Trademarks are words, marks, symbols, phrases, designs or logos that are placed on products or associated with services that can be used to create and cement customer loyalty and that can help drive sales and profits. To be effective — to function as a trademark — a trademark must be distinctive and unique in the minds of consumers and linked to the product or service. If a trademark is distinctive enough, it can be registered with the US Patent & Trademark Office. Registration of a trademark significantly enhances the legal protections provided by trademark law. In general, owners of trademarks can prevent others from using the trademark. Further, owners of trademarks can prevent others from using a confusingly similar trademark. If either of these happen, the owner of a trademark can hire trademark infringement lawyers to initiate trademark infringement litigation.

Most legal scholars, trademark attorneys and judges will rank trademarks in four categories on the basis of distinctiveness. These are:

• Generic or common words/symbols — having no distinctiveness
• Descriptive — have some or little distinctiveness (but can gain distinctiveness through use over time)
• Suggestive trademarks — are generally considered distinctive
• Fanciful and/or arbitrary — considered to be inherently distinctive

Note that whether a trademark is distinctive (or not) will often depend on the product/service with which it is associated. Take, for example, the famous trademark APPLE. As a trademark, APPLE would be merely descriptive if used with products sold by an orchard or fruit farm. Such a trademark would merely identify — describe — some of the products being sold. By contrast, APPLE as a trademark associated with computers, phones and devices is fanciful and arbitrary. The trademark is not descriptive because it does not even hint at what type of product is being sold. For this reason, APPLE as a trademark being associated with computer goods makes the trademark fanciful/arbitrary and, thus, makes the trademark distinctive.

Examples of Famous Descriptive Trademarks

Interestingly enough, one of the most famous international trademarks was originally descriptive. The trademark described a carbonated beverage that had, as its main ingredients, flavoring from the kola nut and coca leaves: COCA-COLA. That trademark is now, of course, a uniquely recognized trademark all over the world. Other famous examples:

• Bank of America — a bank located in America
• American Airlines — an airline located in America
• AP — the Associated Press — an association of journalists
• UPS — United Parcel Service — a company delivering packages and parcels
• IBM — International Business Machines — originally a company that sold business machines internationally

As noted — and as these examples show — a descriptive trademark can acquire distinctiveness through continual use over time. The US Patent & Trademark Office provides that continuous and exclusive use over a period of five years will create a presumption that a descriptive trademark has become distinctive.

Contact the Trademark Lawyers at Revision Legal For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal. We can defend your trademarks from infringement and can provide a trademark infringement defense team if you are wrongly accused. You can contact us through the form on this page or call (855) 473-8474.

The Legal Treatment of Descriptive Marks: Acquired Distinctiveness

Under 15 U.S.C. § 1052(e)(1), a trademark that is ‘merely descriptive’ of the goods or services with which it is associated cannot be registered on the Principal Register of the USPTO. This is one of the most common grounds for examination refusal. The underlying policy is straightforward: competitors need to use descriptive language to describe their own goods and services, and monopolizing a purely descriptive term through trademark registration would harm competition.

However, a merely descriptive mark can become registrable if it acquires ‘secondary meaning,’ also called acquired distinctiveness under 15 U.S.C. § 1052(f). Secondary meaning exists when consumers in the relevant market have come to associate the descriptive term primarily with a single source rather than with the goods or services described. Proof of secondary meaning typically requires evidence of long, exclusive use; substantial advertising expenditures; consumer surveys showing source identification; and evidence of intentional copying by competitors.

The Abercrombie Spectrum and Where Descriptive Marks Fit

Courts and the USPTO apply the Abercrombie spectrum, derived from Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), which established four categories:

• Generic terms — The common name for the product itself; can never function as a trademark (e.g., ‘milk’ for milk products)
• Descriptive marks — Terms that immediately describe a quality, feature, or characteristic; registrable only with proof of secondary meaning
• Suggestive marks — Terms that suggest a quality but require imagination to connect mark to product; inherently registrable (e.g., COPPERTONE for suntan lotion)
• Arbitrary and fanciful marks — Common words used in unrelated contexts, or invented words; the strongest category and easiest to register and enforce (e.g., APPLE for computers, KODAK for film)

More Famous Descriptive Marks That Acquired Secondary Meaning

Beyond Coca-Cola, Bank of America, and American Airlines, numerous well-known brands built trademark rights on marks initially refused as descriptive:

• BEST BUY — Descriptive of a good purchase value; acquired distinctiveness through decades of continuous use in consumer electronics
• HOLIDAY INN — Initially descriptive of a pleasant getaway; now one of the most recognized hotel brands in the world
• SHARP — Descriptive when applied to display electronics; acquired strong secondary meaning through global commerce
• COMPUTERLAND — Descriptive of a place selling computers; courts found sufficient secondary meaning through long use and public recognition

Overcoming a Descriptiveness Refusal From the USPTO

When the USPTO refuses a trademark application on descriptiveness grounds, applicants have several options. First, the applicant can argue that the mark is not merely descriptive but rather suggestive—meaning consumers must exercise imagination to connect the mark to the product. This argument is supported by dictionary definitions, evidence of third-party use, and expert testimony on consumer perception.

Second, the applicant can claim acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). The USPTO accepts five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness. Stronger claims are supported by declarations, advertising spend figures, sales data, and consumer survey evidence.

Third, an applicant can amend to seek registration on the Supplemental Register, available for marks capable of distinguishing the applicant’s goods but not yet possessing acquired distinctiveness. A Supplemental Register registration allows use of the ® symbol and can serve as a basis for foreign trademark filings.

Enforcement Risks for Descriptive Marks

A descriptive mark lacking secondary meaning is vulnerable not only at the registration stage but also in infringement litigation. Under 15 U.S.C. § 1115(b)(4), descriptiveness is a complete defense against trademark infringement claims. A competitor can argue they are using the term in its ordinary descriptive sense—what courts call ‘classic fair use’ under trademark law. Businesses relying on descriptive marks must actively build and document their secondary meaning to maintain enforceable rights over time.

If you are considering filing a trademark application or have received a descriptiveness refusal from the USPTO, the trademark attorneys at Revision Legal can evaluate your mark, advise on the strength of any secondary meaning claim, and develop the best strategy for achieving registration. Contact us today.