A descriptive trademark is one that describes the goods or services with which the mark is used. More specifically, it may describe the qualities, characteristics, feature, purpose, or function of those goods or services. Of course, it can sometimes be difficult to determine whether a trademark is descriptive. The mark may fall into a gray area between descriptive and another level on the spectrum of trademark distinctiveness. Most commonly, we might debate between generic and descriptive, or between descriptive and suggestive. These distinctions are very important from a trademark rights standpoint.
Identifying the Descriptive Trademark
One of the most common misconceptions about the descriptive trademark is that it is only descriptive if you can figure out what the product or service is from just the mark. However, that is not the proper test. The trademark is not considered “in a vacuum.” Instead, it is considered in the context of the relevant goods or services. Only then can you determine whether the mark describes something that is important or significant about the goods or services. To further illustrate what a descriptive trademark is, let’s differentiate it from the two groups of marks closest in terms of distinctiveness.
Generic vs. Descriptive
First, let’s look at the least (or not at all) distinctive marks: generic trademarks. For example, let’s look at the trademark registration for KENTUCKY GRILLED CHICKEN, which is owned by KFC Corporation. Part of this registration, which is for “cooked chicken,” is generic and part is descriptive. The words GRILLED and CHICKEN are generic, because it literally says what the product is. It would be especially hard to describe the product without using the word “chicken.” But KENTUCKY is descriptive, because it tells us about the qualities of the chicken. It tells the consumer that the chicken is “Kentucky style” or that it originates from Kentucky.
Descriptive vs. Suggestive
Drawing the line between descriptive and suggestive trademarks can also be quite difficult. For example, take the mark BUOYANT used in connection with float therapy services. You can make an argument that it is descriptive because participants in float therapy are “buoyant” because they are floating. However, you can also argue that BUOYANT is suggestive because it describes the way a person might feel after the therapy. “Buoyant” has a second definition that means “cheerful” or “optimistic” which does not directly describe the service. Of course you can see how one might come to either conclusion.
Protecting a Descriptive Trademark
Unlike more distinctive types of trademarks, you cannot receive protection for descriptive trademarks once you start using them in commerce. Instead, your descriptive trademark must gain “acquired distinctiveness” (sometimes referred to as “secondary meaning”). That means that consumers no longer think of your mark as a description of products/services. When they see your mark, they actually think of you/your business. Obviously that does not happen overnight, which is why a suggestive or more distinctive mark is usually a better starting point.
So what does this mean for trademark registration? Well, if you have a descriptive trademark and apply to register it with the U.S. Patent & Trademark Office, you will receive a rejection. However, the Trademark Office may let you amend to try and get your mark on the Supplemental Register. While the Supplemental Register does not give you the rights of a regular registration, it can be cited against other applications to prevent their registration. Once your descriptive trademark has been in use at least five years, there is a presumption that you have acquired distinctiveness. That means that if you file a new application, you may be allowed registration on the Principal Register.
Unsure Whether Your Trademark Is Merely Descriptive?
If you need to know whether you have a descriptive trademark, one that is generic, or otherwise, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
