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How An IP Attorney Can Help Overcome A Merely Descriptive Trademark Rejection

July 01, 20245 min read

While the United States Patent and Trademark Office (USPTO) may reject applications for various reasons, a refusal based on “merely descriptive” grounds is particularly common. Unfortunately, this is also one of the most confusing grounds for refusal. Both new entrepreneurs and experienced business leaders may have no idea what the phrase “merely descriptive” actually means. Not only can an IP attorney offer helpful education in this situation, but they can also guide applicants toward trademark approvals. Those facing merely descriptive trademark rejections may learn more about how to protect their intellectual property rights with the dedicated intellectual property team at The Grabbe Law Office. Follow this link to book a consultation with an experienced IP attorney

What Is a Merely Descriptive Trademark?

The USPTO refuses trademark applications on various grounds. Marks that are “merely descriptive” will be refused by the examining attorney. According to the USPTO, marks are merely descriptive if they describe:

  • An ingredient in the product

  • A quality of the product

  • A function of the product

  • A feature of the product

  • The purpose of the product

  • A use of the product

Note that this also applies to services. Nike lost a bid to register the term “FOOTWARE,” as the term merely describes the product. OpenAI also failed to register the term “ChatGPT,” as GPT stands for “generative pre-trained transformer” – merely describing a type of technology.

Why Is a Merely Descriptive Trademark Bad?

The USPTO strives to ensure fair competition when granting trademarks. If a company gains exclusive rights to a merely descriptive term, other companies would lose access to important words in the English dictionary. If a word like “crunchy” were trademarked, food companies would struggle to describe products like potato chips without committing trademark violations. By keeping these words available for public use, the USPTO ensures unhindered expression in the marketing world. 

A Descriptive Trademark Can Become Distinctive Over Time

Perhaps the simplest way to overcome a merely descriptive trademark is to simply wait. Over time, a descriptive trademark can become distinctive. For example, “Bank of America” merely describes a bank in the United States. However, this term became distinctive over time with continued use – gaining a clear connection to a specific financial company. 

While it is true that trademarks can become distinctive over time, companies often invest heavily in marketing strategies over the years to make this happen. As such, “simply waiting” is probably not a feasible strategy for the average entrepreneur with a new startup. Of course, trademarks can also lose their distinctiveness over time – becoming so generic with continued use that they become merely descriptive. Examples include terms like “dumpster,” “app,” and “escalator.” 

Argue That the Mark Is Suggestive, Not Descriptive

While a “suggestive” trademark is not particularly distinctive, it is still strong enough in the eyes of the USPTO. If applicants work with experienced IP attorneys, they can appeal their rejections and argue that their trademarks are suggestive rather than descriptive. Since the line between suggestive and descriptive is often very thin, this may be easier than many applicants realize. 

The key to this strategy is arguing a lack of connection between the descriptive term and the product. According to the USPTO, suggestive trademarks can indicate certain qualities of products – but they cannot describe those qualities outright. While Nike failed to trademark the term “FOOTWARE,” it successfully trademarked the term “SNKRS.” The former is merely descriptive, but the latter is suggestive. A consumer must use at least some brainpower to figure out that the mark SNKRS is a stylized version of the word “sneakers.” This thought process is a key requirement for suggestive trademarks. Another example is “Microsoft,” which comes very close to merely describing “micro-computer software.” However, its shortened and stylized form is just enough to make it suggestive.

Dispute the Meaning of Descriptive Terms

Another obvious strategy is to dispute the definition of allegedly descriptive words. Many words have multiple meanings, and an IP attorney could theoretically argue that the USPTO has misinterpreted intended definitions. For example, an applicant may attempt to trademark the term “Iron Casting.” The USPTO may overlook the fact that this is a film & television casting company, assuming that the mark merely describes literal pieces of cast iron fpr industrial use. An IP attorney can help overcome these common misunderstandings and mistakes. Marking containing “double entendres” should overcome merely descriptive rejections with effective arguments from an IP attorney at The Grabbe Law Office.  

Modify the Mark and Re-Apply

Sometimes, modifying the application is the most logical strategy. An applicant may only need to add a single word to the trademark for the UPSTO to approve it. Combining two descriptive terms may create a sufficient level of distinctiveness. According to the Trademark Manual of Examining Procedure (TMEP), combining two or more descriptive words could create a “new and unique commercial impression.” However, combining two terms does not always create a distinctive mark – and the TMEP notes that the result could be a “composite that is itself descriptive.” The manual provides an example: “Breathable Mattress.”

Combinations of two or more descriptive words are only registrable if they create a “unique, nondescript meaning,” or a “bizarre, incongruous meaning.” The TMEP provides the example of “SNO-RAKE,” which includes two sufficiently incongruous terms. A rake has no real connection with snow, as this tool is more commonly used to clear away leaves. Therefore, the combination of these two descriptive terms creates a new, unique mark that reaches a sufficient level of distinctiveness. 

Register the Trademark on the Supplemental Register

If all else fails, an IP attorney can help an applicant register their mark on the supplemental register. This effectively puts the mark in a state of limbo, with the USPTO acknowledging that it could eventually become distinctive over time. If the trademark gains distinctiveness on the supplemental register, the applicant can transfer it to the principal register and secure their intellectual property rights. 

Contact The Grabbe Law Office Today

While online research provides a few potential strategies for overcoming a merely descriptive trademark rejection, real action may begin after consulting an IP attorney. Learning about trademark strategies is one thing, but implementing these tactics requires effective legal assistance. A merely descriptive trademark rejection does not necessarily indicate the end of an entrepreneurial project. With help from The Grabbe Law Office, it is possible to overcome a trademark rejection and secure intellectual property rights. Book a consultation today to get started on an action plan. 

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Julie Grabbe

Julie Grabbe

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