How To Avoid Trademark Descriptiveness Issues

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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.

Subway is a non-descriptive trademark - LA Tech and media law blog
From Subway.com
Apple Logo - LA Tech and Media Blog

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.

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. 

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. 

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. 

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 2019. All rights reserved.

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