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A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product.7 min read
What Is a Descriptive Trademark?
A descriptive trademark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product.
Some descriptive mark examples are:
104 KEY: it describes how many keys are on a keyboard; therefore this could be considered descriptive.
Cold and creamy: a potential mark for ice cream, but since it describes one of the characteristics of the product, it isn't likely to qualify as trademark.
Descriptive trademarks like these examples, which only include words based on aspects, highlights, end results, or product uses won't qualify for a trademark. This includes terms like "best" and "high quality." Still not sure? Answer this question: "Does this word describe the product or service?" If the answer is yes, the mark is probably descriptive.
Note: The word only needs to describe one major aspect of the product, not everything about it.
Why Is Picking A Strong Mark Important?
When a new company is entering a market, choosing the perfect mark to represent the business isn't easy. Many companies assume that the trademark a business uses (names, logos, slogans and/or jingles) should educate the audience rather than be creative, but this could lead to consumers having no idea what you're selling. Other companies think that being creative is the key. This is a personal choice that each company needs to make.
One of the more important factors to keep in mind is that the trademark needs to be distinctive. Your product or service needs to be differentiated from your competitors' by the mark (name, logo or phrase).
How Can Marks Be Categorized? Understanding the Strength of Trademarks
The only way a mark, whether a word or logo, qualifies as trademark is if it's distinctive. A distinctive mark distinguishes a company's goods and services from the goods and services of competitors. A non-distinctive mark simply describes and names a trait or quality of goods or services.
Distinctiveness can be tough to measure; it's usually broken into five categories across a spectrum known as the Abercrombie spectrum.
Generic devices will never be a trademark whereas devices that are fanciful, arbitrary, or suggestive are distinctive, and therefore they can function as trademarks. Descriptive marks can be trademarks when there has been a secondary meaning established; otherwise they aren't protected.
In theory, an imaginative trademark is stronger than an expressive trademark, so it has more standing in the court system.
More Details About the Different Marks
- Fanciful Marks
These are essentially random marks, therefore most courts will grant them protection. They usually consist of a random assortment of letters to create a word. The word doesn't mean anything until it's related to the company's product or service. Given that this word is new, the company needs to advertise the product the public to help them understand the link between the new word and the company's product or service.
Fanciful trademark example: Kodak (cameras and film)
- Arbitrary Marks
Arbitrary marks are words of common knowledge in English that are used to describe a product that doesn't have any connection to the common definition. Due to the distant relationship between the product and its name, the company needs to educate the public on the association of the word with the good. These marks are capable of holding up fairly well in court.
Arbitrary mark examples: Apple (computers etc.) and Camel (cigarettes)
- Suggestive Marks
These are words that give an idea of the product or service but don't describe it specifically. The need to educate the public on the product isn't quite as large as there is some intuition linking the mark and product or service together. It's possible that a descriptive mark could be disguised as a suggestive mark, but there is a difference. The public needs a certain degree of imagination in order to understand what product is advertised.
Suggestive mark examples: Greyhound (bus), Citibank (financial services), Playboy (magazine)
- Descriptive Marks
Descriptive marks can't be registered, but they could still be the best choice for your business, especially if you have a low advertising budget.
- Generic Marks
These words don't function as a trademark, as they fully describe a product by identifying it. They are nouns pertaining to common language, so they can't be registered.
Generic mark example: clock (timepieces)
What Is the Issue With Descriptive Trademarks?
A merely descriptive trademark isn't eligible for trademark protection and added benefits.
Here's why companies shouldn't use descriptive words or phrases:
They are conceptually weak and hard to enforce, therefore are usually unprotectable from competitors.
They are expensive to defend, because they are weak.
Suggestive, arbitrary, and fanciful marks are always unique upon creation and don't lead to any confusion about identifying their product or services when marketed.
The time and money involved to register a descriptive mark (if you succeed) is high.
Descriptive marks don't have a high sale value if you decide to sell/license the trademark or business.
Reasons Why You Usually Can't Protect Descriptive Trademarks
By getting a federal trademark, you have exclusive rights in your industry to a name, logo, and slogan. If this were granted to a descriptive trademark:
Competition would be inhibited as competitors wouldn't be able to use a simple (or the best) word or phrase in relation to their product.
No one could legally use the word anymore, which would result in a silly number of infringements in everyday occurrences.
Example: The word "trademark" can't be trademarked; otherwise trademark attorneys wouldn't be able to talk about their businesses anymore
Disagreement Between Marketers and Legal Departments
Marketers love describing their products, so that they can sell as may products as possible. If the trademark is not descriptive, the company will need to set aside a big marketing budget. Educating the public doesn't happen overnight either.
Legal departments view trademarks as helping to identify the first creator of a good or service, so they usually don't want to use descriptive words due to the problems addressed above.
The differences between "merely descriptive" and "generic" and between "merely descriptive" and "suggestive" is narrow. This latter difference is why companies opt for descriptive words where possible, as it helps consumers making the connection between the mark and product.
However, money saved on the front-end in advertising results in other costs spent on the back-end when dealing with cease-and-desist letters and litigations. Thinking long-term about your mark is vital.
How Can a Descriptive Trademark Be Protected?
A company can't register a descriptive mark on the Principal Register under the Lanham Act but can place it on the Supplemental Register. This status, however, grants the mark much less protection.
After five years of continuous use, though, a mark that was deemed descriptive can acquire protection by achieving the status of "acquired distinctiveness." Acquired distinctiveness happens when the public starts to associate your mark (and your company) as the source of a specific good more than if you simply describing the product with an adjective. In this case, the mark can be moved to the Principal Register.
Acquired distinctiveness can be established via:
A long period of continued use of the mark
Heavy advertising in terms of reach and expenditure
A mark that's achieved a secondary meaning is usually entitled to the protections granted to suggestive, arbitrary and fanciful marks. How do you know a mark has acquired a distinctiveness? Usually you find out through consumer surveys.
Some examples of marks that are descriptive but have achieved a secondary meaning are:
Windows (windowing software)
Dollar a Day: at first it described a service, in fact the company rented cars for a dollar a day. After years of continuous use, though, the consumers have started to identify the mark with the specific car rental provider.
The owner of a descriptive mark can show, usually through consumer pools, that the mark has acquired a secondary meaning and register it. However, there's no need for a proof. If the mark owner has kept the mark in continuous and exclusive use for five years, the mark qualifies for registration on the Principal Register.
If the trademark examiner believes the word is still descriptive, the owner will need to prove to them it is now suggestive.
How To Decide the Right Mark For Your Business
In a perfect world, an arbitrary or fanciful mark is best, as they are protected. Suggestive marks may lead to litigation but are better than descriptive and general marks.
Balancing a mark that helps the consumers know what they're are buying versus the cost of issues down the line will vary from business to business. Knowing that you may be able to acquire distinctiveness in a descriptive mark over time may sway you to choose this option if you don't have a large marketing budget to start.
A trademark attorney can help you understand the strength of potential marks and what level of distinctiveness they have when handed over to the USPTO.
What Are the Alternatives to Descriptive Trademarks?
If you decide to go for a fanciful or arbitrary mark, there are tools you can use to educate the consumers right away:
These are short phrases (fewer than eight words is best) placed on your marketing materials to educate consumers. Placed near a trademark, they describe a product or service concisely.
Almost like taglines, they're less descriptive but can be trademarks themselves as they often involve suggestive traits. A good slogan will have a call to action, humor where appropriate, create an image and generate emotion.
"A picture paints a thousand words", they say. In fact, an image helps describe your product. You can use images in a variety of marketing materials with your trademark place on the image or nearby.
A logo can describe a piece of your product.
- Descriptive Elements
A trademark that's entirely descriptive cannot be protected. You could look at adding a description to a mark somehow, although this will weaken the trademark. You'll also need the descriptive portion "disclaimed" in order to be registered.
When applying for a descriptive trademark, contact an experienced lawyer through UpCounsel for any questions and legal guidance.