tech and media law blog

When entrepreneurs, tech startups, and small businesses want to select and adopt a new trademark, a trademark conflict search can help detect potential issues and inform the brand owners on potential circumvention or resolution to the issues. For example, in some cases where a trademark owner is selecting a new brand name, the new trademark is too descriptive to be afforded federal trademark protection in the United States.

Apple Logo - LA Tech and Media Blog

In the United States Patent and Trademark Office (USPTO), and in trademark courts in general, a merely descriptive trademark is legally defined as a trademark that (1) has a meaning in English or other language, and is not otherwise a coined term, and (2) its meaning is synonymous with a quality, ingredient, feature or function of of the good or service. For example, DARK ROAST can be a descriptive trademark for coffee, as can CREAMY for yoghurt products. 

Descriptive trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. They’re only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years. Understanding the nuances of descriptive trademarks and how they differ from suggestive trademarks is crucial for brand owners aiming to protect their intellectual property effectively.

What are Descriptive Trademarks?

Descriptive trademarks provide information about the qualities, characteristics, or functions of a product or service. They describe an aspect of the goods or services directly and do not inherently distinguish the source. For example:

  • “Creamy” for yogurt
  • “Apple pie” for potpourri
  • “Bed & breakfast registry” for lodging reservation services

These trademarks are often challenging to register because they lack the inherent distinctiveness needed to identify a single source of goods or services.

Registration Challenges for Descriptive Trademarks

Descriptive trademarks face significant hurdles in the registration process due to their nature. The United States Patent and Trademark Office (USPTO) typically refuses registration for purely descriptive marks unless they have acquired distinctiveness, also known as secondary meaning. This means that the mark must have been used in commerce for a substantial period, and consumers must primarily associate the mark with a particular source rather than the product itself.

Acquiring Distinctiveness

To gain distinctiveness, a descriptive trademark must demonstrate:

  1. Long-term Use: Extensive and continuous use in commerce over many years.
  2. Consumer Recognition: Evidence that consumers recognize the mark as identifying the source of the goods or services.
  3. Advertising and Sales: Significant advertising and sales efforts that have led to consumer association with the brand.

Examples of descriptive trademarks that have acquired distinctiveness through use include:

  • American Airlines®: Initially descriptive of an airline based in America but has acquired distinctiveness over time.
  • Best Buy®: Descriptive of a retail store offering good deals but now distinctly recognized as a major electronics retailer.

Descriptive vs. Suggestive Trademarks

Understanding the difference between descriptive and suggestive trademarks is essential for brand owners. While both categories deal with the connection between the mark and the product, their levels of distinctiveness vary significantly.

Descriptive Trademarks - Los Angeles Trademark Lawyer - L.A. Tech and Media Law Blog - Malibu Intellectual Property Attorney - Santa Monica Startup LawDescriptive Trademarks
  • Direct Description: Descriptive trademarks immediately convey information about the product’s qualities or characteristics.
  • Registration Hurdles: Difficult to register unless they have acquired distinctiveness through extensive use.
Suggestive Trademarks
  • Indirect Allusion: Suggestive trademarks imply or hint at the nature of the product without directly describing it.
  • Inherent Distinctiveness: Easier to register because they require imagination or thought to connect the mark with the product.

Example:

  • Descriptive: “Bronzer” for suntan oil directly describes the product’s purpose.
  • Suggestive: “Coppertone®” for sun-tanning products suggests a tan but requires some thought to connect it with the product, making it inherently distinctive and easier to register.

Best Practices for Dealing with Descriptive Trademarks

  1. Choose Distinctive Marks:

    • Opt for inherently distinctive trademarks (e.g., fanciful, arbitrary, or suggestive) to avoid registration challenges.
  2. Demonstrate Secondary Meaning:

    • If you have a descriptive trademark, invest in marketing and branding efforts to help the mark acquire distinctiveness over time.
  3. Document Use and Recognition:

    • Keep thorough records of advertising expenditures, sales figures, and consumer surveys to support claims of acquired distinctiveness.
  4. Consult with a Trademark Attorney:

    • Work with an experienced trademark attorney to navigate the complexities of trademark registration and to develop strategies for establishing and protecting your mark.

By conducting a trademark clearance report with an experienced intellectual property law and business attorney, potential trademark applicants, small business owners, and entrepreneurs seeking to register a new name or logo, can avoid potential fatal issues in the trademark application process by becoming aware of potential descriptiveness issues, and analyzing their trademark through the lens of the merely descriptiveness law in the United States Patent and Trademark Office. 

Consult with a Trademark Expert

Navigating the legal landscape of descriptive trademarks can be challenging. For expert guidance on registering and protecting your trademarks, consult with David Nima Sharifi, Esq., Principal Attorney at L.A. Tech and Media Law Firm. With extensive experience in intellectual property law, David can provide the insights and support needed to secure your brand’s future.

For a confidential consultation to discuss your trademark needs, contact David Nima Sharifi, Esq. today. Ensure your brand is protected with professional guidance and strategic legal support. A non-descriptive trademark is, for example, APPLE for computers, because apple does not mean computers, an apple is a fruit. Another good example is SUBWAY for restaurants, this is also a non-descriptive trademark because subway means an underground tunnel, and when used for the famous restaurant chain, it does not describe the product in any way. 

Picture of David N. Sharifi, Esq.
David N. Sharifi, Esq.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal.
Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2024. All rights reserved.

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